A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.

As per Article 2 of The UAE Federal Law No. 37 of 1992 on Trademarks, a trademark is anything having a distinctive form such as names, words, signatures, letters, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, advertisements, packs or any other mark or group of marks if used or intended to be used either to distinguish goods, products or services whatever their source or to indicate that the goods or products belong to the trade mark's owner due to its manufacturing, selection or trading or to indicate the rendering of a service.

The voice shall be considered as part of the trade mark if it accompanies it.

A registered trademark is a distinctive mark or symbol to which a person or company has declared ownership by filing the trademark registration application with the UAE Trademark Registrar Office, Ministry of Economy and Commerce. Once a trademark is registered, it enjoys legal protection against trademark infringement under The UAE Federal Law No. 37 of 1992 on Trademarks.

In this article, we look at the crime of imitating the registered trademark and the use of imitated trademark in UAE Federal Law n˚37 of 1992.

The civil protection of a trademark is not sufficient to provide sufficient deterrence to ensure that the trademark and the rights of its owner are not violated, as the penalty is limited to a ban on use and material compensation, in contrast to the penal protection that threatens those who attempt to attack the trademark with imprisonment restricting their freedom in addition to a fine.

This prompted the authors of the TRIPS Agreement to oblige the members of the agreement to impose penal trademark protection and punish anyone who begged to attack the trademark through imitation, and the aforementioned agreement leave to the will of the national legislator to decide the appropriateness of imposing other penalties in the event of committing any assault of another nature on the trademark.

 Article 61 of the Trips agreement states that:

“Members shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed willfully and on a commercial scale.”

Criminal protection is only for registered marks

Articles 37, 38 and 39 of Federal Law No. 37 of 1992 regulated the criminal protection of registered trademarks.

Article (37) states:

“Shall be sentenced to imprisonment and a fine of at least Dh. 5000 (Five Thousand) or either:

1. Any person who forges a trade mark registered according to law or imitates same in a way misleading the public and any person who uses with bad faith a forged or imitated trade mark.

2. Any person who places with bad faith on his products a registered trade mark owned by a third party, or uses such mark without right.

3. Any person who deliberately sells, offers for sale or negotiation or acquires for sale products having a forged, imitated or illegally placed trade mark, the same applies to any person who deliberately provides or offers the provision of services under a forged, imitated or illegally placed trade mark.”

Article 38 states:

“Shall be punished by imprisonment for a period not exceeding a year and to a fine of no less than Dh. 5000 (Five Thousand) and no more than Dh. 10,000 (Ten Thousand) or either penalty:

1. Any person who uses a Trade Mark which may not be registered as provided for in Clauses 2, 3, 4, 5, 6, 8, 9, 10, 11, 12, 13 and 14 of Article (3) hereof.

2. Any person who illegally notes on his mark or commercial papers statements leading to believe that it has been registered or that it distinguishes products and goods other that the ones stated in the register.”

Article 39 states:

“Any person who repeats one of the offenses stated in Articles (37) and (38) hereof, shall be punished with the same penalty in addition to closing the commercial premises or the exploitation project for a period of no less than (15) days and no more than (6) months and publishing the judgment at the cost of the party adjudged pursuant to the procedures indicated in the Executive Regulations.”

Based on these articles the subject of the crime must be a registered trademark, this means that only the registered trademark is the subject of protection in penal. If its owner does not register it or does not renew the registration of the trademark or cancellation of its registration for any reason whatsoever, then this crime does not occur. Although this does not prevent the concerned party from filing a lawsuit for unfair competition in accordance with the general rules of civil liability. (1,2)

This shows the importance of registration in relation to trademarks. Although it is not a condition for the creation of the right to the trademark ownership, it is a condition to get special legal protection, which is considering assaulting the mark in accordance with Articles 37, 38 and 39 as a criminal offense punishable.

Legal nature of the crime of imitation of the registered trademark

The crime of imitation of the registered trademark is a misdemeanor. As per Article 29 of Federal Law n˚3 of 1987 The Penal Law:

“A misdemeanor is a crime sanctioned by one or more of

the following penalties:

1. Imprisonment.

2. A fine in exceeding a thousand dirham.

3. Blood-money”

The crime of imitation of the registered trademark is considered a positive crime: the crimes are divided in terms of the appearance of criminal behavior into positive crimes, and negative crimes. (1)

The crime of imitation of the registered trademark is a money crime: the crimes are divided according to the interest protected to the crimes of persons and money crimes.

Money crimes have intended that decrease or modify the positive elements of financial disclosure or increase their negative elements by increasing the debts of the victim, and the crime of imitating the registered trademark is a money crime because criminal behavior (the act of imitation) focuses on the trademark and it is an industrial property right, and it is immaterial money that can be owned, as the trademark has a great material value. (1)

The crime of imitation of the registered trademark is considered a temporary crime: crimes are divided according to the time taken temporarily to crime verify the material pillar elements of the crime into temporary crimes and continuous crimes. Temporary crimes are those crimes that constitute the criminal behavior consisting of the crime from an action that occurs and ends with the occurrence of the crime.

The crime of imitation of the registered trademark is considered a temporary crime that occurs once the criminal behavior that constitutes the material pillar of the crime (the act of imitation). (1)

The Egyptian Court of Cassation decided in Resolution (1297) of 1954 that “The crime of counterfeiting and imitating a trademark is by its nature a temporary crime that is carried out as soon as counterfeiting or imitating the trademark regardless of the use that comes later to it, which is by its nature an ongoing crime”. (3,4)

That is, the crime of imitating a trademark is temporary because it takes place once the trademark is imitated regardless of its use.

The scope of criminal protection in terms of time and place

The penal protection of a trademark takes place during its registration period. The penal protection of a trademark is restricted in terms of time. As this protection begins from the moment this mark is registered with the competent authority in accordance with the rules established in the law, and this protection continues throughout the validity period of this registration. (5)

The penal protection of the trademark is restricted in terms of location as well, because this protection is established only in the country in which the trademark was registered, and this feature is considered a natural consequence of the territoriality of the right to the trademark. If the trademark is registered in the United Arab Emirates, it is possible to file a criminal case against the perpetrators of crimes (imitation of the trademark and assault on it…) that occur in the UAE territory only, and it cannot be instituted if the trademark is imitated and assaulted in another country. The same applies if a trademark registered in another country and used in the United Arab Emirates was infringed without being registered there. In this case, a criminal case cannot be instituted for these infringement acts. This means that if the trademark is registered in the territory of more than one country, it will only get the penal protection provided for by the law of the country on whose territory the offense was committed. (5)

The Supreme Court of Appeal in Dubai in the United Arab Emirates confirmed the restriction of criminal protection of trademarks in terms of place in a ruling issued in 1982, before the legislative regulation of trademarks in the United Arab Emirates. (6)

The criminal case may only be filed by the Public Prosecuting Office or the trademark owner

The criminal action prescribed for the protection of the registered trademark may only be filed by the Public Prosecution, as it is the trustee of the public action, or only by the victim who owns the trademark. The judgement in the criminal case ends with the imposition of the penalty on the aggressor or the acquittal of him. In both cases ,the victim can request civil compensation before the criminal court before which the criminal case is filed, or from the civil court as he pleases. (7)

Accordingly, a criminal case shall not be accepted from anyone other than the owner of the trademark, or the one to whom his rights have devolved as heirs within a commercial store, or the heirs of the owner of the mark, the purchaser, or the assignee, provided that the procedures for declaring the transfer of ownership are taken so that this act can be invoked against the infringer by imitating the mark. (7) Otherwise, the latter may request the dismissal of the criminal case. (8) In this regard, the criminal lawsuit differs from the unfair competition lawsuit, which may be filed by anyone who has suffered damage due to the counterfeiting or usurpation of the mark, such as the retailer or the consumers themselves. (7)

It is not important with regard to the criminal case whether the perpetrator of one of the crimes stipulated in Article 37 achieved profits or not, just as it is not important that the perpetrator of the crime used the marks on products of less quality and of a cheap type that harms the reputation of the owner of the mark or even if The goods were of better quality. (7)

It also does not negate the fact that the act constituting the crime did not incur damage to the owner of the mark as a result of this forgery or imitation, nor does this affect the amount of the penalty. (7)

Trademark offences

Crimes stipulated in Federal Law No. 37 of 1992 on Trademarks can be divided into two groups

The first group includes:

• The crime of counterfeiting or imitating a trademark.
• The crime of using a forged or imitated mark.
• The crime of usurping the mark of another.
• The crime of selling products bearing a forged, imitated or usurped mark, offering these products for sale or trading, or possessing them with the intention of selling or trading.

The second group includes:

• The crime of placing false or misleading commercial data, and the crime of using signs prohibited by law.

Criminal Penalties

All those that are caught to be infringing on the rights of trademark owners in UAE will be sanctioned with the appropriate administrative fines and penalties.

The perpetrator of the crimes mentioned in Art 37 of the Federal Law n˚37 of 1992 shall be sentenced to imprisonment and a fine of at least Dh. 5000 (Five Thousand) or either.

The perpetrator of the crimes mentioned in Art 38 of the Federal Law n˚37 of 1992 Shall be punished by imprisonment for a period not exceeding a year and to a fine of no less than Dh. 5000 (Five Thousand) and no more than Dh. 10,000 (Ten Thousand) or either penalty.

In addition, any person who repeats one of the offenses stated in Articles (37) and (38) hereof, shall be punished with the same penalty in addition to closing the commercial premises or the exploitation project for a period of no less than (15) days and no more than (6) months and publishing the judgment at the cost of the party adjudged pursuant to the procedures indicated in the Executive Regulations.”

Conclusion

In this article, I tried to explain briefly the crime of imitating the registered trademark in UAE Federal Law n˚37 of 1992 and its legal procedures, but I would like to draw your attention that in UAE practice trademark infringements are usually more often the subject of civil actions or actions initiated before the Ministry of Economy-Trademark Office (TMO) and/or Department of Economic Development (DED).

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 1-A.J.S. AL HILAI Dr. Awlia Jabbar Awlia.Sahib@qu.edu.iqUniversity Of Al-Qadisiyah, Irak

Crime of imitating the registered trade mark: comparative analytical study

2-Dr Samiha Al Kalyoubi – The Industrial Property – 2022 – p.618&619.

3-Samir Fernan Baly- Issues of Commercial, Industrial and Intellectual piracy -part 4 p.22.

4-Dr. Ghassan Adnan Baranbo- Trademark Legal Regulation- p.851.

5- Dr.Ghassan Adnan Baranbo- Trademark Legal Regulation p.832-833.

6- The Supreme Court of Appeal in Dubai-case n˚116 of 1981 – 24/2/1982- Journal of Intellectual Property Protection issued by the Arab Society for Intellectual Property -n˚34 – 4- 1992 -p.15.

7-Dr Samiha Al Kalyoubi – The Industrial Property – 2022 – p 622- 623

8- The Egyptian Court of Cassation n˚236-Hearing dated 14/6/1954 Set of the Court of Cassation Judgement-p.752.