Prior Use in UAE Trademark Law: How the Dubai Court of Cassation Clarified Ownership, Registration, and the Limits of Statutory Protection

The concept of prior use remains one of the most contested issues in trademark disputes. Businesses frequently question whether earlier commercial use of a mark can defeat a later trademark registration. The Dubai Court of Cassation addressed this issue decisively in its judgment dated 8 May 2012 in Commercial Appeal No. 92/2012, laying down principles that continue to guide trademark enforcement in the UAE.

This article focuses on a single, central theme from that ruling: the legal weight of prior use and its interaction with trademark registration.

1. Prior Use as the Origin of Trademark Ownership
   
   
   

The Court reaffirmed a foundational principle of UAE trademark law: ownership of a trademark originates from use, not registration.

While registration confers important statutory rights, the Court clarified that the true source of ownership lies in actual commercial use of the mark in the marketplace. A party able to demonstrate earlier use may challenge the rights of a registered owner, even if it never secured formal registration first.

This approach reflects the UAE’s adherence to the broader civil law concept that rights arise from factual commercial reality, rather than administrative formality alone.

2. Registration as Presumptive, Not Absolute, Evidence
   
   
   

The Court emphasised that trademark registration creates a legal presumption of ownership and prior use, but that presumption is simple and rebuttable, not conclusive.

In practical terms:

• The registered owner is presumed to be the lawful proprietor of the mark.
• That presumption can be overturned if another party proves earlier use in trade.
  
  

Registration therefore strengthens a party’s position but does not automatically extinguish the rights of a genuine prior user.

3. Burden of Proof Rests with the Prior User
   
   
   

The ruling makes it clear that the burden of proof lies squarely on the party claiming prior use.

Such a claimant must produce clear, dated, and verifiable evidence demonstrating:

• Earlier commercial use of the mark
• Consistent or continuous use
• Genuine use in trade, not merely preparatory or internal activity
  
  

Accepted forms of evidence include:

• Invoices and sales records
• Advertisements and marketing materials
• Product packaging and labels
• Promotional content
• Dated commercial contracts
  
  

The Court made it clear that bare assertions are insufficient; prior use must be substantiated with documentary proof capable of withstanding judicial scrutiny.

4. Priority of Use and the Five-Year Limitation Rule
   
   

The Court reiterated that priority in use determines ownership, unless the registered owner has used the mark continuously for five years without challenge.

Once this five-year period elapses:

• The registered owner’s rights become final and unassailable.
• Even a genuine prior user can no longer seek cancellation or revocation.
  
  

This principle, now reflected in UAE trademark legislation, places a premium on early enforcement and discourages prolonged inaction.

5. Continued Relevance of Prior Use in Modern Trademark Practice
   
   
   

The judgment remains particularly relevant in markets such as the UAE, where businesses may trade for years before formalising their intellectual property portfolios.

Key takeaways include:

• Earlier use can defeat later registration, but only with compelling evidence.
• Delayed registration increases litigation risk and evidentiary burdens.
• Prior users must act swiftly, as rights weaken significantly after five years of uncontested registered use.
  
  

From a comparative perspective, the UAE’s approach aligns closely with jurisdictions that balance common-law use principles with civil-law registration systems, offering both flexibility and legal certainty.

Conclusion

The Dubai Court of Cassation’s 2012 ruling affirms a carefully balanced approach: trademark rights arise from use, but registration provides the strongest legal shield.

For businesses operating in the UAE, the message is clear:

• Use your mark consistently.
• Maintain detailed records of commercial use.
• Register early to avoid reliance on heavy evidentiary burdens later.
  
  

Prior use remains a powerful, but evidence-dependent, tool in trademark disputes—and this judgment continues to guide courts, practitioners, and brand owners alike.

 

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