Trade name disputes law updated

The Dubai Court of First Instance recently ordered that an identical trade name be deleted from the Commercial Register as it violated the plaintiff's registered and well-known trade mark as well as its name.

The plaintiff, a well-known international commercial bank, filed a commercial action against the defendant, a real estate company, for using its registered trade name/mark as the latter's trade name. The bank's name is a registered trade mark in the UAE including for services classed as real estate. The defendant had registered an identical trade name with the Dubai Chamber of Commerce & Industry in 2004, prior to the plaintiff's registration of the trade mark. However, the plaintiff was able to establish prior registration of the trade name in the UAE, which dates back to 1975. The defendant's argument was that there are substantial differences in the name and activities carried out by the parties; thus there is no confusion amongst consumers.

The Court pronounced that the defendant failed to prove its use of the trade name prior to the plaintiff's registration/use of the trade name/mark. Use being a decisive factor, the ownership of the mark/name lies with the plaintiff. The Court additionally enunciated the concept of well-known marks thoroughly in the decision.

Though the decision has now been appealed by the real estate company, it is remarkable to watch the judiciary taking steps to harmonize the law relating to trade marks to be applied in respect of trade names. The UAE trade marks law implies punishment for offering services under unlawful use of trade marks. Further, the law mandates the ministry to notify relevant authorities in each Emirate registering trade names, with the names of owners of registered trade marks. However there were visible signs of copying and less practical measures to eliminate such trends. The UAE being one of the fastest developing economies of the region, the decision may hopefully set a precedent to help brand owners to conduct business with no threats as to use of names.