The protection of Trademarks including the mechanism of Preventive Measures by its owner by Ahmed Elmahdy

 

  • Introduction :

The trademark is like the identity card of products, goods and services that form the backbone of the state economy and the activity practiced by persons – individuals or groups – that was industrial, commercial or service.

The TRIPS agreement on Trade Related Aspects of Intellectual Property Rights which the UAE joined it defines the trademark in article (15.1) as ” any mark or group of marks that permits the distinction of goods and services produced by a corporation or by other establishments shall be deemed to include names, letters, numbers, forms and colour combinations and any combination of which shall be registered as a trademark, and the examples given here are for example but not exclusively.

Domestically, in the UAE The Federal Law No. (37) For the year 1992, concerning trademarks, that was also amended by Law No. (8) of 2002 article (2) according to the definition of trademarks provides that ” Shall be considered a trademark anything having a distinctive form such as names, words, signatures, letters, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, advertisements, packs or any other mark or group of marks if used or intended to be used either to distinguish goods, products or services whatever their source or to indicate that the goods or products belong to the trademark’s owner due to its manufacturing, selection or trading or to indicate the rendering of a service. ”

  • The Concept of Intellectual Property Rights and Trademarks Protection :

The protection of Intellectual Property Rights including trademarks stimulates the building of the knowledge economy in the UAE, allowing the exchange of experiences and knowledge in a safe environment, and the rights of all parties from investors, companies or trademarks.

Important measures have been taken to protect intellectual property and trademarks by the UAE that has updated their laws and associated legislation. Thus, UAE takes precedence in this area between many of countries. Based on that, UAE has issued The Federal Law No. (37) For the year 1992, concerning trademarks, that was also amended by Law No. (8) Of 2002.

The continuous development of the economic laws and regulations adopted by UAE is a catalyst for economic growth and for increasing the GDP. The modern legislative environment provides an ideal platform for international companies seeking opportunities for expansion and growth.

The person who has registered the trademark shall be considered as the owner of the trademark and no dispute may be taken against the ownership of the trademark if it is used by a person who has registered it continuously for at least five years from the date of registration without being sued for not possessing the trademark.

  • The Trademarks protection in the light of TRIPS Agreement :

TRIPS stated general principles of procedure for the acquisition and sanction of industrial property rights and Trademarks that must be enforced by its members. Under parts III and IV of TRIPS, member states must introduce procedures into their national legislation that will allow an efficient action against any infringement of intellectual property rights. Member states also must introduce means designed to prevent any further infringement of the trademarks and are obligated to enforce both of the above measures “so as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. Furthermore, procedures and formalities required for the acquisition of rights must be reasonable and equitable and may not be “unnecessarily complicated and costly,” nor include unreasonable or unjustified delays.

Part III, sections 2-5 of TRIPS provide a more detailed list of procedures and criminal, civil, and administrative corrective measures. In cases of infringement, rights holders may seek enforcement from judicial, administrative, and customs authorities, through measures such as injunctions and penal sanctions, or through the confiscation or destruction of counterfeit goods. If infringement is threatening, the owner may demand provisional measures such as suspension of the goods from circulation. Each member state or group of states must organize protection of trademarks to be in compliance not only with these general principles but also with the rules specific to trademarks.

  • The Trademarks protection in the light of UAE Federal Law No. (37) of 1992, amended by Law No. (8) of 2002 :

The first way of protection given to the trademark through the UAE Trademarks Law is what has been acknowledged by Article 17 which states that “Any person who registers a mark shall be deemed its sole owner. The ownership of such mark may not be disputed if the person, who registers it, uses it uninterruptedly for at least (5) years from the date of registration without an action being lodged against him ruling for its validity. The owner of a registered trademark may prevent others from using a similar or identical trademark, to distinguish products or services that are identical, similar or correlated for which the mark has been registered, in such a way that confuses the consumers.”

Furthermore, Article 21 states that without prejudice to the provision of Article (17), the Ministry and any concerned person shall have the right to request a judgement be passed for striking off a trademark registered without right. In this regard, the Law has confers a protection bases on the “prior use “of the Trademark according to the aforementioned circumstances in Article 17 although that article 21 does not specify the criteria to determine when a mark is to be considered registered “wrongly” and there is accordingly more scope in cancellation proceedings to argue for the removal of a trademark from the register based on “prior use”.

In the case of any infringements to the rights of Trademarks, the UAE Trademarks Law has determined the conducts that shall be penalized in the light of the protection of the Trademarks as in Articles 37, 38, 39, 40 which diverse range of confinement, fine and the Trademark owner to seek for judicial compensation.

  • The preventive measures vested to Trademark owner to safeguard his Trademark in case of any infringements occurred :

The preventive measures are measures intended as interim measures aimed at preserving the disputed rights until an action or omission is achieved which is intended to avoid damage to rights during the period of the proceedings. Herein, the main characteristic of the preventive measures that may be taken by the Court is its primary objective, not only to preserve the rights of the conflicting parties, preserve evidence and prevent the escalation of the conflict but also to ensure that the final verdict is implemented when it is issued.

We can’t deny that taking preventive measures helps to facilitate proving the infringement on the trademark and seizure of the crime and the tools have been used to execute such infringement, addition to preventing the continuation of this infringement and to prevent the circulation of goods and products bearing the trademark of such infringement. It is clear that the preventive measures taken by the expedited judiciary based on the interest of the concerned party are intended to preserve the rights and funds and to prevent harm to trademarks owner. The judge of urgent matters takes this measure as a prelude to the dispute in principle or to be adjudicated by the competent judge of the matter.

In that regard, the Federal Law No. (37) For the year 1992, concerning trademarks, has adopted and stated in detail the right of the trademark owner to seek such preventive measures as in articles (41), (42) and (43).

  • Conclusion :

The trademark is an important guide for the consumer to identify the source and excellence of the products and services and thus facilitate the shopping process. However, it is subject to the risks of counterfeiting and counterfeiting, which makes countries strive to adopt a protection system and preventive measures to protect trademark from infringement by issuing national legal texts and concluding international treaties to broadcast the sentences of the penalties imposed on the various misdemeanours resulted in due course, these penalties may be civil or criminal. However, trademark infrigments remains a phenomenon that negatively affects national products and is also exposing economic safety and security of the country.

Thank you!

 

 

 

 

 

 

 

 

 

 

MHLF (Mahmood Hussain Law Firm) and Mora & Associati are proud of this alliance since it will allow both law firms to offer our clients a seamless assistance for their international operations in the Emirates and Italy. We intend to offer an added value in the commercial relationship between Italian and Emirati Companies.