UAE Trademark Law: A Shield for Hospitality Brand Owners

By Mohamed Darwish Published: Nov. 25, 2024 Last Updated: Nov. 29, 2024
UAE Trademark Law: A Shield for Hospitality Brand Owners

Introduction

Trademark protection is essential for companies to preserve their brand identity and customer trust in the modern, worldwide economy. Businesses may function without worrying about their brand being diluted or stolen thanks to trademark rules, which act as a barrier against illegal usage and infringement. To protect the rights of trademark owners, the United Arab Emirates (UAE) has put in place extensive trademark regulations that include procedures for registration, objection, and enforcement. In order to show how UAE trademark law safeguards the rights of parties engaged in trademark disputes, this article looks at two significant cases: Staywell Hospitality Group Pty Ltd v. Starwood Hotels & Resorts Worldwide, Inc. and InterContinental Hotels Group PLC v. Suhail Khazaal. It also describes the actions users can take to safeguard their trademarks in accordance with UAE legislation.

Case Summaries and Court Decisions

1. Staywell Hospitality Group Pty Ltd v. Starwood Hotels & Resorts Worldwide, Inc and Sheraton International, Inc

Case Summary: Starwood Hotels & Resorts Worldwide, Inc. and Sheraton International, Inc. contested Staywell Hospitality Group's attempt to register a number of marks for hotel services. The similarities to the "ST. REGIS" mark, which can lead to misunderstandings and harm the goodwill attached to the ST. REGIS brand was the basis for the resistance.

Court Decision:

  • Similarity of Marks: The court determined that the use of "Regis" as a common denominator in both marks may lead to misunderstandings regarding a business relationship between the hotels.
  • Likelihood of Confusion: The court emphasised that confusion must be assessed based on the similarity of the marks and the goods/services.
  • Goodwill: The court recognised that pre-trading activities could establish goodwill if they unequivocally indicated an intention to enter the market and generated an attractive force for customers.

Protection Under UAE Law:

  • Article 3 of Federal Decree-Law No. 36 of 2021 Prohibits the registration of marks that are identical or similar to existing trademarks if they could mislead the public or harm the interests of the trademark owner.
  • Article 8: Allows for the opposition of trademark registration if it conflicts with an existing mark.
  • Article 24: Provides for the cancellation of trademarks that have not been used for five consecutive years or are registered in bad faith.

2. InterContinental Hotels Group PLC, Six Continents Limited v. Suhail Khazaal / E D L Digital Marketing Management LLC

Case Summary: This case involved a domain name dispute where the domain <sixsensesmarina.ae> was found to be confusingly similar to the "SIX SENSES" trademark owned by InterContinental Hotels Group and Six Continents Limited. The respondent had no legitimate interests in the domain and had registered and used it in bad faith.

Court Decision:

  • Confusing Similarity: The domain name incorporated the "SIX SENSES" mark entirely, adding only the term "marina," which did not prevent a finding of confusing similarity.
  • Bad Faith Registration and Use: The respondent configured the website to appear associated with the complainant, misleading consumers and attempting to benefit commercially from the confusion.

Protection Under UAE Law:

  • Article 11: Prevents the registration of trademarks that are identical or similar to existing marks if it would create confusion or harm the interests of the trademark owner.
  • Article 45: Allows customs authorities to prevent the clearance of goods that infringe on trademark rights.
  • Article 49: Imposes penalties for forging or counterfeiting trademarks, including imprisonment and fines.

How UAE Trademark Law Safeguards Interests

1. Preventing Confusion and Protecting goodwill

  • The UAE law provides robust mechanisms to prevent the registration of trademarks that are confusingly similar to existing marks, thereby protecting the goodwill and reputation of established brands.

2. Opposition and Cancellation Procedures

  • The law allows for the opposition of trademark registrations and the cancellation of trademarks that are not used or are registered in bad faith, ensuring that the trademark register remains accurate and reliable.

3. Customs Enforcement

  • Customs authorities in the UAE have the power to prevent the clearance of goods that infringe on trademark rights, helping to combat the import and export of counterfeit goods.

4. Penalties for Infringement

  • The law imposes severe penalties for trademark infringement, including imprisonment and fines, which act as a deterrent against the unauthorised use of trademarks.

5. Protection of Well-Known Trademarks

  • The law provides special protection for well-known trademarks, preventing their registration and use by unauthorised parties, even for dissimilar goods or services, if it would harm the interests of the trademark owner.

Steps Users Can Take to Protect Their Trademarks in the UAE

  1. Register Your Trademark
  2. Monitor for Infringements
  3. Oppose Conflicting Registrations
  4. Enforce Your Rights
  5. Utilise Customs Enforcement:

By following these steps and leveraging the robust protections offered by UAE trademark law, businesses can effectively safeguard their trademarks and maintain their brand integrity in the market.

Conclusion

In the UAE's thriving hospitality sector, trademarks are not just legal tools—they are strategic assets that protect your brand, attract investment, and ensure long-term success. By navigating the trademark registration process thoughtfully and proactively addressing potential conflicts, businesses can safeguard their identity and build a strong foundation for growth in this dynamic market.

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Mohamed Darwish

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