Table of Contents
- What is Well–known Trademark?
- Provision relating to protection of well – known Trademark under DIFC IP Law
- How to determine whether a Trademark is well-known in UAE?
- What are the rights accorded by DIFC IP law to well-known trademark owner?
- What amounts to Infringement of a Well –known trademark?
- What are the penalties with respect to the well-known Trademark under DIFC IP law?
- FAQ’s
Trademarks are the valuable assets that may help a company to flourish. It distinguishes the goods and services of one competitor from others, and also helps in preventing the confusion among the consumers at the marketplace. Now, the main concern is regarding the protection of those trademarks which have achieved distinctiveness and are well known in the market, but are not registered in UAE. To deal with such issue, DIFC IP law has been introduced by the Dubai International Financial Centre (DIFC).
With a view of regulating the enforcement of intellectual property rights, including protection of trademark and well –known trademark within DIFC, Vice President and Prime Minister of the UAE and Ruler of Dubai His Highness Sheikh Mohammed Bin Rashid Al Maktoum, enacted a new DIFC Intellectual Property Law No. 4 of 2019 (the “DIFC IP Law”), on November 14, 2019. It allows DIFC entities to protect their intellectual property rights and allowing a sufficient space for creativity and innovation within the DIFC.
In this article we will discuss the concept of well-known trademark, and the various protection accorded by the DIFC IP law pertaining to the well-known trademark within DIFC.
What is Well–known Trademark?
Trademarks with worldwide goodwill are also known as well-known trademarks. These trademarks are well-known over the world for offering high-quality goods and services. The concept of a well-known trademark is not defined in UAE Federal Law No. (37) Concerning Trademarks, which was enacted in 1992. As these trademarks are well-known among the general public, so they are afforded particular protection. Samsung, Nokia, Whirlpool, Apple, LG, and other reputed brands are examples. These marks may not be registered in other countries without the prior consent of the trademark owner.
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Provision relating to protection of well – known Trademark under DIFC IP Law
As per Article 45(1) of DIFC IP law, well known trademark having international reputation, and not registered in UAE as a trademark, shall be protected under this law, if it has surpasses the country of origin and has acquired reputation in a relevant sector of the consumers in UAE.
Further, it has been stated under Article 45(3) that in the DIFC, no one may use a trademark that is identical to or confusingly similar to a well-known trademark..
How to determine whether a Trademark is well-known in UAE?
With the passing of DIFC IP Law, it has made it easy to determine the factors which makes a trademark well known in the market. Following are some of the factors mentioned under Article 45(2) of the law:
(a) The extent of public knowledge or recognition of such trademark in a relevant sector;
(b) The duration, extent and geographical area of use;
(c) The duration, extent and geographical area of any promotion of the goods or services to which the trademark applies;
(d) The duration and geographical area of any registrations, or any applications for registrations, to the extent that they reflect use or recognition of the trademark;
(e) The record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark was recognized as well known by competent authorities; or
(f) The commercial value associated with the trademark.
What are the rights accorded by DIFC IP law to well-known trademark owner?
Following are some of the rights conferred by DIFC IP law under Article 45(4) &(5), to the well -known trademark owner:
- To prevent the use of similar or identical mark – The owner of a well-known trademark shall have the right to prevent any person from using the mark in DIFC, if it is similar or identical to the well-known trademark.
- To prevent commercial use of such mark – The well-known trademark owner shall have exclusive right to prevent others from the use of such trademark in DIFC, if use of such trademark results into the dilution of distinctive quality of well-known trademark.
What amounts to Infringement of a Well –known trademark?
Article 48(1) of the law provides for following acts which amounts to infringement of well-known trademarks in the DIFC:
- To counterfeit or imitate a well-known Trademark, with the intention of misleading the public. For ex. Using NYKE mark in place of NIKE mark with respect of shoes.
- Using well known trademark of another person unlawfully without such person’s consent;
- Selling, offering for sale, or possessing with the intent of selling, goods or services bearing well known trademark that has been counterfeited, imitated, or used unlawfully.
- Making any false statement which leads others to believe that registered mark is a well-known Trademark.
What are the penalties with respect to the well-known Trademark under DIFC IP law?
DIFC IP law in its schedule 3 provides for the following penalties (fine) to be imposed on the person who commits any act which amounts to the infringement of well-known trademarks.
- If someone uses a well-known Trademark without authorization of the owner of the well -known Trademark, shall be fined with 15,000 USD.
- If someone is using a Trademark that may cause dilution to a well-known Trademark shall be fined with 15,000 USD.
- Counterfeiting or imitating a well-known Trademark or a registered Trademark with the intent of misleading the public shall be fined with 30,000 USD.
The purpose of this article is to provide a general overview of the subject. Regarding your personal situation, you can seek expert guidance. HHS lawyers and legal consultants are specialized in dealing with the registration, infringement and other related issues of trademark.
Our trademark attorneys have clear and realistic solutions for protecting your intellectual property. You can contact us for further consultation
References:
- Available at https://www.difc.ae/files/4915/7423/3971/Intellectual_Property_Law_DIFC_Law_No._4_of_2019.pdf
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FAQ’s
What is a well-known trademark under DIFC IP Law?
Under DIFC IP Law, protection is not limited only to registered trademarks. The DIFC guidance states that the law also recognizes well-known trademarks, including in situations involving conflicts between trade names and trademarks.
Does DIFC IP Law protect trademarks that are not registered in the UAE?
Yes, DIFC guidance states that businesses in DIFC should consider even unregistered but well-known trademarks, because using a conflicting trade name or mark may expose a business to a legal claim under the DIFC Intellectual Property Law.
How does DIFC determine whether a trademark is well-known?
Whether a trademark is well-known generally depends on the strength of its reputation and recognition. In practice, evidence such as market reputation, public awareness, use, promotion, and the commercial value associated with the mark can be relevant when assessing whether a brand qualifies for enhanced protection.
Can a foreign company enforce a well-known trademark in DIFC without UAE registration?
Yes, a person or company based outside DIFC may enforce intellectual property rights in DIFC where the infringement occurs within DIFC jurisdiction or involves a DIFC-registered entity. This can be relevant for well-known trademark owners, even if they are foreign businesses.
What protection does DIFC IP Law provide to well-known trademarks?
DIFC guidance states that infringement can include unlawfully using a registered or well-known trademark, using a confusingly similar trademark, counterfeiting or imitating a registered or well-known trademark, or dealing in counterfeit products. The law also treats registration of a trade name identical or similar to a registered or well-known trademark as a violation.
Can the owner of a well-known trademark file a case in DIFC?
Yes, an infringement complaint may be filed with the Commissioner of Intellectual Property. In addition, a court case may also be filed in DIFC, and injunctive relief may be sought to stop the infringement.
What remedies are available under DIFC IP Law for trademark infringement?
Available remedies include directions to stop the infringement, confiscation and destruction of infringing goods or materials, suspension or revocation of a DIFC licence, fines, compensation, and court injunctions where appropriate.
Can a well-known trademark be protected against use on unrelated goods or services?
The DIFC guidance clearly protects registered and well-known trademarks against unlawful use, confusingly similar use, and misuse through conflicting trade names. Whether protection extends to dissimilar goods or services in a particular case will depend on the facts, the strength of the mark, and the nature of the misuse.
What is trademark dilution in the DIFC context?
Trademark dilution generally refers to use that weakens the distinctiveness or reputation of a strong or well-known brand, even where there may not be direct product competition. Whether dilution is established will depend on the facts and the evidence presented.
Can a local business use a globally well-known brand if that brand is not registered in the UAE?
That can still create legal risk in DIFC. DIFC guidance specifically warns businesses to consider unregistered but well-known trademarks before adopting a trade name or brand, because conflict with those rights may lead to complaints, fines, suspension issues, or court action.
Do companies still need to register trademarks in the UAE?
Yes, registration remains highly advisable. DIFC states that there is no separate IP registry in DIFC, and rights registered with the relevant UAE federal authorities are recognized and enforceable under DIFC Intellectual Property Law.
Which businesses benefit most from well-known trademark protection in DIFC?
Well-known trademark protection can be especially important for businesses whose value depends heavily on brand reputation, recognition, and market trust, such as luxury brands, technology businesses, fashion and retail companies, and international consumer brands.
What evidence can help show that a trademark is well-known?
Useful evidence may include trademark registrations, sales figures, advertising history, market presence, media recognition, consumer awareness, and other records showing the commercial reputation and recognition of the brand.
Why is DIFC IP Law important for international brands?
DIFC IP Law provides an additional enforcement framework within DIFC for trademarks, trade names, and other IP rights. It is particularly important because it recognizes registered rights and also addresses conflicts involving well-known trademarks, including those raised by businesses operating in or through DIFC.
Should businesses rely only on DIFC protection?
No, relying only on DIFC protection is not usually the best strategy. UAE trademark registration is still important for broader national protection, while DIFC protection can provide an additional layer of enforcement within DIFC jurisdiction.
