“Etihadiya” resolves a dispute between two companies over the similarity of their trademarks

The Federal Supreme Court finally settled a dispute between two companies, on the grounds that there was a common word between their trademarks registered with the Ministry of Economy, as it rejected the request of one of them to cancel the registration of the other’s trademark, because it contained a word similar to its well-known trademark, stressing that there is no similarity between the two trademarks, The average consumer is careful and attentive, as he can distinguish between them and not be deceived or misled, by simply looking at the two signs in their general form without the effort of examination or distinction.

In the merits of its ruling, the court affirmed that it is not permissible to register any trademark that is identical or similar to a trademark previously registered for the same categories of products or services, as that would mislead the consumer public by causing confusion between them, stating that “the purpose of the trademark – according to the law – is to It is a means of distinguishing goods and products, so that confusion between them is eliminated, and the consumer public does not fall into confusion and misguidance.”

In detail, one of the cigarette companies filed a lawsuit, demanding the cancellation of the Ministry of Economy’s decision to register a trademark belonging to another company, due to the similarity with its trademark for a type of cigarette, as it stated that it “owns the trademark for the aforementioned product, and that it is registered in the trademark registry of the Ministry of Economy, in When the defendant institution applied to register a mark with a similar image to its mark, and it objected to this registration, which was not accepted by the Trademark Administration, it complained about the decision, and the Trademark Committee issued its decision to reject it.”

The court of first instance appointed an expert who submitted his report, in which he concluded that the dispute between the two parties revolved around the use of a common word as part of the two trademarks, and that the plaintiff company did not have the right to monopolize this word, as it is one of the general words in common use. The court ruled to reject the lawsuit, and a court supported it. Appeal, and the plaintiff company was not satisfied with this ruling, so it appealed it in cassation, stating that “its trademark is world-famous, and has been registered in more than one country, including the Emirates, with its components, including the common word, which is considered the essential part of it, without imposing any restrictions on this registration.” This alone gave it the full right to legal protection, in accordance with the Paris Convention on Industrial Property.”

For its part, the Federal Supreme Court rejected the company’s appeal, stating that according to Federal Law No. (37) of 1992 regarding trademarks, trademarks that would mislead the public or that contain false data are not registered as a trademark or as an element thereof. About the origin or source of products or services, or their other characteristics, and it is not permissible to register any trademark that is identical or similar to a mark previously registered for the same categories of products or services, adding that the purpose of the trademark is for the trademark to be a means of distinguishing goods, products, services or indications. However, it is up to the owner of the trademark to distinguish a particular commodity, so that confusion between them is eliminated, and the consumer public does not fall into confusion and misguidance. For this reason, it is necessary – to estimate whether a trademark has a special identity that is distinct from others – to look at it as a whole, not at each of the components that are composed. Among them, what matters is the general image that is imprinted in the mind of the consumer, and not the names, words, symbols, or other inscriptions that it shares with another sign.

It stressed that determining the presence or absence of similarity between two trademarks, which would mislead and deceive the consumer public, is within the scope of the discretionary authority of the trial court, and there is no comment on that from the Federal Supreme Court, as long as the reasons it relies on are justifiable. , that would lead to the result she concluded, and sufficient to carry her judgement.

She confirmed that there is no similarity between the two marks, and the average consumer with average care and attention can distinguish between them and not be deceived or misled, by simply looking at the two marks in their general form without the effort of examination or distinction. In addition, this mark carries a product that belongs to a specific category of consumers. They are smokers, who are more likely than others to know the type of cigarettes they smoke without difficulty.