July 14, 2024 5:15 pm in Dubai

Habib Al Mulla and Partners has obtained a decisive court precedent that establishes the extent of corporate usage of a trademark as the key criterion for determining ownership, regardless of formal registration.

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Habib Al Mulla and Partners is proud to announce a major win in a case rehearsed before the Ras Al-Khaimah court of Cassation, wherein a long-awaited precedent was set.

In a landmark decision issued on the 2nd of April 2024, the Ras Al-Khaimah court of Cassation addressed an area of ambiguity surrounding the ownership right of the trademark based on prior use concept.   

This issue, although widely addressed in comparative laws and jurisprudence, had not previously been expressly addressed by the RAK judiciary, thereby leaving trademark owners uncertain of whether a trademark infringement can be legally pursued.

Our legal team comprised of Mohamed El Khatib (Principal Partner and Head of Dispute Resolution) and Dr. Kamel El-Shendidy (Counsel) who illustrated to the Cassation Court the principle that, according to various legal doctrines, a trademark is considered the property of the entity that first used it in commerce regardless of the official registration process. This argument firmly established that the original user of a trademark or trade name possesses the legal right to pursue charges against any infringer or subsequent user of the same trademark Even though the trademark registration had been canceled due to the non-payment of the renewal fee.  We illustrated how this legal precedent supports the notion that the original user has an exclusive right to the trademark, thereby protecting their business identity and market presence.

The Cassation Court accepted this argument and issued a ruling affirming that the rightful ownership of the trademark is vested in the entity that first used it in commerce, irrespective of whether the trademark has been officially registered.

This decision underscores the legal principle that prior use takes precedence over formal registration in determining trademark rights, thereby granting the original user the exclusive right to the trademark and the ability to take legal action against any subsequent infringers.

Meet Our Team: The success of this transaction is attributed to the dedicated efforts of our expert team members:

Mohamed El Khatib, Dr Kamel El-Shendidy, and Amjad Ramadan

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