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Relevance of prior use doctrine under UAE Trademark Law

Relevance of prior use doctrine under UAE Trademark Law

The UAE Federal Law No. (37) of 1992 on Trademark Law  (“Trademark Law”) protect the registered trademarks in UAE. The UAE Trademark Law based on the “First use” doctrine. According to the doctrine, the prior or first use of the trademark shall enjoy all trademark rights. Nevertheless, it is one of the most challenging tasks to prove before the competent court regarding the priority over trademark use. Many of us just thought about the question of the protection of unregistered trademarks. As the present Trademark Law does not provide any specific protection to the prior use of trademark.

What if someone registers an unregistered trademark that is already in use? Does trademark law protect such registered trademark which claimed to be in use by a different owner? How can a prior user prove his ownership over the same trademark registered by someone else? These are some of the most critical issues that need to be addressed. This article will explain the significance of prior use of a trademark and how to determine the first ownership over the disputed trademarks.

What is Prior use Doctrine?

The system of first-use trademarks adopted by some nations, such as the UAE, offers the first users of trademark rights and priority over others in the geographical regions where these trademarks have been used for trade. This first priority is applicable irrespective of whether the trademark is unregistered at the time of the actual commercial use.

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Protection to Prior use by UAE Trademark Law

As stated above, UAE Trademark Law does not provide any direct rights to the prior use of the trademark. However, we can draw a reference by considering the following provision of the trademark law, which indirectly protects the rights of the prior user:

  • The First user shall have priority rights in trademark registration 

According to Article 44 of the Trademark Law; the first user shall have a priority right in registering his mark. Therefore, the first use of trademark, the date of commencement of the first use, its continuity, the prevailing conditions, and the occurrence of the mark registration constitutes the essential elements of prior use of the mark.

  • Opposition over Trademark registration by the prior user

Article 14 of the Trademark law states that any interested party may file an opposition to a mark’s registration. Within thirty (30) days after the date of the final advertising, such objection is filed in writing to the Ministry or sent to it by registered or electronic mail. In the present article, the word “interested party” may include the first user of the trademark. 

  • Challenge registered trademark within five years from the date of registration.

 Article 17 of the Trademark Law states that anyone who registers a mark considered the only mark owner. Ownership of such a mark cannot be contested if the person who registers it uses it continuously for at least five (5) years after the date of registration without facing a challenge to its validity. With this Article, the prior user must submit an objection within five years of the trademark registration contesting the registration based on a using of similar or identical mark.

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Interpretation of the Doctrine by UAE Courts

On many occasion, the UAE Courts have protected the rights of the prior user of trademark through the passing of significant judgements. In addition, the UAE courts have applied a more liberal standard to the “prior use” concept in a considerable number of instances. As can be seen, the courts have permitted a prior user of a trademark to defend their ownership rights against the trademark’s registration by another party, provided that the prior user can establish their continued use of the trademark before the other party applying for registration.

The UAE courts have stated three fundamental grounds upon which they base their decision on contested trademark ownership. They are as follows:

  • Ownership to prove with the usage of a mark

In Petition no. 260/2003, the Dubai Court of Cassation clarified that the right of ownership of a trademark may be established by the use of  mark, not just by obtaining a registration of the trademark.

In another case of Dubai Court of Cassation Commercial Appeal No. 397 of 2019 (dated 09 July 2019, the court held that trademark registration does not exclude anybody from establishing prior use of the trademark. 

  • Prior use applies to a trademark used only in UAE. 

In the Dubai Court of Cassation Commercial Appeal No. 200 of 2008 (dated 23 December 2008), the court determined that the registration of a trademark in another country would not be taken into account for deciding “prior use.” To enable the Courts to resolve the ownership issue, the “prior use” must have occurred in the United Arab Emirates and not in another nation. 

  • Registered trademark used for Five consecutive years without objection

In the Dubai Court of Cassation Commercial Appeal No. 268 of 2008 (dated 09 June 2009), it was confirmed by the court that a trademark’s ownership could not be contested or claimed by law provided that it was registered correctly and utilized for five consecutive years by its owner.

The present UAE Trademark Law is unclear concerning the prior user doctrine. Therefore, it is highly advisable always to register your trademark to avoid uncertainties. The purpose of this article is to provide a general overview of the subject. You can seek professional advice in case of your specific situation. Should you know more about prior use of trademark, don’t hesitate to contact HHS Lawyers and Legal Consultants. We are glad to help you. 

References:

  1. https://www.redpoints.com/blog/first-to-use-vs-first-to-file-trademark/
  2. https://mena.thomsonreuters.com/en/resources/articles/trademarks-in-uae-legal-overview-and-jurisprudence.html
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