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How New DIFC IP Law protects Well Known Trademarks not Registered in UAE

How New DIFC IP Law protects Well Known Trademarks not Registered in UAE?

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.

You may want to know: How Intellectual Property Rights are Assigned in UAE

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:

  1. 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.
  2.  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:

  1. 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.
  2. Using well known trademark of another person unlawfully without such person’s consent;
  3. 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.
  4. 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. 

  1. If someone uses a well-known Trademark without authorization of the owner of the well -known Trademark, shall be fined with 15,000 USD.
  2. If someone is using a Trademark that may cause dilution to a well-known Trademark shall be fined with 15,000 USD.
  3. 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
Trademark & Intellectual Property Attorney

Shahnaz Kaushar is a senior Trademark and Intellectual Property (IP) attorney in HHS Lawyers. A seasoned lawyer based in Dubai, she has handled some of the firm’s complex, high-profile cases – many involving the protection of trademark and IP rights. Read more