Cassation No

Court Panel: Presided over by Mr. Judge Muhammad Abd al-Rahman al-Jarrah, Chief Judge of the Circuit, with Messrs. judges: Dr. Ahmed Al-Sayegh and Abdul Haq Ahmed Yammine as counsellors.

(1, 2) Trademarks “licensing the use of the mark and canceling the licence”

(1) Licensing the use of the trademark is subject to certain conditions. These conditions include the execution of a written contract, which shall be notarised and subsequently published in the Official Gazette as well as in two daily newspapers. In the event that there is a need to cancel the licence, such a request should be directed to the Commercial Control Department of the Ministry of Economy and Commerce.

(2) The appellant entered into a contract with the respondent to secure a licence for the use of its name and trademark. However, the documentation confirming the registration and public disclosure of this licence was not substantiated through legal means. Consequently, the appellant's plea to cancel the trademark is deemed inadmissible. The underlying reason for this inadmissibility lies in the incident pertaining to the licensing arrangement.

(3) Trademarks “Trademark Registration Application”.

An application to register a trademark is typically initiated by submitting an application to the Ministry of Economy and Commerce, in accordance with the provisions outlined in Article 7 of Law 137 of 1992. However, if the documents fail to include such a application, and there is no corresponding decision issued in this regard, the appellant's plea for the registration of the trademark in their name is considered unfounded.

(4) Commercial transactions “unfair competition: using the trade name of others.”

Using the trade name of others is generally not permissible unless explicit approval is obtained from the original trade name owner, in accordance with the stipulations of Article 68/1 of the Commercial Transactions Law. In light of the appellant's agreement with the respondent to use its trade name as outlined in the franchise contract between the two parties, the consequence is that the application for cancellation is not accepted. The effect of the agreement governs this decision, precluding the cancellation of the trade name in question.

1- Articles 30, 31, and 33 of Federal Law No. 37 on Trademarks and its amendments, along with Articles 44, 45, and 46 of the Implementing Regulation of the same law, expressly state that a trademark owner has the authority to licence one or more entities to use the trademark for all or specific products covered by its registration. However, a crucial condition for such licensing is the existence of a documented written contract, which shall be officially published in the Official Gazette and two daily newspapers. The published information shall encompass all relevant details pertaining to the trademark subject to the license. In this case, the cancellation of the agency is only permissible through the submission of a formal request to the Commercial Control Department of the Ministry.

2- In the current scenario, it is evident from the appellant's claim statement that a contractual agreement was established with the respondent on 24/11/2016, granting a licence for the use of its name, trademark, and trademark. The licensing incident forms the basis for the lawsuit, and the appellant derives its right from this agreement. However, the critical issue arises from the absence of evidence or textual proof within the documents that this licence has been duly registered and published in the manner prescribed by law. Consequently, the application to cancel the mark, given this non-compliance, is deemed unacceptable in this regard.

3- Whereas, in relation to the appellant's plea to register the trademark in its name, it is imperative to adhere to the procedures outlined in Article 7 and subsequent provisions of the aforementioned Trademarks Law. The court will scrutinise the legality of the registration application. However, given the absence of any documentation indicating the submission of an application for the registration of the disputed mark and the lack of any decision issued in this regard, the application, in this context, is considered unfounded.

4- Whereas regarding the application for the removal of the trade name from official records, Article 68/1 of the Commercial Transactions Law explicitly prohibits a merchant from using the trade name of others without the explicit approval of the original trade name owner. As evidenced in the documents and the appellant's submissions, there exists an agreement between the appellant and the respondent for the use of the trade name under the franchise contract between the two parties. In light of this agreement, the current form of the cancellation application is deemed unacceptable.

Whereas, in a prior session on 27/10/2021, this court rendered a decision to reverse the ruling issued by the Abu Dhabi Federal Court of Appeal on 2/6/2020 in Appeal No. 203 of 2020 and resolved to deliberate on the merits of the case.

Whereas in the facts, as apparent in the contested ruling and the remaining cassation documents, the company [Name] initiated suit No. 272 of 2019 before the Abu Dhabi Administrative Court. The company sought confirmation of its right to the intellectual property and its trademark. Additionally, it requested the annulment of the registered trademark held by the company [Name] in Class 43. Furthermore, it sought the cancellation of the latter's application to register the same mark in Class 35. The plaintiff also sought the deletion of the trade name from all official registers in the Emirates of Abu Dhabi, Dubai, and the Emirate of Ras Al Khaimah. The plaintiff further demanded that the company [Name] and the remaining defendants refrain from using the disputed mark. The final request was for the Ministry of Economy to register the same mark in the name of the plaintiff.

In its claim, the appellant, a company specialising in trade related to snack foods and commercial franchise services in the field of cafes, asserted ownership of a registered trademark in Kuwait (its country of origin) and various other countries. The appellant alleged that it entered into an agreement with the company [Name], represented by Mr. [Representative's Name], allowing the latter to use its trade name and trademark pursuant to a franchise contract. The appellant claimed that, in order to exercise the franchise, [Name] established a limited liability company and registered the trademark in question without the knowledge or approval of the appellant. This action was deemed a violation of the agreed-upon conditions, which stipulated the need for a notification to cancel the franchise contract.

Subsequently, when the appellant applied to register its mark with the Ministry of Economy, the application was rejected due to similarity and the prior registration of the mark by other entities. This led to the initiation of the lawsuit. The court of first instance, in a session held on 19/11/2019, ruled to cancel the disputed mark. The Court of Appeal affirmed this decision on 3/3/2020 in appeals 205-209 of 2019. Subsequently, the Ministry of Economy, along with the company [Name] and others, appealed this ruling through cassation (Cases 311-346 of 2020). The Federal Supreme Court, in a session on 31/8/2020, reversed the ruling and remanded the case.

Upon the case's resumption in the lower court, a ruling was issued on 28/6/2021 to cancel the initial decision, rejecting the case once again.

Whereas the deliberation process brings the disputed appealed ruling into consideration in its entirety, providing the Supreme Court the opportunity to scrutinise it in light of the law. This involves assessing whether any conditions that may have flawed the ruling are evident, and subsequently applying the appropriate legal principles to address the dispute accurately.

Whereas the crux of the dispute centers around the plaintiff, a snack foods company, seeking the annulment of its registered trademark, currently held by the third defendant. The plaintiff further requests the removal of the trademark from all official registers, cessation of its use by others, and confirmation of the plaintiff's right to the same mark. The plaintiff claims to be the rightful owner and originator of the mark and asserts that it had previously entered into an agreement with the first defendant for its use within the framework of a franchise. Allegedly, the first defendant, taking advantage of the licence to use the mark, established a company and registered the mark in its name, thereby infringing upon the appellant's rights and engaging in unfair competition.

The reason provided is untenable, since Articles 30, 31, and 33 of Federal Law No. 37 on Trademarks and its amendments, along with Articles 44, 45, and 46 of the Implementing Regulation of the same law, expressly state that a trademark owner has the authority to licence one or more entities to use the trademark for all or specific products covered by its registration. However, a crucial condition for such licensing is the existence of a documented written contract, which shall be officially published in the Official Gazette and two daily newspapers. The published information shall encompass all relevant details pertaining to the trademark subject to the license. In this case, the cancellation of the agency is only permissible through the submission of a formal request to the Commercial Control Department of the Ministry.

In the current scenario, it is evident from the appellant's claim statement that a contractual agreement was established with the respondent on 24/11/2016, granting a licence for the use of its name, trademark, and trademark. The licensing incident forms the basis for the lawsuit, and the appellant derives its right from this agreement. However, the critical issue arises from the absence of evidence or textual proof within the documents that this licence has been duly registered and published in the manner prescribed by law. Consequently, the application to cancel the mark, given this non-compliance, is deemed unacceptable in this regard.

Whereas, in relation to the appellant's plea to register the trademark in its name, it is imperative to adhere to the procedures outlined in Article 7 and subsequent provisions of the aforementioned Trademarks Law. The court will scrutinise the legality of the registration application. However, given the absence of any documentation indicating the submission of an application for the registration of the disputed mark and the lack of any decision issued in this regard, the application, in this context, is considered unfounded.

Whereas regarding the application for the removal of the trade name from official records, Article 68/1 of the Commercial Transactions Law explicitly prohibits a merchant from using the trade name of others without the explicit approval of the original trade name owner. As evidenced in the documents and the appellant's submissions, there exists an agreement between the appellant and the respondent for the use of the trade name under the franchise contract between the two parties. In light of this agreement, the current form of the cancellation application is deemed unacceptable.