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Recognition of well-known Trademarks

05-10-2020

The legal term of "well-known trademark" first appeared in the 1883 Paris Convention for the Protection of Industrial Property ("Paris Convention"), which sets forth the principles for granting special protection to well-known trademarks. ("well-known trademark" as a trademark that is "widely known to the pertinent general public and enjoys a relatively high reputation.")

In a recent lawsuit, TLG IP Litigation Team successfully persuaded the Court that the trademark of the plaintiff is a ‘’well-known trademark’’ thus, the application of the articles of the Paris Convention which gives international protection to well-known marks.  

Background:
The plaintiff, a German international company that deals with luxurious clothes and perfumes filed a case against a local company which was found to be using the essential element of the plaintiff’s trademark. 

It was established that the German company was the owner of the trademark that was registered as a trademark for the first time in Germany in 1977, and it was also registered in many countries of the world. The German company was surprised to find that the defendant was using the mark and practicing commercial activity on the same products on which it was practicing, so it filed a lawsuit.

The court concluded that the plaintiff owns the trademark in Class 25 and Class 35, and that this mark is an internationally famous mark, and that its origin is in Germany and has been used in many countries since the eighties of the last century, thus, it is globally protected. Therefore, it is not permissible for anyone but its owner, the plaintiff, to use it or register it worldwide.

It was also established that the defendant used the word; with the same letters, the way of writing, the way of drawing letters, as well as the same size; in its trade name added to another word which raises confusion among the consumers and supports the belief that there is a relationship between the two marks or that the defendant is related to the same, which is contrary to reality, without the plaintiff’s desire or consent for that, which is what is considered an infringement from the defendant on the plaintiff’s right to its trademark.  

The Law: 
Whereas it is established that the trade name is a specific name that the merchant or commercial company uses to distinguish his shop or company from others. In order for this trade name to have legal protection, it shall be registered in the register prepared for such purpose at the Department of Economic Development and not to lead to confusion with other trade names in the field of similar trade. As for the trademark, it involves what is used or intended to be used in distinguishing products or services to indicate that they belong to the owner of the trademark, and whoever desires to use a trademark to distinguish his products or services shall request to register the same in the Trademarks Register at the Ministry of Commerce and Economy. Whoever registers a trademark in his own name shall be considered its sole owner. If the trademark has been registered, the effect of registration shall be delayed until the date of submitting the registration application.

It is also decided that the imitation of the trademark is the synthesis of a trademark similar in its entirety to another trademark, such similarity would mislead the public of consumers addressed by the two marks because of the confusion between them. In order to assess whether the trademark has a special characteristic that distinguishes it from others, in a way that does not lead to confusion and misleading, it is necessary to look at the two marks in their entirety, not to each of the elements fixed herein. What matters is not that the mark contains letters, symbols, pictures, or colors which are contained in another trademark, but what matters is the general image imprinted in the mind as a result of the combination of these images, symbols, letters, or colors together in a manner that highlights another trademark regardless of the elements from which it was combined or whether one of them shares a part or more of the other.

The Judgment: 
TLG IP litigation team has successfully persuaded the Court that the trademark of the plaintiff is well-known and the articles of Paris Convention that give an international protection to the well-known marks should be applied in this case. Regardless the prior of the use in UAE. In addition, according thereto, the plaintiff has an exclusive right on the trademark so it is no longer available to any third party. Pursuant to this, the Court issued the judgment which states the following:

  1. Strike off the word “__” from the trade license of to the defendant and all of the branches related thereto, as well as form the trademark which has been registered in the class 35.
  2. Publish the judgment in two local newspaper
  3. Oblige the defendant to cover the expenses of the lawsuit as well as the amount of AED 5000 as an attorney’s fees.