This article would tell you how Khairallah Advocates & Legal Consultants helped one of their clients, a popular water brand, to resolve the trademark infringement dispute with a competitor.
It was not a great surprise for the owner of a well-known water brand (Plaintiff) carrying business since 1969 in several countries to find its trademark was registered by Competitor Company (Respondent) in the UAE enjoying their trade name.
When approached the concerned Ministry, Plaintiff was surprised by finding that the Respondent registered their trademark under same category/activity already.
Plaintiff sent warning notice to Defendant for canceling registration, but no avail. Hence, on behalf of Plaintiff we referred the matter to Dubai Courts with claim to abolish/cancellation of registration of trademark in Ministry relying on several articles from the law and supporting judgments.
Dubai Court of Cassation states that:
“The provision of Article (4) of Federal Law No. 37 of 1992 on trademarks in the UAE, excluding from the general principal that the right of trademark owner is limited inside the country of trademark and shall not be extended abroad. However, the legislators explicitly stated in the above mentioned Article that if the trademark gained worldwide reputation in other countries; then, the trademark shall not be registered, excluding by the consent of the real owner in order for protecting trademark and maintaining others trademark properties. A worldwide trademark means the trademark which gains great reputation of expansion and distribution on a wide geographical area outside the country and shall be difficult to accept the use of the same trademark to any similar products, as the trademark is associated with large number of consumers concerned with the products subject matter of the trademark, and generally not the standard fame on the international community level as a whole. It is not required that the worldwide trademark is registered inside such worldwide countries, as the trademark has legal protection even if not registered within countries where the products subject matter of the trademark are distributed.”
Plaintiff was harmed when Defendant registered the same trademark owned thereby, that has international and worldwide reputation and fame since 1969 up to date and due to lapse of years. Hence, Plaintiff had no choice but submitting the present Claim in order to obtain a ruling for cancellation of Trade mark Registration in the UAE (supported by Ruling of Dubai Courts of Cassation).
Khairallah Advocates & Legal Consultants was successful in proving similarity of trademark based on several principles as well as proved bad faith of Respondent as they were well aware in advance of Plaintiff’s ownership of the trademark.
In precedent judgment we got in favor of our Client (Plaintiff), we successfully proved counterfeiting of trademark was to create a brand which is similar to the original brand which will likely mislead public/consumers, the awareness and recognition of the ordinary consumers was taken into consideration.
Khairallah Advocates & Legal Consultants specializes in handling litigations for any infringement of Intellectual Property Rights. Please feel free to contact us for any legal assistance.