Facts
The Plaintiff filed an action in the Dubai Court seeking confirmation that the Defendants infringed its trademark and ordered that the Defendants desist from further infringing use of the trademark.
A final verdict was given in the criminal misdemeanour case requiring the Second Defendant to pay a fine, acquitting the First Defendant, directing that the seized items be confiscated and referring the civil matter to the civil court of competent jurisdiction.
On 27 December 2004, the Court of First Instance dismissed the action on the basis that the charges were more properly characterised as importing and distributing counter feit goods rather than as infringement.
Therefore, the Plaintiff's request that the Defendants desist from further infringing use of its trademark was without merit.
The Plaintiff Establishment appealed.
The Court of Appeal upheld the lower Court's decision.
The Plaintiff Establishment appealed again. On 10 October 2006 the Court of Cassation reversed the lower Court's decision and remanded the matter back to the Court of Appeal for reconsideration in the light of the above mentioned verdict of the Criminal Court.
On 18 April 2007, the Court of Appeal issued a second decision dismissing the appeal on the basis that the criminal verdict was not binding on the Court of Merits.
The Plaintiff appealed again to the Court of Cassation on 29 May 2007.
The Court of Cassation dismissed the appeal and ordered the Appellant Establishment to pay AED 1,000 in advocate's fees.
Conclusion
The determination of whether trademark infringement occurred is a question of fact for the Court to decide. This is decided on the basis of sound reasons which are supported by documentation.
According to the case documents, the final relief the Appellant sought in the Court of First Instance consisted of confirmation that the Respondents had infringed its trademark and ordered the Respondents to desist from further infringing use of its trademark and any other similar trademarks.
The Court of Appeal concurred the Court of First Instance's ruling, dismissing the case on the basis that the Respondents did not commit an act of trademark infringement but simply imported the goods from another country.
Decision Handed Down in Commercial Appeal No. 180-2007
"The Respondents did not infringe the Appellant Establishment's trademark. The infringement occurred outside the UAE. The Respondents only imported those counterfeit goods from overseas and distributed and sold them to third parties. Hence, there is no evidence of any infringement of the Appellant Establishment's trademark by the Respondents. The lower Court reached this conclusion and the exception taken against its ruling is accordingly without basis."
By Djalila Behaz Litigation Department
© Al Tamimi & Company 2008
