Cassation No

1) Law “its application”. Civil court “jurisdiction thereof”. Trademark “deletion”. Used by “its authorised owner”. Licence. Publication. Damage to others. Ruling “invalid causation”.

- The competent civil court is empowered, upon the request of any interested party, to decree the cancellation of a trademark registration, provided that it is substantiated that the trademark has not been utilised for a continuous period of five years. An exception is granted if the owner can establish that the non-usage is attributable to external factors, such as import restrictions or other governmental conditions imposed on the goods and services associated with the mark. Notably, the utilisation of the mark by an individual duly authorised by its owner is regarded as a valid use. This provision finds its basis in Article 22 of the Commercial Transactions Law No. 37 of 1992, as amended by Law No. 8 of 2002.

- A trademark owner, in accordance with a written or documented contract, may authorise one or more persons to employ the mark for all or specific products or services for which the mark is registered. This authorisation is governed by the provisions of Article 30 of the aforementioned law.

- The licensing agreement for the use of a trademark shall be officially entered in the trademark registry. The legal consequence of such registration is that the licence becomes effective against third parties upon its entry into the register and subsequent publication in the Official Gazette and two daily newspapers, in compliance with the Implementing Regulation outlined in Minister of Economy Decision No. 6 of 1993. This procedural requirement aims to prevent misinformation and confusion among the consumer public and protect the rights of those holding legitimate claims over the mark.

- An instance of flawed reasoning is illustrated by the rejection of a case on the basis that the trademark was used by another company without proper registration and publication in accordance with the law during the period of usage.

2) Cassation “for the second time.” The court adjudicates the case on its merits.

- Cassation filed for the second time requires the court to adjudicate the case on its merits.

1- Whereas it is stipulated in the text of Article 22 of the Commercial Transactions Law No. 37 of 1992 amended by Law No. 8 of 2002 that “the competent civil court is vested with the authority to cancel the registration of a trademark upon the request of any interested party if it is substantiated that the trademark has remained unused for a continuous period of five years, except in instances where the owner of the mark demonstrates that the non-usage was attributable to reasons beyond their control, with import restrictions and other governmental conditions affecting the goods and services associated with the mark constituting valid foreign reasons. For the purposes of this Article, the utilisation of the mark by an individual duly authorised by its owner is deemed equivalent to the owner's use."

Article 30 of the same Law states: “The trademark owner may, pursuant to a written and documented contract, authorise one or more persons to use the mark for all or specific products or services for which the mark is registered....”

Furthermore, Article 31 of the same Law stipulates as follows: “The licence to use the trademark must be registered in the trademark registry, and the licence shall not have effect before third parties unless it is registered in the registry and published in the manner specified by the Implementing Regulation...”

Collectively, these provisions delineate a comprehensive framework wherein the individual who registers a trademark in their name is unequivocally recognised as its rightful owner. Consequently, exclusive usage rights are conferred upon the owner to employ the mark on their products or goods for which it is registered, serving the purpose of distinguishing them from others. Unauthorised use of the mark on similar commodities or merchandise is impermissible, unless undertaken with a valid licence obtained from the owner of the mark.

In Title IV of the aforementioned Trademarks Law, specifically in Articles 30 to 34, the legislator has meticulously regulated licensing contracts for the use of trademarks. The corresponding Implementing Regulation, as established by Minister of Economy Decision No. 6 of 1993, further delineates the legal framework governing these contracts. The legislator mandates that licensing contracts, allowing others to utilise a trademark, shall be reduced to writing and duly documented. To ensure enforceability against third parties, these contracts necessitate registration in the trademark registry at the Ministry of Economy. Additionally, the law mandates the publication of the licence in the Official Gazette and two daily newspapers. This stringent set of requirements aims to prevent misinformation and confusion among the consumer public, as well as to safeguard the rights of third parties who may possess legitimate claims to the trademark, the lack of awareness of which could potentially result from actions taken concerning the trademark.

An interested party is granted the right to approach the competent court and request the cancellation of the registration of a trademark that has remained unused for five consecutive years. The law establishes that an individual is not considered authorised to use the trademark on behalf of its owner vis-à-vis third parties unless the licensing contract fulfils the formal conditions mentioned above. Moreover, the rights granted by the licence may not be invoked against third parties except from the date of registration and publication in accordance with the legal procedures established for registering the licence agreement for the use of the trademark.

Given the aforementioned circumstances, and whereas it is evident from the documents that the appellant company initiated legal proceedings before the court of first instance on 30/10/2016, seeking the cancellation of a trademark ----- registered in the name of the second respondent on 5/8/2010. The grounds for this request were rooted in the appellant's claim of being the exclusive owner of the trademark, registered in its name in the states of Kuwait and Saudi Arabia. The appellant contended that it actively utilised the trademark both domestically and internationally, particularly through its commercial stores in the emirates of Sharjah and Ras Al Khaimah. Moreover, the appellant alleged that its application to register the mark had been rejected due to the pre-existence of the mark registered in the name of the second respondent. Relying on Article 22 of the aforementioned Trademarks Law, the appellant sought the cancellation of the mark on the grounds of the second respondent's non-usage for five consecutive years.

The contested ruling confirmed the appealed judgment, which dismissed the case. The basis for this dismissal was the expert's determination that the second respondent was indeed using the trademark through another company, identified as “Company.........”, with the consent of the second respondent and without objection thereto. However, the authorisation provided by the second respondent to the court, granting permission to the aforementioned company for use, was not registered and published as a licence contract until 16/7/2019. Consequently, the ruling asserted that this authorisation could not be invoked against the appellant, considered a third party, except from the date of registration and publication in accordance with the law.

The appellant challenges this conclusion, arguing that the ruling erroneously violated the law and erred in its application. The contention is centred on the assertion that, despite the acknowledgment of the second respondent's use of the mark through another company under an authorisation, the failure to register and publish this authorisation during the period of use constitutes a violation of the law and warrants the reversal of the ruling.

2- Whereas the cassation is filed for the second time, the court decides to adjudicate the case on its merits.

The Court,

Whereas in the facts - as apparent pursuant to the perusal of the contested ruling and the remaining documents of the case - the appellant filed Suit No. 190 of 2016 before the Abu Dhabi Plenary Administrative Court. The primary relief sought was the deletion of the trademark ..... registered under No. ... ... in the name of the second respondent, in category 24, given that it is a company ..... engaged in textile and furnishing product activities, as per the trademark ...... and all its associated forms. In 2016, the appellant submitted a trademark registration application to the Ministry of Economy, which was subsequently rejected on the grounds of the existing registration of the same mark in the name of the second respondent. The appellant contended that the second respondent did not manufacture or use any product bearing the mark, thereby asserting its right to request the deletion of the mark in accordance with the provisions of Article 22 of the Trademarks Law.

On 30/10/2016, the Abu Dhabi Federal Court of First Instance rendered a ruling rejecting the case. The appellant, (plaintiff),dissatisfied with this decision, appealed the ruling of the court of first instance in Appeal No. 202 of 2016 - Administrative. On 24/1/2017, the Court of Appeal confirmed the appealed judgment. In response, the appellant pursued a cassation appeal under No. 194 of 2017 - Administrative. On 21/6/2017, this court issued a ruling to reverse the contested judgment with remand back to the court of the next instance. Subsequently, an expert was appointed, and on 21/5/2018, the court confirmed the ruling.

Undeterred, the appellant filed an appeal for the second time in Appeal No. 696 of 2018 - Commercial. On 22/1/2019, the court reversed the contested ruling with remand. Following this, on 24/12/2019, the court of the next instance ruled to confirm its previous decision. In light of these developments, the appellant lodged the present cassation for the third time.

Upon deliberation in a Council Chamber, the court deemed the appeal worthy of consideration and scheduled a session to hear the case.

Given the second ground for cassation against the contested ruling, the appellant asserts the violation of the law and errors in its application. The ruling, according to the appellant, erroneously rejected its claim based on the findings of the expert appointed in the case. The expert concluded that the second respondent utilised the trademark ......, registered in its name, through another company, specifically "Company .........," which is affiliated with “Company .........” based on authorisation from the first owner. The appellant contends that, as per Articles 30 and 31 of Law No. 6 of 1992 concerning trademarks and its Implementing Regulation, for a third party to validly use a trademark under the authorisation of the owner, this must be established through a written and notarised contract. Furthermore, this contract must be registered in the trademark registry at the Ministry of Economy and published in the Official Gazette and two daily newspapers to be enforceable against others.

The objection, as presented by the appellant, holds merit, since it is stipulated in the text of Article 22 of the Commercial Transactions Law No. 37 of 1992 amended by Law No. 8 of 2002 that “the competent civil court is vested with the authority to cancel the registration of a trademark upon the request of any interested party if it is substantiated that the trademark has remained unused for a continuous period of five years, except in instances where the owner of the mark demonstrates that the non-usage was attributable to reasons beyond their control, with import restrictions and other governmental conditions affecting the goods and services associated with the mark constituting valid foreign reasons. For the purposes of this Article, the utilisation of the mark by an individual duly authorised by its owner is deemed equivalent to the owner's use."

Article 30 of the same Law states: “The trademark owner may, pursuant to a written and documented contract, authorise one or more persons to use the mark for all or specific products or services for which the mark is registered....”

Furthermore, Article 31 of the same Law stipulates as follows: “The licence to use the trademark must be registered in the trademark registry, and the licence shall not have effect before third parties unless it is registered in the registry and published in the manner specified by the Implementing Regulation...”

Collectively, these provisions delineate a comprehensive framework wherein the individual who registers a trademark in their name is unequivocally recognised as its rightful owner. Consequently, exclusive usage rights are conferred upon the owner to employ the mark on their products or goods for which it is registered, serving the purpose of distinguishing them from others. Unauthorised use of the mark on similar commodities or merchandise is impermissible, unless undertaken with a valid licence obtained from the owner of the mark.

In Title IV of the aforementioned Trademarks Law, specifically in Articles 30 to 34, the legislator has meticulously regulated licensing contracts for the use of trademarks. The corresponding Implementing Regulation, as established by Minister of Economy Decision No. 6 of 1993, further delineates the legal framework governing these contracts. The legislator mandates that licensing contracts, allowing others to utilise a trademark, shall be reduced to writing and duly documented. To ensure enforceability against third parties, these contracts necessitate registration in the trademark registry at the Ministry of Economy. Additionally, the law mandates the publication of the licence in the Official Gazette and two daily newspapers. This stringent set of requirements aims to prevent misinformation and confusion among the consumer public, as well as to safeguard the rights of third parties who may possess legitimate claims to the trademark, the lack of awareness of which could potentially result from actions taken concerning the trademark.

An interested party is granted the right to approach the competent court and request the cancellation of the registration of a trademark that has remained unused for five consecutive years. The law establishes that an individual is not considered authorised to use the trademark on behalf of its owner vis-à-vis third parties unless the licensing contract fulfils the formal conditions mentioned above. Moreover, the rights granted by the licence may not be invoked against third parties except from the date of registration and publication in accordance with the legal procedures established for registering the licence agreement for the use of the trademark.

Given the aforementioned circumstances, and whereas it is evident from the documents that the appellant company initiated legal proceedings before the court of first instance on 30/10/2016, seeking the cancellation of a trademark ----- registered in the name of the second respondent on 5/8/2010. The grounds for this request were rooted in the appellant's claim of being the exclusive owner of the trademark, registered in its name in the states of Kuwait and Saudi Arabia. The appellant contended that it actively utilised the trademark both domestically and internationally, particularly through its commercial stores in the emirates of Sharjah and Ras Al Khaimah. Moreover, the appellant alleged that its application to register the mark had been rejected due to the pre-existence of the mark registered in the name of the second respondent. Relying on Article 22 of the aforementioned Trademarks Law, the appellant sought the cancellation of the mark on the grounds of the second respondent's non-usage for five consecutive years.

The contested ruling confirmed the appealed judgment, which dismissed the case. The basis for this dismissal was the expert's determination that the second respondent was indeed using the trademark through another company, identified as “Company.........”, with the consent of the second respondent and without objection thereto. However, the authorisation provided by the second respondent to the court, granting permission to the aforementioned company for use, was not registered and published as a licence contract until 16/7/2019. Consequently, the ruling asserted that this authorisation could not be invoked against the appellant, considered a third party, except from the date of registration and publication in accordance with the law. The appellant challenges this conclusion, arguing that the ruling erroneously violated the law and erred in its application. The contention is centred on the assertion that, despite the acknowledgment of the second respondent's use of the mark through another company under an authorisation, the failure to register and publish this authorisation during the period of use constitutes a violation of the law and warrants the reversal of the ruling.

Whereas the cassation was filed for the second time, the court decides to adjudicate the case on its merits.

Whereas upon consideration of the merits of the appeal and in light of the aforementioned arguments, it is established that the appellant has a legitimate interest in seeking the deletion of the trademark subject to the lawsuit. The documents provided did not furnish evidentiary proof of the second respondent's use of the trademark, which was registered in its name on 5/8/2010, for a continuous period of five years following the date of registration. Additionally, the authorisation for use by others, invoked by the second respondent, was not registered and published in accordance with the legal requirements during this five-year period.

Consequently, in accordance with the provisions of Article 22 of the Commercial Transactions Law, the appellant is entitled to its request for the deletion of the disputed trademark. The appealed ruling is hereby cancelled. The court orders to grant the appellant's request, the specifics of which will be delineated in the operative part of this ruling.