Rouse steers Honda to IP success in Dubai

Honda was seeking to enforce a trade mark registration that related to the 3D shape of its distinctive multipurpose engine. The court decided that 3D shapes are capable of trade mark registration and that Honda's registration had been infringed.

The decision shows the Dubai Court's increasing willingness to tackle complex intellectual property issues, and represents a breakthrough for the owners of non-traditional trade marks in the region.

Sara Holder, Rouse's UAE Country Manager, said:

"We are pleased by the decision of the Court of Appeal which confirms UAE's commitment to protecting and enforcing registered trade marks. This is an exceptional case as it is the first of its kind in terms of providing legal recognition at this level to the three dimensional trade mark and represents a major step forward for trade mark law and practice in the region."

Facts and background

In May 2005, Honda registered the shape of one of its famous multipurpose engines as a trade mark.

It subsequently sought to enforce the registration against a trader selling copies of the engine. The Defendant challenged the validity of the registration. In Dubai's first decision relating to shape marks, its Court of First Instance found in Honda's favour. The Defendant appealed to the Court of Appeal.

Although the definition of 'trade mark' in UAE trade mark legislation appears sufficiently broad to include shapes, the legislation contains no specific provisions dealing with shape marks. The decision of the Court of Appeal, is, therefore, particularly important.

The decision

To assist it in its deliberations, the Court of Appeal appointed both a trade mark and an industrial design expert. While the appointment of an industrial design expert may not have been strictly necessary, it enabled the Court to understand the difference between shape marks and industrial designs.

The trade mark expert was of the opinion that the shape of the engine fell within the definition of a 'trade mark' in UAE Trade Mark Law No. 37 of 1992, amended by Federal Law No 8 of 2002, and was capable of registration as a trade mark. The design expert considered the shape of the engine incapable of industrial design registration because it was not novel.

The Court ruled in favour of Honda on the issue of validity and found that its registration had been infringed. A written decision has yet to be issued.