Introduction
Trade marks are signs or symbols that are put by the manufacturer or a trader on their product for the purpose of distinguishing from other identical ones. Trademark infringements occur a person artificial or legal counterfeits it in a manner that is aimed at confusing the public.
Example of a Counterfeited product
An example of a product that has been counterfeited in the UAE markets is the Lipton Yellow Lable Tea. An image showing the original and the counterfeit good is shown below (n.d, 2014).
Description of the Original Lipton Yellow Lable Tea
The original (on the right hand side of the picture) Lipton yellow label tea is packed in a yellow pack that has a red Lipton shield which typifies the Lipton yellow label brand. The packet has shiny yellow color and has sharp edges. The original packet has an image of tea with three leaves and its printed on the bottom of the packet to the extreme right.
The letter ‘L’ on the word label has been lowered and the tail appears below the other letters of the word. There is a circular inscription on the left side of the packet at the lower end. The packet appears bigger in size as compared to the counterfeit one. Original product can be bought from all the supermarkets in the region. The price ranges from Dhs8.50 to Dhs10 per packet. This price depends on the supermarket that sells the product. The original Lipton yellow tea is manufactured by the Unilever Company registered in the UK.
The Counterfeit
The counterfeit is on the left hand side of the picture above. The packet is relatively small as compared to the original packet. The color of the packet is dull and unless like the original, it does not have the tea leaf lable. The edges are blunt as compared to the sharp edges of the original packet. It also does not have a circular inscription on it like the original one. The fake product was purchased in a grocery in Manama for only Dhs5.00. The fake product is believed to have been smuggled from Asian countries into the UAE.
Reasons Why the Product Infringes the Law
The labeling and the trade name of the counterfeit infringes on the trademark of the owner. The the owner (Unilever) of the original product is in a position to prove the validity of the mark since he has used it for a long time and they are known in the whole world as the sole producers of the product. This position was taken in the case of Coca Cola Co. v. Overland Inc. (1982) 629.
The passing off of the counterfeit good is intended to accomplish a number of things in this case. The trademark infringement is intended to defraud and confuse the buyer. The infringement can be in such a way its intention is not to defraud, but there is a likelihood of confusing the buyer. This could also mean that the infringement is intended for substitution of one product when another is ordered.
The description of the counterfeit product has passed the tests for trademark infringement under the Trademark Law of UAE. Article 10 of the trademark law prohibits the registration of trademarks which are identical or similar to a trademark that has previously been registered for similar products or services. The prohibition has also been put on different products/ services which, if in the use of the trademark it may bring about a connection between the goods/services to be registered or it may result in damages on the interests of the first registered (Manto, 2009.
Remedies for the Rights Owners
The owners can initiate criminal proceedings under Trademark Laws. The owners can file a legal suit with the police or the public prosecutor in the location of the counterfeit goods. Articles 37 and 38 impose punitive jail sentences or fines to people who infringe on other peoples rights/ trademarks. The remedies that be sought in a criminal action include raids conducted on the premises that store the counterfeits, seizure of the counterfeit goods, destroying the counterfeit goods and fining/ penalizing the infringer.
The rightful owners can also seek civil enforcements. The owners have three civil actions against the persons who infringe on their trademark. Under article 40, the aggrieved party can file a lawsuit to be heard before the concerned civil court against the accused seeking compensation for the damages they suffer as a result of the infringement.
Under Article 41, the aggrieved persons can file a petition seeking an order from the court with jurisdiction. The orders sought could be orders seeking attachment of equipment used in the infringement, seizure of goods in order to compensate the aggrieved party. Under Article 43, the court may in civil proceedings order the consfication of the seized products and substract their price from the price or compensation payable or it can even order for the destruction of the seized goods.
References
Manto, S. (2009, January 1). World Trademark Review. Retrieved November 6, 2014, from http://www.WorldTrademarkReview.com
Federal Law No. 8 for the year 2002 amending Articles of the Federal Law No. 37 for the year 1992
(n.d.). Retrieved November 6, 2014, from http://ecx.images- amazon.com/images/I/716MvJgs+KL._SL1385_.jpg
Coca Cola Co. v. Overland Inc. (1982) 629.