Trademark infringement and counterfeiting UAE law is the illegal use of a registered trademark or a mark that is confusingly similar to a registered trademark. This includes using a mark on products or services that is identical or similar to a registered trademark without the trademark owner’s permission.

Infringement of a trademark may result in legal action by the trademark owner, which may include penalties and imprisonment. keep reading to have more information about trademark infringement and counterfeiting UAE Law.

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Our Experience in Resolving Trademark Infringement and Counterfeiting UAE law

This blog outlines how Khairallah Advocates & Legal Consultants assisted a well-known water company client in resolving a trademark infringement lawsuit with a rival and position under the current Trademark Law.

It was not a great surprise for the owner of a well-known water brand (Plaintiff) carrying business since 1969 in several countries to find its trademark was registered by a Competitor Company (Respondent) in the UAE enjoying their trade name.

When approached by the concerned Ministry, Plaintiff was surprised by finding that the Respondent had registered their trademark under the same category/activity.

Plaintiff sent a warning notice to Defendant for canceling registration, but to no avail. Hence, on behalf of Plaintiff, we referred the matter to Dubai Courts with a claim to abolish/cancellation of registration of the trademark in the Ministry relying on several articles from the law and supporting judgments.

In the precedent judgment we got in favor of our Client (Plaintiff), we successfully proved counterfeiting of a trademark was to create a brand that is similar to the original brand which will likely mislead the public/consumers, the awareness and recognition of the ordinary consumers were taken into consideration.

The court ordered to cancellation of the registration of the trademark under the name of Respondent and ordered the Ministry of Economy to register the trademark in favor of our Client.

Federal Decree-Law no. (36) of 2021 Issued on 20/09/2021 on Trademarks

Precautionary measures upon infringement of rights

1- The right holder may, in case of infringement or in order to avoid an imminent infringement of any of the rights established under the provisions of this Decree-Law, obtain an order on a petition from the Judge of Urgent Matters at the Civil Court with jurisdiction over the origin of the dispute, so as to take one or more appropriate provisional measures, including the following:

• Make a detailed description of the infringement, the goods that are the subject matter of this infringement, and the materials, tools, and equipment used or that may be used therein.
• Imposing seizure on the materials, tools, and equipment referred to in the preceding paragraph of this clause, and the proceeds resulting from the infringement.
• Preventing the goods that are the subject matter of the infringement from entering commercial channels and preventing their export, including imported goods forthwith after their customs clearance.
• Preserving any evidence related to the subject matter of the infringement.

2- The Judge of Urgent Matters may instruct the petitioner to submit whatever evidence in his possession suggesting that the right has been infringed or that the infringement is imminent, and to provide information that is sufficient to implement the provisional measure and identify the goods concerned.

3- The Judge of Urgent Matters shall decide on the petition within a period not exceeding (10) ten days from the date of its filing, save for exceptional cases that he deems appropriate.

4- The Judge of Urgent Matters may, when necessary, issue the order, at the request of the petitioner, without summoning the other party, if it is likely that the delay in issuing the order may cause irreparable harm to the plaintiff or if there is a fear that the evidence will be lost or destroyed. In this case, the other party shall be notified of the matter without any delay forthwith upon its issuance, and when necessary, the notification may be made immediately after execution of the order.

5- If the Judge of Urgent Matters orders that a provisional measure be taken without summoning the other party, the defendant may, after being notified thereof, file a grievance against said order before the president of the court that issued it, within (15) fifteen days from the date of his notification thereof, and the president of the court in this case may confirm or modify or cancel the order.

6- The Judge of Urgent Matters may instruct the petitioner to provide an appropriate financial guarantee or a bank guarantee sufficient to protect the defendant from abuse of the right, and the amount of the guarantee or bank guarantee shall be reasonable and appropriate.

7- The right holder may file a lawsuit in respect of the origin of the dispute within (20) twenty days from the date of the issuance of the order to take the provisional measure or from the date of his notification of the rejection of the grievance stipulated in clause (5) of this article, as the case may be, otherwise this order shall be cancelled at the request of the defendant.

Claim for compensation | Trademark infringement uae law

UAE Anti-Counterfeiting, The Trademark owner incurring damage resulting from the infringement of any of his rights stipulated under the provisions of this Decree-Law, may file a lawsuit with the Civil Court to claim compensation in accordance with the general rules.

penalties for trademark infringement

Without prejudice to any severer penalty stipulated in any other law, a penalty of imprisonment and a fine of no less than (100,000) one hundred thousand dirhams and not more than (1,000,000) one million dirhams, or either of these two penalties, shall be imposed on whomever:

1. Forges a Trademark that was registered in accordance with the provisions of this Decree-Law or counterfeits a Trademark in a way that leads to confusing the public, whether in respect of the goods or services distinguished by the original Trademark or those that are similar thereto.
2. Knowingly uses a forged or counterfeit Trademark for commercial purposes.
3. Puts on his goods or uses in respect of the services he provides, in bad faith, a Trademark owned by others.
4. Possesses tools or materials with the intent of using them to forge or counterfeit registered or well-known Trademarks.
5. Knowingly imports or exports goods bearing a forged or counterfeit Trademark.

Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment not exceeding one year and a fine of not less than (50,000) fifty thousand dirhams and not more than (200,000) two hundred thousand dirhams or either of these two penalties shall be imposed on whomever:

1. Sells or offers for sale or circulation or possesses with the intention of selling goods or offers the provision of services carrying a forged, imitated, or unlawfully put or used Trademark, despite his knowledge thereof.
2. Unlawfully uses an unregistered Trademark in the cases stipulated in Article (3) of this Decree-Law on his commercial papers and documents, goods, or services, and this would lead to the belief that the Trademark has been registered.

You can contact Khairallah Advocates & Legal Consultants, one of the best law firms in Dubai, to obtain the best legal advice.

The UAE law’s view of the issue of trademark infringement

UAE Trademark law, Dubai Court of Cassation states that:

“The provision of Article (4) of Federal Law No. 37 of 1992 on trademarks in the UAE, excluding from the general principle that the right of the trademark owner is limited inside the country of trademark and shall not be extended abroad. However, the legislators explicitly stated in the Article as mentioned earlier that if the trademark gained a worldwide reputation in other countries; then, the trademark shall not be registered, excluding by the consent of the real owner in order for protecting the trademark and maintaining other trademark properties. A worldwide trademark means a trademark that gains a great reputation for expansion and distribution in a wide geographical area outside the country and shall be difficult to accept the use of the same trademark for any similar products, as the trademark is associated with a large number of consumers concerned with the products subject matter of the trademark, and generally not the standard fame on the international community level as a whole. It is not required that the worldwide trademark is registered inside such worldwide countries, as the trademark has legal protection even if not registered within countries where the products subject matter of the trademark are distributed.”

If you have a trademark-related legal problem, contact the advocate in Dubai at Khairallah Law Firm. 

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FAQ about Trademark Infringement in UAE

1-What are the 3 things that determine trademark infringement?

The three distinct criteria of “use,” “in commerce,” and “likelihood of confusion” must all be present in order to prove trademark infringement.

2-How do you defend a trademark infringement in Dubai?

You can hire a trademark attorney to send a response to the legal notice relating to infringement, file a reply to the court case, and even file a counter-case in order to defend a trademark infringement lawsuit brought against your trademark. A trademark is a formal assertion of the exclusive right to use a certain brand name or logo.

3-When is a person liable for infringement?

If a person had knowledge of the infringement or had a good faith belief that it had occurred, they could be held accountable as a contributory infringer even though they had not personally engaged or participated in the unlawful conduct.

4- can you go to jail for trademark infringement?

For these reasons, trademark prosecutions must be approached with prudence. Possession of a modest quantity of counterfeit articles may result in a community order, with more serious offenses having the possibility of a ten-year jail term and/or an infinite fine.

Conclusion

Khairallah Advocates & Legal Consultants specializes in handling litigations for any trademark infringement and counterfeiting UAE law and other infringements. Please feel free to contact us for any legal assistance.

Don’t hesitate to contact our trademark lawyers in dubai, Jouslin Khairallah is the Founder & Managing Director of Khairallah Advocates and Legal Consultants. She’s one of the top lawyers in Dubai. Being a profound litigator/advocate/advisor, she represents large Middle East and Multinational Corporate Entities and Individuals representing in complex and high-value corporate, commercial, criminal, maritime, banking, construction, real estate, insurance, family, employment, and rent disputes. Mrs. Jouslin Khairallah has become a member of the UIA (International Association of Lawyers) in 2022.

She’s licensed to appear before all courts in the UAE, including Federal Supreme Court, Dubai International Financial Centre (DIFC), and Dubai International Arbitration Centre (DIAC).

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