Judgment of the Commercial Court of Cassation on the Dispute Concerning a Trademark.

Practice Area: Intellectual Property Law – Trademarks
Outcome: Appeal dismissed; lower court judgment upheld—trademarks found sufficiently distinct, and appellant’s claims deemed factual and beyond the Court’s jurisdiction.

Facts of the Case

The facts of the case concern a dispute over the ownership and use of trademarks between two companies operating in the same line of business.
The appellant company filed a lawsuit before the Dubai Court of First Instance, seeking the cancellation of two trademarks registered in the name of the respondent company, on the grounds that they were identical or confusingly similar to its original trademark, which had been registered abroad and used within the United Arab Emirates since 2008. The appellant also sought compensation for material and moral damages resulting from the alleged infringement of its mark.

After appointing an expert and receiving the expert’s report, the Court of First Instance dismissed the case, and the Court of Appeal upheld that judgment. The appellant then filed a petition for cassation against the appellate decision.

Grounds of the Appeal

The appellant challenged the contested judgment, alleging misapplication of the law and insufficient reasoning. It argued that the lower court failed to conduct a visual comparison between the trademarks in the presence of the parties and neglected to examine the claim concerning the second registered mark.

The appellant further contended that the court relied on two contradictory expert reports prepared by the same expert and disregarded prior judgments issued in its favor, both inside and outside the UAE, regarding the same trademark.
Additionally, it argued that the expert’s report was invalid, as it contained a legal opinion beyond the scope of his technical expertise.

The Court’s Response and Legal Grounds

The Court of Cassation found the appellant’s claims to be unfounded and rejected the appeal based on the following legal principles:

1.   A trademark is any sign used to distinguish a trader’s goods or services. The legal owner of a mark is the person in whose name it is registered, and registration affirms an existing right rather than creating a new one where prior use exists.

2.   Imitation occurs when the overall similarity between two marks is likely to mislead consumers. Such similarity must be assessed based on the general impression of the marks as a whole, not on their individual elements.

3.  Determining similarity or likelihood of confusion between marks is a question of fact reserved for the trial court, provided that its judgment is based on sound reasoning supported by the record.

4.  The court has discretion to rely on an expert’s report if it is satisfied with its soundness and is not obliged to respond to every objection individually. Mere inconsistency between two expert reports does not vitiate the judgment unless the contradiction is so fundamental as to render the findings incomprehensible.

5.  An expert may revise his final opinion if new facts or documents emerge, and referring the case back to the expert or appointing another expert lies within the court’s discretion, not the parties’ right.

Applying these principles, the Court held that the expert reports established that the disputed trademarks differ sufficiently in overall appearance, symbols, and colors to distinguish one from the other, and that phonetic similarity in name alone is insufficient to prove imitation.
It was also established that the appellant’s trademark had not yet been finally registered, as an objection to it was still pending before the Ministry of Economy, while the respondent had been using its mark in actual commercial activity since 2019.

Accordingly, the Court ruled that the appellant’s arguments amounted to mere factual disputes over the assessment of evidence, which cannot be raised before the Court of Cassation. Therefore, the Court dismissed both appeals and upheld the contested judgment

Conclusion

This judgment reinforces an important judicial principle: the assessment of similarity between trademarks is a technical and factual matter to be determined by the trial court, based on the overall impression of the mark rather than its individual components.

It also confirms that an accepted objection to a trademark registration invalidates the preliminary registration, and that infringement cannot be established unless there is actual use of an identical or confusingly similar mark that causes real confusion in the market. Furthermore, the judgment highlights the balanced approach of UAE courts in protecting industrial property rights safeguarding trademark owners while upholding the principles of fair competition and the legitimate freedom to use distinctive marks.