Enforcement of trademark laws a challenge

(DENNIS MALLARI)  

 

 

“As businesses from the region and outside expand globally, the most crucial law with regards to trademark has emerged to be IP protection. The UAE trademark law satisfies most of the conditions laid down by the WTO as part of its Trip, or trade related intellectual property,” Omar Obeidat, partner at Al Tamimi and Company, a legal consultancy firm based in Dubai said.

“The Trip is a benchmark standard developed by the WTO and is most widely accepted as the best standards related to IP globally,” Obeidat said. “The real challenges with regard to IP protection and trademark regulation lie with enforcement.”

The signing of the agreement earlier this week to link all commercial registers in the UAE is a major step forward in resolving the challenges of trademark registration and protection, said Obeidat.

 

“The uniform commercial register agreement is a breakthrough decision, for sure. One of the main challenges in trademark protection is the conflict between trademark and trade names of businesses operating in different legal frameworks or different geographical areas. The agreement of a uniform register signed by the Minister of Economy is crucial in that respect,” Obeidat said.

A trademark is registered as an identification of a service or business activity. A trade name, on the other hand, is a name identifying the business activities for which an entity is registered.

For example, Emaar is a trademark for all of the company’s entities, while Emaar Properties or Emaar International is a trade name of the registered activities of those entities respectively.

“You have Tameer Jordan and Tameer International as two unrelated entities, thereby creating co-existence of conflicting trade names and trademarks,” Obeidat said.

Trademark infringement is a criminal offence in the UAE. “However, in most cases of trademark infringement, the brand owners avoid filing cases. As a result, there have been hardly any famous precedents of punishment for infringement,” he said.

Another big challenge for trademark protection is non-deterrence. “Most criminal judgements issued by the courts are fines imposed on the accused. But the minimum penalty for trademark infringement in the UAE is just Dh5,000 with a maximum imprisonment of three years,” Obeidat said.

“One of the cases encountered was where counterfeit cigarettes of a prominent brand were seized with market value in excess of Dh10 million but the fine imposed was just Dh10,000,” he said.

Obeidat believes the solution is four-pronged. “Firstly, you need to address penalties in a manner that match the crimes committed, which means you need to increase the minimum penalties involved in infringement cases.

“Secondly, you need to have more brand owners come forward to file cases, creating some famous precedents. Thirdly, you need to build your own jurisprudence in the matter by having specialised courts and judges for trademark infringement cases, at least for a certain limited period. Once you’ve built a certain jurisprudence, you can have it transferred to the general courts,” he said.

Obeidat said the most crucial aspect was to increase regional co-operation in trademark issues. “You need to be able to predict problems before they come up. With the introduction of a common market and with businesses looking to expand their access to markets across the region, regional co-operation on the issue can be of great value in resolving some of the trademark challenges.”