Business Law Article about Trademarks Ownership
Posted: Oct 04, 2016
There is a common misconception which suggests that registering a trademark grants the party a right of ownership. Technically this may be true but it is not the registration that grants ownership over a trademark but using a trademark does.
Registering the trademark is regarded as a presumption that implies a person who submitted the request for registration is the first to use such trademark. Nevertheless, that presumption can be rebutted by a third party proving that he/she was previously using the same trademark. UAE Trademarks law stipulates that "the ministry and whoever involved shall have the right to ask for judging with striking out the trademark which may be registered with no right and the ministry shall strike out the registration whenever a final judgment is presented to it in the executive form".
This kind of dispute usually takes place when an international body has the interest to register its international trademark within the UAE jurisdiction. In some cases, such international body may find its international trademark already registered through a local entity. Therefore that international body has to go through courts in order to obtain a judgment to remove the registered trademark from the ministry’s records. The aforementioned rule was affirmed through a judgment issued at Dubai’s Cassation Court. A case was lodged through an international organization against a local entity who registered the international entity’s trademark at the UAE Ministry of Economy. The court stated in its judgment that" registering a trademark is a presumption for the priority of using it, however, a third party has the right to prove his priority of using it". It is important to note that the objecting party must prove that they used the trademark in another country prior to the local entity in UAE. In other words, the burden of proof is on the international entity to prove that they have used the trademark internationally.
Without prejudice to the above-mentioned rule, the law stipulates an exception to it. This exception is triggered when an entity or an individual registers a trademark and continues to use it for five consecutive years from the date of registering it without being contested by an international entity or otherwise. In case, no claim can be filed against him with respect to ownership of the trademark.
Dr. Hassan Elhais is a legal consultant in Dubai, specializing in the drafting of all statements of claim, memos and consultation on litigation of all manner.