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Analysis of Trademark Laws in U.S.A and U.A.E

Trademark is given to provide legal protection to marks of the trade like brand names, signs, symbols, logos, etc. It is an identity of certain products and services which are provided by a certain person or entity. It is given for an indefinite period which makes it different from other IPR. Trademark holder just has to renew it from time to time. It is served as a mark of identification.

Considered the following things before filing an application for registration:

  • Selecting a distinctive mark
  • Mark format.
  • Identify goods and services.
  • Research about the mark.

Why one should have a Trademark?

Basically, Trademarks work as a protection against goodwill. It saves the goodwill of products and services from malice use. It gives value to the products and services. It not only increases the reputation of products and services but is also very beneficial commercially as well as economically. It will increase the price of products and services in the market. It creates difference and increases the market value of products and services. It makes customers attracted to your product and services. For ex-Apple, Honda, BMW, Ford, etc.

Benefits of Trademark:

  1. Secures the business
  2. Asset formation
  3. Increase in brand value
  4. Independent existence of business
  5. Creditability of the firm rises
  6. Right to use registered in the brand name

Infringement of Trademarks:

Infringement of Trademarks is punishable. Trademark can be registered or unregistered. Unregistered marks are represented by TM and registered marks are represented by �. Registration is nothing but extra protection given to trademarks. Registration certificate is considered as evidence in the courts. Infringement of unregistered trademarks is called passing off. Passing off is also punishable.

Basic elements of infringement and passing off are given below:
  1. Reputation, Misrepresentation, and Damages.[1]
  2. Misrepresentation made by a person in course of trade to prospective customers or consumers of another trader's goods and services, which injures the trader's business or goodwill.[2]
  3. Causing actual damage to the trade, business, or goodwill of the trader by whom action is bought.[3]

Madrid Agreement:

This agreement was established through the 1891 treaty and 1984 protocol. The purpose of this agreement is to provide single and inexpensive international trademarks. Also to eliminate the need for filing, prosecuting, or maintaining separate registration in multiple countries. Once you will file an international application it will be reviewed separately by all the member countries.[4] The aim of mentioning this agreement here is just to let know all the readers that the U.S.A is also part of this agreement. Therefore all the rules and regulations of this agreement applied to U.S.A as well.[5]

Trademark Laws In The U.S.A

In the US concept of a trademark is not very new. It was there since the colonial period, but it was not there till 1870. Congress was the first who attempt to establish a federal trademark regime in the U.S.A. In 1870 congress made a statute to protect the trademark which was stuck down by the Supreme Court in trademark cases. In 1881 congress again passed a trademark Act which was reviewed in 1905. In 1917 a doctrine of Aunt Jemima was created which will provide protection to trademark even when it will be used to sell different products.[6]

For ex-TRD is a trademark of a company that sells toys that business is not going on well therefore the company decided to sell footwear under the same trademark. Then this will allow under the above-mentioned doctrine. In 1946 congress passed the Lanham Act, 15 USC section 1051 et. Seq. which had provided authority to the US patent and trademark office (USPTO) to register marks used in interstate or foreign commerce. Recent developments in U.S. trademark law have included the adoption of the Federal Trademark Dilution Act of 1995, the 1999 Anticybersquatting Consumer Protection Act, and the Trademark Dilution Revision Act of 2006.

As per Lanham Act, Trademark can be any word, name, symbol, device, or any combination thereof. It also covers a particular type of shape as the shape of the coco-cola bottle, particular sounds like NBC's three chimes, and particular scents like plumeria blossoms on sewing thread.

Trademarks are divided into four categories which are given below:
  • Arbitrary and Fanciful:
    Mark which is very strongly distinctive is called Arbitrary and Fanciful trademarks.
  • Suggestive:
    Marks that are moderate or medium when it comes to distinctiveness are called Suggestive trademarks.
  • Descriptive:
    Marks that are very weak in distinctiveness are called Descriptive trademarks.
  • Generic:
    Marks that have no protection are called Generic trademarks.

Process of registering a trademark in the U.S.A
  1. Application of registration can be filed offline as well as online. There will be differences in the fees of online and offline applications
  2. After that it will be under observation for a few months.
  3. Eventually the USPTO trademark examiner will examine the application as per the rules of the Trademark Manual of Examining Procedure.
  4. If he found any problem in the application, then it will be preliminarily rejected by the examiner.
  5. After that applicant has 6 months' time to give a reply and try to convince the examiner, if the examiner will convince the argument of the applicant then it will be published in the Trademark Official Gazette. If not satisfied with the argument of the applicant then final rejection will be given to the applicant.
  6. Against final rejection applicant can appeal to the Trademark Trial and Appeal Board.
  7. After the publication, 30 days time period will be given to filing the objection. If there is no objection registration will be granted. If there is any objection then the proceeding will be continued and registration will not be given till the final decision.
  8. It will minimum take 6 months from the initial application to the final registration.

Who can be a trademark owner in the U.S.A?
  • Natural Person
  • Body Incorporate
  • Partnership Firm
  • Associations of Person
  • Trust
  • Society
  • Government Authority
  • Government undertakings
  • HUF etc.

Trademark protection does not have a set duration or definite expiration date. Trademark rights only expire when the owner stops using the mark in commerce. However, federal trademark registrations expire ten years after the registration date, unless renewed within one year prior to the expiration.

Infringement of trademark in the U.S.A:

Trademark infringement is measured by the so-called "likelihood of confusion" test.[7] A new trademark will infringe on an existing one if the new one is so similar to the original that consumers are likely to confuse the two marks and mistakenly purchase from the wrong company.

The likelihood of confusion test turns on several factors, including:
  • Strength of the plaintiff's trademark
  • Degree of similarity between the two marks at issue
  • Similarity of the goods and services at issue
  • Evidence of actual confusion
  • Purchaser sophistication
  • Quality of the defendant's goods or services
  • Whether the defendant's attempt to register the trademark was bona fide (in good faith).
Note that other factors may also be considered in determining whether a likelihood of confusion exists. "Even this extensive catalog does not exhaust the possibilities�the court may have to take still other variables into account."

Trademark Laws In U.A.E

The United Arab Emirates is one of the countries which are very serious regarding protecting the brands. To protect the rights of business owners and their brand name U.A.E issued its first federal Law No. 4 in 1979. In 1992 U.A.E's first federal trademark law emerged which was modified first time in 2000, followed by many such amendments till now.

Law grants trademark rights to U.A.E's nationals and nonnationals who are proving goods and services which are commercial, industrial, and handicraft oriented. Trademark registered in U.A.E is protected in all the seven Emirates which are Abu Dhabi, Dubai, Sharjah, Ajman, Umm Al-Quwain, Fujairah, and Ras Al Khaimah.

According to the Federal Law No.37 of 1992, trademarks refer to those distinctive elements of a brand such as logos, slogans, hallmarks, packaging, names, words, signatures, letters, figures, graphics, titles, seals, patterns, announcements, packs, or symbols that distinguish it from its competitors. Signatures, titles, characters, seals, posters, engravings, names, paintings, and any kind of label that serves to distinguish a brand from another, can all be trademarked.

According to Article 3 of Federal Law No. 37 of 1992, geographic names, banknotes, details of honorary degrees, and marks that could deceive the public or actually violate public order are not considered trademarkable.

If you want to file a trademark in the United Arab Emirates, it must not include any of the following:
  • Violations of public morals and beliefs
  • Symbols in the public eye (such as flags)
  • Red Cross and Red Crescent symbols, for example.
  • Third-party names and titles
  • Other well-known trademarks translated directly.[8]

Process of registering a trademark in U.A.E:
  1. Research about the trademark first whether it is already in existence or a completely new one
  2. Then file the application for the registration of a trademark, either online or offline.
  3. Payment of the fees is the next step.
  4. Eventually the final evolution will be done by the Ministry of Economy. If there will be any issue then 30 days will be given to clear that issue.
  5. After all these steps publication of mark will be done in the two national newspapers.
  6. If there will be no objection mark will be registered and if there will be any objection then the mark will not be registered.
  7. All this will take at least 4- months.

Who can be a trademark owner in the U.S.A
  • People of the United Arab Emirates, as well as natural and artificial persons engaged in any economic, technological, technical, or service sector
  • Foreigners, as well as natural and artificial persons engaged in any economic, technological, technical, or service sector.
  • Foreigners, as well as natural and artificial persons engaged in any economic, technological, technical, or service sector in any other country on basis of reciprocity.
  • Other artificial persons.

once the trademark will be registered it will be valid for 10 years which can be extended for 10 more years.

Infringement of trademark in U.A.E

Infringement of trademark is considered an offense in U.A.E. it is punishable with fine and imprisonment or either fine or imprisonment. Fine will be at least DH 5000. Trademark can be used by the owner only. The following incidents are said to be a violation of the Trademark (Trademark Infringement):
  1. Any individual who forges or imitates a legally licensed trademark in order to deceive the public, as well as someone who uses a fabricated or imitated trademark in bad faith.
  2. Anyone who uses a licensed trademark owned by a third party without permission or puts it on his goods in bad faith.
  3. Anyone who knowingly sells offers for sale or negotiation or acquires for sale goods bearing a forged, imitated, or illegally placed trademark, as well as anyone who knowingly provides or offers to supply services under a forged, imitated, or illegally placed trademark, is guilty of trademark infringement.
Trademark laws are almost similar in U.S.A and U.A.E. They are not completely the same but the basic structure is almost the same. Both the country's laws also matched with the Trademark laws of India. In the present era, this particular law is evolving very fast and the evolution of this law at present is needed as well. To secure the business and brand names which are providing goods and services is very needful and trademark helps in providing security to the same. The process of trademark registration is very easy once you understand it. Mostly a trademark attorney can help you in getting a trademark.

  1. Reckitt and Coleman Ltd. v/s Borden Inc.
  2. Erven Warnink v/s Towned
  3. Honda Motors Co. Ltd. v/s Charaanjit singh and others
  4. Madrid Agreement.
  6. Aunt Jemima Mills v/s Rigney and Co.
  7. Polaroid v. Polarad

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