Federal Supreme Court Ruling on Trademark Distinctiveness and Absence of Confusion in Appeal No. 346 of 2026

United Arab Emirates - Federal Supreme Court

Session: Wednesday, September 9, 2026

Presiding: Judge Dawood Ibrahim Abu Al-Shawareb, President of the Circuit

Circuit Members: Judge Al-Hassan bin Al-Arabi Faidi and Judge Dr. Hassan Mohammed Hassan Hind

Appeal No. 346 of 2026 Administrative

Legal Principles

• (1-4) Trademarks: What constitutes a trademark and what does not. Registration of well-known trademarks and the underlying rationale. Trial Court: The authority of the substantive court in assessing the degree of similarity between two trademarks.

• (1) Trademarks: Definition and requirements for registration pursuant to Articles 2 and 3 of Federal Decree-Law No. 36 of 2021.

• (2) Well-Known Trademarks: Concept and scope. The general principle prohibits the registration of a well-known trademark whose reputation extends beyond its country of registration into other countries for identical or similar goods and services. The exception arises where the application is submitted by, or with the consent of, the trademark owner pursuant to Article 4 of Federal Decree-Law No. 36 of 2021.

• (3) Similarity Between Trademarks: Substantive criterion. Registration of a trademark requires distinctiveness and clarity to ensure that no confusion or deception occurs among the ordinary average consumer. The trademark owner is entitled to prevent third parties from using the mark on condition that similarity exists between the prior registered mark and the mark sought to be registered regarding the goods, products, or services pursuant to Article 17 of Federal Decree-Law No. 36 of 2021.

• (4) Absence of Confusion: The establishment of differences between the trademarks of the appellant company and the first respondent company across all elements—save for a common word element—where the appellant's mark, viewed in its entirety, demonstrates clear defining features establishing complete distinctiveness in phonetic pronunciation, auditory resonance, and overall visual impression, in addition to operating in different classes (car rental vs. hotel management). This eliminates any similarity or public confusion and removes any bar to registration. The lower court's ruling that similarity existed based solely on an overlapping element was contrary to law.

Judicial Precedents and Governing Statutory Principles

1. It is established in the jurisprudence of the Federal Supreme Court—pursuant to the provisions of Articles 2 and 3 of Federal Decree-Law No. 36 of 2021 on Trademarks—that any distinctive shape consisting of names, words, signatures, letters, or symbols constitutes a trademark. Conversely, any mark identical or similar to a trademark previously filed or registered by a third party for identical goods or services, or related goods or services, may not be considered a trademark or part thereof, nor registered as such, if the use of the mark applied for registration creates an impression of affiliation with the goods or services of the registered trademark owner or causes prejudice to their interests.

2. It is further established in the jurisprudence of the Federal Supreme Court—pursuant to Article 4 of the aforementioned Federal Decree-Law—that a well-known trademark whose reputation has transcended the borders of its country of registration into other countries may not be registered for identical or similar goods or services, unless the application is filed by the owner of the well-known trademark or with their express approval. In determining whether a mark is well-known, regard must be had to the extent of its recognition among the relevant public as a result of its promotion, the duration of its registration or use, the number of countries where it is registered or known, its value, and the degree of its impact in promoting the goods or services distinguished by the well-known mark.

3. It is also established in the jurisprudence of the Federal Supreme Court—pursuant to Article 17(2) of the aforesaid Federal Decree-Law—that the owner of a registered trademark has the right to prohibit third parties who have not obtained consent from using that mark or using any identical or similar sign, including any geographical indication in the course of trade, to distinguish goods or services related to those for which the trademark was registered, whenever such use is likely to cause public confusion in the event of using the trademark itself or a similar mark to distinguish goods or services identical or similar to those registered. The rationale is that a trademark serves as a means of distinguishing the products, goods, and services belonging to the mark owner by reason of manufacture, selection, trading, or offering for sale. This purpose is achieved by differentiation between marks used to distinguish a specific good so that ambiguity is dispelled and the consumer public is not misled or confused. The legislator made similarity between a previously registered mark and an applicant mark an absolute bar to registration. In evaluating distinctiveness, it is insufficient to merely look for common letters, symbols, or images; rather, consideration must be given to the overall general impression imprinted on the mind from the synthesis of these elements, or the prominent visual presentation distinguishing one mark from another regardless of isolated constituent components.

...from another, irrespective of the separate elements composing each mark and whether they share one or more common elements.

Application of Legal Rules to the Merits

4. It is established from the case records that the appellant's mark is enclosed within a square and includes the word "....." registered in Classes 35 and 39 for car rental activities, whereas the first respondent's mark depicts the English word "....." registered in Class 43 for hotel management. A detailed comparison and visual examination between the appellant's trademark and the competing trademark reveals that the final segment of the appellant's mark differs in spelling and pronunciation. Furthermore, additional words "....." are affixed, placed inside a black box topped by a prominent capital letter "R", along with two additional words including the word "Car" to emphasize its distinction. Although both marks share a common root word "....", the appellant's mark, evaluated in its totality, possesses distinct defining features establishing an undeniable divergence between both marks. The competing marks differ substantially in verbal pronunciation, acoustic cadence, and the overarching visual image impressed upon the memory, thereby precluding any risk of similarity, deception, or confusion among consumers. This is further supported by the fundamental difference between the business categories (car rentals versus hotel management). Consequently, the applied-for trademark satisfies the statutory requirements of distinctiveness and precise clarity, ensuring that no confusion or deception could occur with the average consumer of either service class. By disregarding these considerations and ruling that the trademarks were confusingly similar due to sharing the distinctive element "....." on the presumption that it caused public deception despite distinct activities, the contested judgment erred in the application of the law, warranting cassation.

Discretion Under Article 186 of the Civil Procedure Law

Whereas the dispute is ripe for adjudication pursuant to Article 186 of the Civil Procedure Law; and addressing the merits of Appeal No. ...... of 2026; since the expert report concluded otherwise, the court sets it aside and declines to rely upon it. In accordance with the foregoing reasons, the court rules on the merits of the appeal by annulling the contested decision of the Trademarks Committee to the extent it cancelled the registration of the appellant's trademark, with all consequential legal effects.

The Court

The facts, as disclosed by the contested judgment and the record of appeal, reveal that the appellant initiated Action No. .... of 2026 Administrative Appeal before the Abu Dhabi Federal Court of Appeal on January 12, 2026 against the respondents, seeking the revocation of Trademarks Committee Decision No. 2025/255 rendered in Grievance No. ........, ....., ... concerning trademark registration applications ..., ..., and ... in so far as it ordered the cancellation of the appellant's registered trademark. The appellant submitted that it had registered its trademark with the Ministry of Economy; the first respondent objected to the registration, but its objection was dismissed due to the distinctiveness of both marks. The first respondent then filed a grievance with the Trademarks Committee, which issued the challenged decision cancelling the appellant's registration on the grounds that the appellant's trademark shared its principal component with the trademark of Rotana Hotel Management Corporation, in addition to the latter's widespread renown. The appellant challenged that decision as contrary to law, prompting its action with the aforementioned prayers.

On May 13, 2026, the Abu Dhabi Court of Appeal dismissed the appeal. Consequently, the appellant lodged the present cassation appeal. The Court considered the appeal in chambers, deemed it worthy of review, scheduled a hearing, and delivered its ruling at today's session.

Grounds of Appeal

The appellant faults the contested judgment with violation of the law, error in legal application and interpretation, and flawed reasoning for merely adopting the expert report concluding that similarity existed between the two marks. The appellant asserts that both marks are entirely distinct, that the word "Rotana" is widely used and generic, that its trademark contains additional distinctive elements rendering both marks dissimilar when viewed in their totality, and that their commercial activities differ, all of which warrants reversing the lower judgment.

Court Findings on Statutory Trademarks Framework

This ground of appeal is well-founded. Articles 2 and 3 of Federal Decree-Law No. 36 of 2021 on Trademarks provide that a trademark comprises any distinctive shape consisting of names, words, signatures, letters, or symbols. Conversely, any mark identical or similar to a prior registered or deposited mark owned by a third party for identical or related goods or services shall not be deemed a trademark or part thereof, nor may it be registered where its use would create an impression of association or cause harm to the interests of the registered mark holder.

...services related thereto, if the use of the trademark applied for creates an impression associating it with the goods or services of the registered trademark owner or causes detriment to their interests.

Under Article 4 of the said Decree-Law, a well-known trademark whose fame extends beyond its country of registration into foreign jurisdictions may not be registered for identical or similar goods or services, unless an application is presented by or with the consent of the owner of the famous trademark. In assessing trademark renown, consideration is given to public awareness generated through promotional activities, duration of use or registration, the geographic scope of registration or recognition, commercial valuation, and market impact in distinguishing related goods or services.

Furthermore, Article 17(2) of the Decree-Law entitles the registered owner of a trademark to prohibit any third party acting without consent from utilizing identical or similar marks or commercial designations, including geographical indicators, for goods or services related to those covered by the registration, where such use is likely to induce public confusion. The essential function of a trademark is to serve as an instrument distinguishing the goods, products, and services of an enterprise derived from their production, selection, trading, or distribution. This function is achieved by establishing clear distinctions between marks used for specific goods to dispel any potential misunderstanding, avoiding confusion and deceit among consumers. The legislature specifically conditioned registration barriers upon the existence of actual likelihood of confusion between the prior mark and the applicant mark. When assessing distinctiveness, the evaluation must not merely isolate letters, symbols, or graphics, but rather evaluate the comprehensive impression formed in the consumer's mind resulting from the combination of words, symbols, design, and general configuration.

Detailed Comparison and Final Decision

Applying these standards, the case files demonstrate that the appellant's mark is enclosed within a square containing the words "Rotana .........." registered in Classes 35 and 39 for car rental activities, whereas the first respondent's mark comprises the word "...." written in English within Class 43 for hotel management activities. A side-by-side comparison of the appellant's mark against the competing mark reveals that the suffix segment of the appellant's mark diverges noticeably in script and phonetics. In addition, the words "for Rotana" are appended and encased in a black box surmounted by an enlarged capital "R", accompanied by two words including the word "Car", clearly denoting its automotive nature. Although both marks contain an overlapping word element "...", the appellant's mark, assessed in its totality, exhibits a pronounced individuality that negates any visual or phonetic congruence between the two marks. The marks possess distinct phonetic articulation, acoustic cadence, and mental impressions, thereby ruling out any likelihood of consumer confusion or mistake among the public. This conclusion is reinforced by the disparate nature of the two commercial activities (car leasing vs. hotel management). Consequently, the mark satisfies the legal standard of distinctiveness and individual identity, confirming that an ordinary, average consumer within each class would not be misled or deceived. The appellate court's holding that the marks were confusingly similar based purely on the common element "...." as the dominant feature misapplied the law and must be reversed.

As the matter is ripe for final judgment under Article 186 of the Civil Procedure Law; and adjudicating the merits of Appeal No. 23 of 2026; and since the expert opinion deviated from the correct legal principle, this Court dismisses and declines to adopt it. For the reasons elaborated herein, the Court rules on the merits of the appeal by annulling the contested decision of the Trademarks Committee regarding the cancellation of the appellant's trademark registration, together with all associated legal consequences.