Trademark Litigation in UAE: Common Defences to Infringement
You may receive a cease-and-desist letter in case a trademark owner thinks your trademark is identical or confusingly similar to theirs and you are using it without authorization. This situation can be unsettling for the recipient of the cease-and-desist letter as the other party is accusing you of committing trademark infringement.
Through the letter, the other party may demand you stop the use of the mark. However, you don’t need to panic in this situation. You can consult with trademark litigation services in Dubai which can advise you on infringement defence strategies and negotiate settlements, in addition to litigation. This blog will provide you with basic awareness of the common trademark infringement defence options, which can be useful to you while consulting with the providers of trademark legal services in Dubai. The following are some defences to trademark infringement claims, including affirmative defences:
Descriptive Fair Use
Descriptive fair use refers to the circumstances where a trademark is used in good faith for a descriptive purpose rather than referring to a specific mark or product. By using the provision of descriptive fair use you can use another party’s trademark to describe the user’s products or services. Here, the trademark is not used for indicating the source of the goods or services.
The descriptive use of a trademark usually occurs when the trademark in question has a descriptive meaning in addition to its secondary meaning as a trademark. If someone describes a component within a dehumidifier as “honeycomb-shaped, it will be considered a fair use of a registered trademark for HONEYCOMB dehumidifiers.
Nominative Fair Use
Nominative fair use can be an infringement defence when you use another party’s trademark to refer to the trademark owner’s goods and services associated with the mark. For example, it will be nominative fair use when an automotive repair shop in Dubai advertises it repairs BMW and Honda Cars. If BMW or Honda drags the automotive workshop to a court over trademark infringement, the latter can cite nominative fair use as a defence.
However, nominative fair use can be used as a trademark infringement defence as long as the following conditions are met:
- It is impossible for people to identify the product or service without the mark
- The mark was used only for a reasonable extent to identify the product or service
- The mark does not suggest any sort of sponsorship or endorsement by the owner of the trademark
Parody as a Defense
Sometimes people may use a trademark to criticize or ridicule the owner’s activity in the form of a parody. If the intention of the parody creator is to draw attention to some activity of the trademark owner and the use if not wholly for a commercial purpose, courts may allow parody of the trademark as an affirmative infringement defence. There are several examples from across the world to demonstrate parody as a trademark infringement defence. Some of the notable examples are given below:
- A photographer in the US once used the BARBIE trademark to criticize “Barbie”, which was considered a parody
- Greenpeace International once created a parody game titled Turtles Vs Tata against the alleged impact of TATA company’s activities on Olive Ridley Sea Turtles
The Invalidity of Registered Mark
In this case, a defendant can argue that the registered trademark is invalid. Such a type of defence can succeed only when the defendant can prove that the registration has taken place in such a way that it creates an unfair advantage in favour of the plaintiff.
Priority or Senior Use
In some cases, the Court may favour you if you can establish that you were the first to use the mark (before the other party had it) and use it continuously. In this case, you may be required to produce evidence to establish the prior use of the trademark. However, you should seek proper advice from companies providing trademark legal services in Dubai to use this as a defence.
Avail of the Best Trademark Litigation Services in Dubai, UAE
You can use any of the approaches listed in this blog to defend against trademark infringement lawsuits. However, it requires a meticulous assessment of the facts, an intimate understanding of the laws and available options, and the ability to execute strategies effectively in and out of the courtroom. Only the firms providing bespoke trademark litigation services in Dubai can help you with this.
Jitendra Intellectual Property (JIP) is one of the best IP firms providing reliable trademark legal services in Dubai. We can expertly handle trademark litigations by representing plaintiffs seeking injunctive relief and damages, and defendants who face trademark infringement claims. JIP can help you understand the potential liability you face and the specific defence strategies that can be raised.