In September 2021, we received a court judgement in Dubai courts awarding our client, which is in the services industry, a financial award for trademark infringement which included a loss in sales compensation and moral damages. This was possible and simple because the client took the right steps and had registered their trademarks a few years ago, so we could use the UAE trademark law to defend the trademark. If the trademarks were not registered, the client could still have taken action against the infringer. If the trademarks were not registered, we would have to rely on unfair competition provisions in UAE commercial transactions law. The problem with unfair competition action is that first, you must establish that you are indeed the company that has prior rights to the trademarks infringed, and this is not always a straightforward effort when compared to a situation where the trademark registration certificate is prima facie evidence of ownership of the trademark according to UAE law.

The second problem with unfair competition is that the burden of proof of a trademark infringement is higher as the courts would require a closer similarity, or copying, of the infringing trademark. In the case of a registered trademark, the similarity requirement is lower. In the case of our client, the infringer had copied certain elements of our client’s trademark, yet because of the lower requirements on similarity, we were able to convince the court of the infringement. 

I believe in this particular case, had our client’s trademark not been registered, we may not have received a favorable judgement.

In the case described above, the client’s industry is services; however, for a company that produces goods or products, copying a registered trademark may be considered counterfeiting, which is a criminal offence in most, if not all, countries around the world, including in the UAE. 

This carries fines and possible jail sentences against the infringers. To file a criminal complaint against a counterfeiter, the trademark must be registered with the concerned department, which in the UAE is the trademark department at the Ministry of Economy. In the case of an unregistered trademark and taking Unfair Competition action, there can be no claim to a criminal complaint and counterfeiting. Furthermore, with registered trademarks, you also have the option to file a complaint with the respective Department of Economic Development office in the UAE, which gives you yet another option to take action against infringers. In the case of an unregistered trademark infringement, this option would not be available.

Lastly, once a trademark is registered, you have the option to record the trademark with the various customs authorities in the UAE, which provides the first line of defense against counterfeits coming from sources outside the UAE. Still, as a prerequisite to recording the trademark with UAE customs authorities, the trademark must be registered with the Ministry of Economy in the UAE. An unregistered trademark cannot be recorded with the Customs Authorities.

As a trademark owner, you should recognize that registering your trademark allows you to build equity in your brand and provides more comprehensive action options against trademark infringement or counterfeiting. In addition, taking action in such a case for a registered trademark would be much quicker, easier, and less costly than in the case of an unregistered trademark, and the chance of receiving a favorable judgement is much higher.

*Note: While AVID IP leads and drafts the case memos in court cases related to Intellectual property issues, we must work under the umbrella of one of our partner local law firm partners.

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