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Court decision strengthens the enforcement of 3D trademarks in the UAE

12-07-2020

Three-dimensional (3D) trademarks are trademarks consisting of three-dimensional shapes or any combination with two-dimensional trademarks (such as characters and figures). Generally, it relates to the external appearance of the product and does not pertain to the function and mechanism of the product.

According to the Federal Law No. 37 of 1992 as amended by Federal Law No. 8 of 2002 Concerning TRADEMARKS; The UAE trademark office does accept the registration of (3D) trademarks, in addition to, at The Legal Group (TLG), we have performed various successful registrations on behalf of our clients for their products as a 3D trademark in the UAE.

Nowadays, many counterfeiters focus on infringements related to the (3D) shape of the product itself or the trade dress. It is a smart method adopted by the counterfeiters to copy the entire product while changing the genuine brand name (word mark) and placing their own brand name on the packaging or the (3D) shape, for the purpose of evading legal liability on the grounds of using their own brand name (word mark). However, due to our expertise in the field and the numerous similar Criminal cases handled on behalf of our clients, we were able to obtain favorable judgments and halt those traders from using the (3D) shape registered trademarks of our clients.

On behalf of a major client of ours, one of the largest manufacturers of home appliances and electronic products worldwide, and which possesses countless brands registered in the UAE and beyond, a criminal complaint was filed before the Dubai Police against a company which was involved in infringing the (3D) shape of their product (Dry Iron), and the same is a registered trademark in the UAE, thus protected by the Law.

Consequently, the Dubai Police seized the infringing products, and according to the report issued by the General Department of Forensic and Criminology (Criminal Investigation Laboratory of Dubai Police), the seized products have been proven to be counterfeit, and infringing the 3D mark belonging to our client.

The Criminal case has been transferred to the Dubai Public Prosecution, for further investigation, then to the Criminal Court of First Instance in order to consider the case.

During the Pleading before the Criminal Court, all essential evidence -that support our client’s position and proves that his trademark is a distinctive registered trademark in the UAE- were submitted, thus protected by the law. 

Subsequently, On July 2020 the judgment was pronounced by the Criminal Court of First Instance, which stipulates;
•    Conviction of the defendants and a fine of 10,000 AED.
•    Confiscation and destruction of the counterfeit seizures.

Article by, 
 
Rania Mohamed
Legal Consultant
Intellectual Property Litigation Division