Protection of the Trade Name under the Paris Convention and UAE Federal Laws

Background of the Dispute

This dispute concerns the protection of a longstanding, inherited trade name held by a family engaged in the food trade in Dubai since 1929. The name has historically been associated with the sale of high-quality rice and other food products, earning significant market recognition and commercial weight locally.

Following the death of the predecessor, the heirs agreed, in official meeting minutes dated 28/11/2011, that some heirs (the defendants) would waive the trade name and the associated commercial license in favor of the other heirs (the plaintiffs). This waiver was ratified in the estate liquidation committee’s decision. The business premises and trade name were evaluated, and their value was deducted from the plaintiffs’ shares in the estate, thereby transferring ownership of the trade name to them by right.

However, the defendants subsequently established a new company operating in the same business sector (food trade) and registered a trade name confusingly similar to the one they had waived to the plaintiffs. This led to actual confusion among customers and resulted in repeated delivery errors on invoices received by the plaintiffs due to the similarity of the names.

Moreover, the defendants registered a similar trademark, which the court had previously ordered to be canceled in an earlier case. The ruling was upheld on appeal and in cassation, indicating a pattern of unfair competition and an attempt to exploit the historic name and its market reputation.

The Court of First Instance in the present case ruled to prohibit the use of the trade name and ordered its removal from the commercial register. The Court of Appeal upheld this ruling, after which the defendants filed an appeal.

Grounds of the Appeal

The appellants based their appeal on the alleged necessity of following the appeal procedures stipulated in the Trademarks Law, specifically filing a grievance with the Ministry of Economy. They sought to frame the dispute within the scope of trademark law and insisted on following the grievance procedures set forth in Articles 13, 15, and 16 of Federal Law No. 36 of 2021 on Trademarks. These articles require appealing Ministry decisions before the Grievances Committee prior to resorting to the judiciary—whether in cases of refusal, suspension, or cancellation of a trademark.

 The appellants argued that the case aimed to cancel the disputed name, which, in their view, necessitated following the same procedures as trademark disputes. They claimed that the court ignored this defense without examining or discussing it, resulting in defective reasoning that warrants overturning the judgment.

Court’s Discussion and Response to the Appeal

The Court of Cassation found the appellants’ claim unfounded, affirming that the dispute does not concern a trademark subject to the Trademarks Law but rather a trade name registered with the Department of Economic Development. As such, it falls outside the scope of the grievance and administrative appeal provisions of Federal Law No. 36 of 2021.

The court clarified that a trade name enjoys independent protection under general legal principles and under the Paris Convention for the Protection of Industrial Property, which the UAE has acceded to and incorporated into its domestic legislation. The Convention provides protection for trade names in all member states even without registration and prohibits any acts likely to cause confusion among the public, classifying such acts as unfair competition.

Accordingly, the plaintiffs’ request to prevent the use of the similar trade name and to remove it from the local commercial register is a matter of trade name protection and prevention of confusion. It does not require following the grievance procedures before the Grievances Committee. Since the appellants did not provide evidence that the disputed name is registered as a trademark with the Ministry of Economy or that any Ministry decision exists regarding it, their defense is unsupported. Therefore, the court considered the lower court’s omission to address this defense immaterial and rejected the appeal. 

Conclusion

A case concerning a trade name, when aimed at preventing its use and removing it from the commercial register at the Department of Economic Development, is not subject to the procedures and restrictions for cancellation or opposition of trademarks under Federal Law No. 36 of 2021. Pursuing such procedures before the Ministry of Economy’s Grievances Committee is not required unless the name is registered as a trademark with the Ministry and there is an administrative decision regarding it.

Protection of a trade name, whether registered in the commercial register or having established use and reputation, is governed by trade name protection rules and the prohibition of unfair competition. It is not bound by the appeal procedures for trademarks under Federal Law No. 36 of 2021, particularly if the name is not registered as a trademark with the Ministry of Economy. This protection is also supported by the Paris Convention, which safeguards trade names even without registration and prevents any use likely to cause confusion between businesses or their activities.