01-Aug-2024
Written by: Jean-Pierre Frangieh
A trademark is a mark or symbol identifiable or attached with the goods so that they can be distinguished from other types of similar goods. Trademarks help the consumers to identify goods with a particular trader. A trademark can be a label or a picture or combination of colors which is applied to the goods which acts as its identity. It portrays the quality of goods in the minds of the consumers and with the passage of time, that mark may become a well-known name.
Trademark plays a very pivotal role in giving a business its identity and goodwill. (1)
Needless to say, the main function of a trademark is to be able to distinguish goods and services of the same kind in the market. When a registered trademark ceases to function as a source indicator for long, it is not worthy of protection anymore in light of the legislative intent of the Law. (2)
Indeed, most of the modern trademark laws stipulate that the owner of the trademark is obligated to use it and put it on his goods and products or display it accompanying the services he provides. If he fails to use this without any justification for a certain period of time, then his right to own the mark is legally forfeited, and it is up to any interested person to claim that.
The TRIPS Agreement has also dealt with this issue and considered the non-use as one of the reasons that may lead to deletion of the trademark, as Article 19 states the following:
“1. If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use.
2. When subject to the control of its owner, use of a trademark by another person shall be recognized as use of the trademark for the purpose of maintaining the registration.”
This article will discuss burden of proof in trademark cancellation lawsuits for non-use in UAE Federal law n˚37 of 1992.
The Trademark Cancellation Action for non- use
Non-use cancellation is a legal proceeding for cancelling the registration of trademark based on the claim that such trademark has not been genuinely use in course of trade, within a proper period, by the trademark owner who registers such trademark to commercially utilize to the trade and benefit to the economic. In addition, the cancellation can also claim that such trademark owner has no intention to use the trademark in commerce. This kind of cancellation, non-use scheme, can be a significant method for cleaning up the cluttered Registry records, and help in revoking the registration of unused trademarks from the system. This could, in turn, provide the opportunities for later comer, who may genuinely use an identical or similar trademark in commerce, but its application has been rejected by the Registrar due to the obstacle of the prior registration of such unused trademark. The later comer may file a cancellation to eliminate such obstacle and finally obtain the protection. (3)
In most countries, the non-use cancellation request must be filed as a petition with the Trademark Office in each country. In some countries like UAE, Qatar and Egypt, it is considered as a litigation process that must be presented as a lawsuit with the Court within particular jurisdiction.
The Art 22 of Federal Law n˚ 37 of 1992 states:
“The competent civil court may at the request of any interested person rule in favor of striking off the registration of a trade mark if it is established to the court that such mark has not been seriously used for (5) successive years unless the mark owner proves that the lack of its use, is due to a reason beyond his control, such reasons are the import restrictions, and other government conditions imposed on the goods and services”.
The article 22 mentioned above requires that a registration which could be cancelled only when it has been in an uninterrupted period of five consecutive years of non-use by its owner, whether these five years have been since the registration of the mark or after its registration and use for a certain period. It is not enough that five years have passed intermittently, but the use must be within five consecutive years.
However, if the non-use of the trademark is based on a justifiable reason, the 5-year period shall not expire as long as the justifiable reason continues. The Art 22 mentions the import restrictions, and other government conditions imposed on the goods and services as examples on justifiable reasons; and these examples mentioned in art 22 are the same explained in Article 19 of the TRIPS, also, the courts, in many decisions, expanded on explaining the concept of justifiable reason.
The European Court of Justice considered there is genuine use of a trademark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. (4)
As per Federal Law n˚ 37 of 1992 the request to cancel the registration of the trademark for non-use shall be submitted to the competent court and not to the administrative authority, which is the Commercial Registration Authority. The court shall order the cancellation of the registration if it is established that it has not been in use for a period of five consecutive years.
Burden of Proof in trademark Cancellation Action for non- use
The burden of proof and requirement for standard of proof is upon each internal regulations of Trademark Law and practice in each country, which in some countries, the burden of proof lies on the petitioners, but in some countries, the trademark owner will bear such burden. (3)
According to the Art 8 (b) of the Syrian trademark law n˚8 of 2007 the burden of proof is on the respondent.
Under French and UK law, anyone may file a trademark revocation action directly before the Intellectual Property Office without the need to demonstrate interest or provide any substantiated claims supporting the request. The burden of proof lies solely on the trademark proprietor.
However, under UK legislation, if a party files an application for revocation of a trademark without first notifying the trademark proprietor, and the trademark proprietor surrenders the registration without defending it, then costs will not be awarded to the party applying for revocation. (5)
As for UAE law, Federal Law n˚ 37 of 1992 has not addressed the issue of burden of proof in trademark cancellation lawsuits for non-use, therefore it is necessary to refer to the Law of Proof in Civil and Commercial Transactions numbered 10 of 1992 to determine who bears the burden of proof, the plaintiff or the defendant.
In the light of Article 1 of the Federal Law of Proof in Civil and Commercial Transactions numbered 10 of 1992, the burden of proof is on the claimant.
The Art 1(1) of the Law of Proof in Civil and Commercial Transactions states:
“It is the responsibility of the claimant to prove his claim and that of the respondent to refute it.”
Based on the UAE law, in a civil lawsuit, the burden of proof rests on the plaintiff or the person filing the suit. The plaintiff should prove that the allegations are true and that the defendant, or the other party, caused damages. Therefore, under UAE Law, the plaintiff who file a cancellation petition must bear the burden of proof of the alleged non-use of the disputed trademark, and the mark owner have to prove that the non-use was for justifiable reasons.
According to some experts' opinions, a tendency of imposing a burden of proof for such non-using trademark should be bound by the registered owner, rather than the petitioner. (6) It is very difficult for any third party who has no access to the facts and information of the use of trademark to prove its non-use. It was opined that in case of removing a deadwood from the registry records as this method of non-use cancellation, such a reversal of the burden of proof seems to be justified. (6)
Conclusion
It seems that the trend in the world today is to place the burden of proof on the defendant in trademark cancellation lawsuits for non-use, and some countries have adopted provisions in their trademark law that shift the burden of proof on the defendant in order to help cleaning up the cluttered Registry records, and help in revoking the registration of unused trademarks from the system since it is very difficult for any third party who has no access to the facts and information of the use of trademark to prove its non-use.
However, in the author’s view and pursuant to the provision of the UAE Federal law n˚10 of 1992 and Federal law n˚37 of 1992 currently in force the burden of proof in trademark cancellation lawsuits for non-use remains on the plaintiff who file the cancellation petition.
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1-Neetu.B. Shambharkar. Notion of Deceptive Similarity under Trademark Law with Reference to Landmark Cases in India: A Legal Insight. International Journal of Law Management &Humanities Vol 3 Iss 6 – 2020
2- www.mark-iplaw.jp Non- Use Cancellation.
3-NON-USE CANCELLATION AGAINST TRADEMARK REGISTRATION IN THAILAND Jeerakarn Nakarat.
4- The European Court of Justice Case C- 40/01 Ansul BV v. Ajax Brandveveiliging BV 11/3/2003.
5- Trademark Revocation Actions for Non-Use: Who Bears the Burden? MAY 2022 COMMENTARY JONES DAY LAWFIRM. www. jonesday.com
6- World Intellectual Property Organization (WIPO). Background Reading Material on Intellectual Property. 78. (2nd Edition. WIPO Publication, 2008)