Trade Names and Ways To Protect Them12-08-2018
The protection of trade names is considered is very important for companies and trade name owners. The illegal use of these names by unauthorized entities shows bad faith and negatively effects the business operations of the trade names and their owners. This illegal use may also put the brand and owner at danger of losing their good reputation and goodwill. This begs the question, what is a trade name?
According to the cassation courts of Dubai: A trade name is a name that has been chosen by a trader or a company in order to distinguish his shop or company from other ones (judgment no 268-2008 commercial cassation).
The recourse to the civil courts in order to file cases to cancel the trade names of others, similar to yours, is also considered as one of the most common legal way to protect your trade names from unfair use and competition.
The conditions to protect your trade name?
1- To protect your trade name in the UAE, you should register it in the economic departments. It should not be misleading to the consumer by being similar to other trade names in the same field of trade (the judgment no 268-2008 commercial cassation).
2- It should be registered in one of the countries that has signed the Paris convention for the protection of the industrial and intellectual property (the judgment no 194-2010 commercial cassation).
Which laws protect trade names?
If there is bad faith in the use of a trade name, or it is being used in a misleading way, the civil court has the power to rectify any disputes by the analysis and determination of the trial courts. Any awards to be granted may also be estimated by the same court, at the discretion of the presiding judge. While a lot of power is in the hands of the courts, there are laws which also guide the protection of trade names, these are:
1- The Federal Trade Transactions Act No. 18/1993: The law requires that one must not mislead the consumers by use of the trade name of others, particularly when the two trade names can easily be mistaken for each other. In Article 57 of the Federal Trade Transactions Act No. 18/1993 and its amendments, it states that:
The trade name shall be identical to the truth and shall not mislead or prejudice public order or morals
2- Paris Convention for the Protection of Industrial Property: This is considered to be one of the most important references on the protection of the names and the trademarks. The UAE is a signatory to this convention and it became an internal legislation by the accession of the United Arab Emirates, Decree No. 20 of 1996. Article 8 of Decree No. 20 of 1996 states: A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.
TLG ‘s expertise in trade name cancelation cases.
Due to the efforts of the lawyers and the legal consultants of the IP litigation division, TLG was able to win many trade name cancellation cases. Each case has had different documents, evidence and conditions, but despite that TLG was able to persuade the judges in Dubai courts about the bad faith of the traders when they have used the trade names of our clients.
On the other hand, TLG was able to persuade the commercial appeal courts in Dubai to dismiss and reject a case has been filed by a restaurant against our client to cancel our clients trade name. We were successfully able to prove that there was no bad faith by our client, and that our client’s activities did not impact the activities and reputation of the claimant.
Article By Dema Khafaji
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