We are pleased to announce that Habib Al Mulla and Partners has successfully obtained a final judgment from the UAE Federal Supreme Court, affirming a significant decision by the Federal Court of Appeal – Administrative Division. The judgment orders the Ministry of Economy to deregister a trademark that was unlawfully registered by a counterparty, based on our client’s prior use of an identical trademark more than ten years before the counterparty’s registration.
Our legal team demonstrated that the original user of a trademark retains the right to take legal action against any subsequent registration—even in cases where the trademark registration of the Owner was cancelled due to non-renewal. Crucially, the Trademark Owner is entitled to object and/or seek cancellation of any Similar and /or identical trademark within five years from the date of its registration.
In its reasoning, the Court reiterated the definition of a trademark as any sign, shape, or form used to distinguish goods or services, and further rejected the Claimant’s argument of inadmissibility.
The Court also emphasized that, in the present case, the trademark owner (our client) had objected to the counterparty’s application within the legally prescribed five-year window. As such, the registration could not be enforced against the rightful owner and the deregistration application should accepted.
The Claimant had contended that the challenge should have been directed at the decision of the Trademarks Committee (TMC) rather than the Ministry of Economy. The Court held that both decisions are intrinsically linked and that a timely petition was filed, satisfying procedural requirements.
This ruling sets a landmark precedent in UAE trademark litigation, reaffirming the protection of rights arising from actual use over mere registration the Trademark.
Seek Legal Counsel
For expert guidance on judgment enforcement, consult Dr. Kamel Elshendidy, Counsel and Wagdy Ismail, Associate, all specializing in litigation. Our team is dedicated to providing tailored legal solutions for your needs.
