Call Us +971 4 321 1000

Well-Known Trademarks, Standards & Protection

September 29, 2019

The UAE Federal Law No. (37) of 1992 on Trademarks defines “well-known” trademark as trademarks that pass borders of the origin country of the trademark to other countries. These may not be registered unless upon a request or official authorization from the original owner. To determine that a trademark is well-known, familiarity with such trademark by the concerned audience due to its promotion shall be considered. Well-known trademarks may not be registered to distinguish commodities or products dissimilar or non-identical to those distinguished by such trademarks if: Use of the trademark indicates to a connection between the commodities or services of owner of the original trademark. Use of the trademark would likely cause damage to interest of the original owner. Many brand owners consider their trademarks as well-known, unfortunately, that may be the reason for losing their cases. If you think that your trademark is well-known, some standards should be taken in consideration. These standards will help you determine if your trademark is well-known. These factors are those which the courts take into consideration along with any circumstances under which the courts may be assumed that the trademark is well-known. The courts will consider documents (including expert report) and information submitted to it with respect to factors from which it may deduce that the trademark is well-known, including but not limited to the following: –              Amount of knowledge of the trademark in the applicable sector of consumers and users; –              Period, and geographical areas of registration, use of the trademark; –              Period, and geographical areas of promotion of the trademark (including advertising); –              The value of the trademark. These standards are only guidelines to assist courts to define whether the trademark is well-known. These are not pre-conditions for obtaining that determination. Hence, the determination in each case will depend on the circumstances and proven facts. Courts usually appoint an expert to determine whether the trademark is well-known. In practice, experts follow these standards in their research to determine if the of trademark is well-known. We, at Al Suwaidi & Company, have handled many successful cases on well-known trademarks. With submission of the proper documents to prove that trademarks are well-known, we obtained a final judgment from the Court of Cassation emphasizing our client’s grounds for its trademark to be classified as well-known and entitled to the mentioned protection under Article (4) of UAE Federal Law No. (37) of 1992. It is the advocate’s responsibility to lead the court to such understanding and recognition, and to increase chances of obtaining a judgment in the client’s favor. Well-known trademark protection, in most cases, is from anything which could be considered as infringement or counterfeiting on that trademark, provided that they are likely to cause confusion to the consumers. Well-known trademarks are often protected, regardless of whether they are registered or not, in respect of services or goods which are the same as or close to be the same as those for which they have gained their reputation. In some countries, such well-known trademarks may, under certain circumstances, also be protected from dissimilar goods and services. In litigation, the following laws and agreements, […]

Read more

Landlord and tenant’s agreement on the jurisdiction of the DIFC Courts with respect to the rental of real estate in Dubai contravenes public order

September 17, 2019

The legal knowledge relating to real estate rent issues in Dubai is an important necessity that all landlords and tenants should be aware of. Especially when it is so easy for landlords and tenants to make mistake in concluding lease contracts. This article will focus particularly on the place of jurisdiction in the event of a dispute. It is necessary to distinguish between the jurisdiction of the Dubai Rental Disputes Center (Center) by considering the disputes arising between landlords and tenants in the emirate or in the free zones and the jurisdiction of the Dubai International Financial Center (DIFC) courts with real estate located in the spatial scope of the DIFC, we clarify this as follows: Article 1: Jurisdiction of the Rental Dispute Center: The Rental Disputes Center in Dubai specializes in all rental disputes in all areas in the Emirate except for disputes within areas that have special committees or competent courts. Article (3) of Law No. (26) of 2007 on regulating relationships between landlords and tenants in the Emirate of Dubai states that the law shall be applicable to leased properties in Dubai, including open and agricultural lands. This excludes hotels and free accommodation provided by natural or judicial persons to their employees. Article (6) of Decree No. (26) of 2013 Concerning the Rental Disputes Centre in the Emirate of Dubai states that: The Centre will have the exclusive jurisdiction to: 1) Determine all Rent Disputes that arise between landlords and tenants of real property situated in Dubai or in free zones, including counterclaims arising therefrom, as well as determine applications for interim or urgent relief filed by any of the parties to a lease contract; 2) Determine appeals from the decisions and judgments that are subject to appeal in accordance with the provisions of this Decree and the regulations and resolutions issued in pursuance thereof; and 3) Enforce the decisions and judgments issued by the Centre in the Rent Disputes that fall within its jurisdiction. The Centre will have no jurisdiction to hear the following Rent Disputes: 1) Rent Disputes that arise within the free zones which have tribunals or special courts having jurisdiction to determine the Rent Disputes that arise within their boundaries; 2) Rent Disputes that arise from a lease finance contract; and 3) Disputes that arise from long-term lease contracts covered by the above mentioned. The above mentioned points clarify that public order contravenes any agreement between the landlords and tenants on the jurisdiction of the DIFC courts to deal with rent disputes outside the scope of the DIFC. Article 2: Jurisdiction of DIFC Courts: The UAE legislator has exclusively defined in the Real Property Law the jurisdiction of the DIFC to hear all real estate disputes that are within the spatial scope of the DIFC. In other words, all real estate located within the spatial and geographical scope of the Dubai International Financial Centre shall have jurisdiction in that case exclusively to the courts of the DIFC. Whereas, by reviewing the Real Estate Property Law No. 10 of 2018 of the DIFC, we find that the issue of jurisdiction has been resolved in […]

Read more

Parallel Import in light of UAE Commercial Agencies Law

September 11, 2019

Parallel importation is genuine product importation from another country without the permission of the intellectual property owner. Parallel import is based on the idea of consuming the intellectual property rights. When a product is first sold on the market territory, parallel importation is authorized to all residents in that state. Some countries allow it, but others do not. In the UAE, when there is importation of genuine products, the brand owner cannot take any action under the UAE Trademark Law to stop the importation of genuine products to the UAE. There is no such law prevailing to stop this kind of importation. Under the UAE Law, there is no direct term recognized as “Parallel Import”. Parallel import is implied in Article 23 of Federal law No. (18) of 1981 on Regulations of Commercial Agencies, which says: No person may import any commodities, products, manufactures, or any other material subject to any commercial agency registered in the ministry in the name of another person with the aim of trading except through the Agent. The customs department shall not release such imports brought through another person without the consent of the ministry or of the Agent. At the request of the Agent, the customs department and competent authorities, as appropriate, shall seize such imports and deposit them in the warehouse of the importer until the dispute is resolved, save the material trading which is liberalized under a resolution of the cabinet. The ministry shall remove the commercial agencies in connection with such materials from the commercial agencies register. Based on this article, the sole procedure to stop the parallel import is to enter into a Commercial Agency Contract with a Local Agent and to get this contract registered in the Ministry as per the Law requirements. The Ministry of Economy notifies the municipalities, customs department, the Federation of Chambers of Commerce and Industry, and chambers of commerce and industry in the State of names of agents recorded in the commercial agents register of any change, modification cancellation made to such registration within thirty days of the date of such modification or cancellation. So, the legal protection is provided to the agents once the commercial contract is registered on the Commercial Agency Register, but the registration itself doesn’t stand as a sole procedure to obtain the full legal protection. The duty of an agent is to coordinate with competent authorities to make sure that these authorities are duly notified, and keep following up with these authorities, showing them that the agent is extremely interested to get the full legal protection. Furthermore, the Agent is also having the right to prevent the import of products included in the agency contract if the Agent is not the consignee. Exclusive distributors may apply for this legal protection if they register their contracts in the Ministry and such contract matches the Ministry requirements for such protection. Finally, if you are seeking the right legal protection from parallel import, you have to register you agreement in the Ministry of Economy as agent or exclusive distributer, and to make sure that the competent authorities are duly notified with this […]

Read more

“London’s Competitiveness as a Shipping Cluster”

September 9, 2019

Al Suwaidi & Company’s Head of Maritime Department, Mr. Abdelhak Attallah  , participated in the discussion on “London’s Competitiveness as a Shipping Cluster” on 9 September 2019 at the 2019 edition of London International Shipping Week (LISW). At the said event, Maritime London, Department for Transport (DfT) and City of London Corporation formally launched the report authored by PwC on London and the UK’s maritime professional services sector and its current market position, analyzing the strengths and weaknesses and including recommendations to ensure London and the UK to remain the world’s leading maritime services cluster. Al Suwaidi & Company expresses its support for this kind of events that brings together experts and stakeholders in the shipping industry.

Read more