The UAE Federal Supreme Court has handed down a significant trademark judgment reinforcing the principle that genuine prior use can prevail over a later registration, a ruling that may have implications for cancellation and enforcement proceedings in the United Arab Emirates.

The case was successfully argued by Habib Al Mulla and Partners on behalf of a trademark owner who had used a mark for more than a decade before a third party obtained registration of an identical trademark.

At the heart of the dispute was a common but increasingly contentious question in Middle East trademark law: whether a business can challenge a later registration even where its own earlier registration has lapsed.

The answer from the UAE’s highest court was a decisive yes.

The court upheld earlier decisions requiring the Ministry of Economy to deregister the conflicting trademark. In doing so, it confirmed that rights arising from genuine commercial use remain highly relevant, particularly where challenges are brought within statutory limitation periods.

The claimant attempted to argue that the challenge was procedurally defective and should have been directed against a Trademarks Committee decision rather than the ministry itself. The Supreme Court rejected the argument, holding that the relevant administrative decisions were intrinsically linked and that procedural requirements had been properly satisfied.

Perhaps more importantly, the court emphasized the timing of the challenge.

According to the judgment, the original trademark owner had challenged the counterparty’s application within the prescribed five-year period. As a result, the later registrant could not rely on its registration to defeat the rights of the earlier user.

The ruling is noteworthy because many jurisdictions in the Middle East remain heavily registration-based. Businesses frequently assume that obtaining a registration certificate is sufficient to secure exclusive rights.

This judgment suggests UAE courts may take a more nuanced approach.

The decision reinforces the significance of maintaining records demonstrating market use, advertising activity, customer recognition and historical brand ownership. Such evidence can be decisive in cancellation proceedings where competing parties assert overlapping claims.

The ruling is also expected to influence litigation strategy.

Trademark owners facing challenges may increasingly seek to establish earlier commercial use, while applicants conducting clearance searches may need to look beyond registry records and examine potential unregistered use in the marketplace.

For international brand owners, the case is particularly relevant as the UAE continues modernizing its intellectual property framework and attracting global investment. Greater emphasis on prior-use rights could create both opportunities and risks for businesses entering the market.

The judgment serves as a reminder that trademark law protects more than registration certificates. In certain circumstances, courts remain willing to recognize and protect commercial goodwill built through actual use, even where registration histories are imperfect.

- Asia IP