In a recent case, the Federal Supreme Court of the United Arab Emirates (UAE) issued an important decision based on well-known mark principles. In the case, the ‘true” trademark owner, whose mark was registered in Jordan and elsewhere, but not in the UAE, opposed an application in the UAE for its mark by a potential local franchisee. The opposition was based on (1) ownership of the mark in the country of origin (Jordan), (2) bad faith (based on prior communications between the parties concerning potential franchise in the UAE) and (3) prior use in the UAE in the nature of advertisements and appearance in magazines of international circulation likely distributed in the UAE.
The Trademark Office (TMO) rejected the application, based on bad faith. While “bad faith” is not explicitly provided for in the local trademark law, the TMO concluded that it was implied as a form of “unjustified registration,” and constituted bad faith especially in view of the parties’ business communications relating to the applicant’s potential franchise under the mark in the UAE.
On appeal before the Grievance Committee, the decision was reversed and the application approved. On subsequent appeal by the true owner, the Abu Dhabi Federal Court of First Instance appointed an expert to consider the matter. Based on the expert’s report, which came to the same conclusions as the TMO (namely, the owner’s prior use due to ads and magazine placements and the applicant’s bad faith) and found the mark well known in the UAE based on prior registrations in a few other countries in the region, the Court of First Instance affirmed the findings of the report, reversed the Grievance Committee decision and rejected the trademark registration.
The Court of Appeal affirmed and took the added step of specifically addressing bad faith registration as including circumstances where an agent, representative or business associate of the true owner, without authorization, seeks to register the true owner’s mark.
There were further appeals, largely seeking consideration of the bad faith applicant’s prior commercial use of the mark in the UAE. However, it was the true owner’s prior use, in the nature of ads and magazine placements, which carried the day before the Supreme Court.
Based on this decision it now appears that, for well-known mark status in the UAE, the owner need not show that the mark is registered and used throughout the world; rather, proof of use in three or more countries, with reputation spilling into the UAE and possibly elsewhere, will suffice. Moreover, while actual commercial use is generally required to demonstrate prior use, in these circumstances such prior use can also be demonstrated through spill-over advertising and publicity. And finally, while there is no explicit provision relating to “bad faith” registration in the trademark law, such a factor can be considered in addressing issues of unauthorized application/registration.
 Since such decisions are not of public record, we did not have access to the names of the parties or marks involved. Nor was it possible to determine to what extent the business dealings of the parties were a factor. That said, the Supreme Court’s decision appears to have been broader than the specific facts of the case, at least with respect to bad faith.