Design Rights in the United Arab Emirates
Imagine waking up one morning to a flood of notifications from loyal followers who tip you off that an X Brand T-shirt design they believed was a copy of one of your designed tees. What's worse is that the X Brand T-shirt is being sold for half the price of your original graphic tee. Fashion copycats happen all the time, especially since many laws do not protect fashion. The X Brand company simply points out that since you did not trademark your design or graphic or you do not have a trademark for the font or graphic design of the T-shirts, you have zero legal rights to them. Nothing would be more infuriating for you than knowing that a huge company is accruing profits from the work of your design.
Do you feel that big businesses think that small businesses are just there to pull ideas from, and they think that small businesses are weak enough to pull a fight? As disappointing the reality may be, truth also lies in the fact that this is a two-way stream. Designer rip-offs happen constantly, and it is also the small businesses who rip off designs of the big brands and sell them at a much, much cheaper price than the original. Well, it is not only the price that is cheap, but it is also the quality which is so inferior that the big brands almost feel attacked by having their design linked to such quality.
Remember in 2018 when Burberry slapped Target with multi-million-dollar counterfeiting lawsuit? Burberry sued Target for knocking off Burberry's iconic plaid pattern by selling scarves in the pattern just as the British fashion brand was bringing it back.
Be it cases of affordable fashion brands doing the copying, like when Zara copied USD 795 Balenciaga sneakers and Kanye West's coveted Yeezys, or a practice adopted by the luxury fashion, for instance when Gucci's 2018 cruise collection included a jacket that was a replica of one by 1980s Harlem couturier Dapper Dan, copying of designs exists at every level.
What was interesting in this case was that Gucci ripping off Dapper Dan turned the issue to 360 degrees because Dapper Dan was famous for using counterfeit Fendi, Louis Vuitton and Gucci logo prints to make clothes, till he was sued by the brands for copyright infringement in 1992, and his Harlem store went out of business due to litigation fees. Gucci just ended up settling the dispute by collaborating with Dapper Dan. Oh well, Dapper Dan had anyways been self-collaborating by running his operation for a decade prior to being sued!
In the United Kingdom, the design law protects the appearance and shape of whole products or parts of products, its shape or decoration. There exists the concept of unregistered design right, an automatic Intellectual Property (IP) protection which applies to original, non-commonplace designs, thus protecting the design from being copied. The unregistered design right protects the shape and configuration of products, both internally and externally.
There also lies a right for the designers to secure a greater level of protection by having their design registered with the UK Designs Registry.
While the unregistered design right is accorded to only 3 Dimensional (3-D) designs, 2 Dimensional (2-D) designs are protected by registering the design. However, the EU IP laws cover both 2-D and 3-D items.
Designs are protected primarily to ensure that the owner of the design reaps sufficient reward for their efforts. The design rights add effective and affordable protection and value to a business. One sees a product prior to feeling the product. The customers crowd where there is a display of well-designed products, thus meaning that the success of a market is directly proportional to how good the products look.
United Arab Emirates (UAE)
In the UAE, industrial designs are covered under Law Number 44 of 1992 (as amended by Law Number 17 of 2002) for the Protection of Patents and Designs (the "Law"). The term "Industrial Design" is defined as any form constituted by lines or colors, or any three-dimensional form that is primarily related to lines or colors, provided that it has a specific appearance and can be used as a model in industry or handicraft.
Article 44 of the Law states that the industrial design is eligible for protection under the Law only if it is recorded in the Special Register kept by the Directorate. The registration application shall be filed and examined as per the procedure, and on payment of the fees, prescribed by the By-Laws of the Law.
The objective to protect the design owner is to prohibit third-parties from misappropriating the design or using any similar confusing designs for their own benefits. The legal protection is sought by the design owner to pursue the copycats and deter the third-parties from manufacturing and selling knock offs of the same or similar design that could very well be confused to be the original design. The registration gives the owner exclusive rights, and when faced with a scenario where the competitor has imitated the design of a product in the market, the registered design owner can avail his exclusive rights over his registered design.
The Industrial Property Office administers Patents and Designs under the supervision of the Industrial Property Directorate, Ministry of Finance and Industry.
Industrial Design under the Law:
Applicants can obtain the ‘industrial drawing’ and design certificate provided it does not violate the public order or morals of the state. The term of protection is ten years from the filing date.
The owner of an industrial drawing and design certificate can prevent any other party from undertaking the following activities:
- Use of the industrial drawing, design, or model for manufacturing any product;
- Importation or acquisition of any merchandise relating to the drawing, design, or model with the intention of using or selling that product.
- The Ministry of Economy reserves the right to call for such additional information as it may deem fit in processing an application relating to registration of industrial design and/or grant of industrial design certificate from the applicant.
The application for protection can include more than one industrial drawing or design, provided that there is interrelation in terms of manufacture and uses, and does not in total exceed twenty drawings or designs.
A trade mark is designed to primarily identify the origin and source of goods and protect the distinctive non-functional features that relate to and indicate the source of origin of a product.
The trade mark laws protect 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. This is established under Federal Law Number 37 of 1992 as amended (the "Trade Marks Law").
The trade mark protection is afforded when the product's design is non-functional and is used as a source indicator. For instance, the shape of the product is such that it distinguishes it from someone else's product. The best route taken here for legal protection would be that the 3-D shape of the product is registered as a trade mark in addition to any industrial design registration.
Trade mark protection does not consider novelty. Even if the design is not novel, trade mark protection can be afforded as long as the trademark retains its distinguishing feature as a source indicator. This is in contrast to the industrial design protection, which can be afforded only if the design is novel but continues to protect even when the shape product loses its distinguishing feature as a source indicator.
Even if an entity imitates the store layout in such a manner that it replicates another's store, it would amount to trade mark infringement. The store layout can also be registered. Apple Store received trade mark for 'Distinctive Design and Layout' and trade marked its store design with the U.S. Patent and Trademark Office in 2013.
The trade mark, when lawfully registered, provides the owner with the exclusive right to use the mark under Article 17 of the Trade Marks Law. A registered mark cannot be found to infringe another mark (registered or otherwise), provided the registered mark was registered as per the provisions of the Trade Marks Law. It follows that a prior third-party, holding a valid registration, would need to invalidate the other trade mark registration in order to claim successfully that the defendant committed the offences set out in the Trade Marks Law.
Offences under Article 37 of the Trade Marks Law are:
- Any person who forges a trade mark registered according to Law or imitates the same in a way misleading the public and any person who uses with bad faith a forged or imitated trade mark.
- 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.
- 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.
Trade mark infringement in the UAE is the unauthorized use of a trade mark on or in connection with goods sold or services provided in the UAE in a manner that is likely to cause confusion, deception, or mistake about the original source of the goods or services.
When an individual entity uses a logo that is deceptively similar to a registered logo, for instance, by altering the alignment of the design or changing the color, the trade mark right holder may sue for infringement.
While registering a trade mark in the UAE, the examination process commences, which includes a formal examination, examination on the grounds of refusal and a search for prior trade marks. The trade mark is published for opposition before the registration which constitutes thirty days from the date of a publication of the trade mark application in the Trade Mark Journal or in two local daily newspapers.
Consider a scenario where a product with a registered trade mark in the UAE is such that it is instantly distinguishable from conventional products in the same product category as a result of its unique technology, shape and designs. There is another entity introducing a similar product with identical shape and design but under a different brand name and manufactured in a different country. Since the brand name here is different, the infringement case would be slapped only if the original product had trade marked its shape as a 3-D trade mark in the UAE. If so, the infringement claim shall be successful and accordingly, the counterfeiting goods will be seized.
Altering design features to an already registered product design is an increasingly popular way of having an edge by making it attractive to customers as it can turn a product into an instantly recognizable brand. It is always wise to have the pillars of legal protection by registering the design and legally protecting your brand. Know the IP Protection Laws of the country before conducting business.
BEWARE of infringing and being infringed!