Appellant: Tesco Supermarket.
Appellee: Tesco Stores Limited.
Appealed decision: The court judgement issued by Sharjah Appellate Court which obliges the appellant to stop use of the trade name of the appellee and its "TESCO" trademark registered May 20, 1993, to take the said mark off its walls and papers, to invalidate the registration issued in the name of the appellant, and to strike it off the register kept with the competent authority, and to publish the decision in the official gazette at the expense of the appellant.
The grounds for the appeal from the point of view of the appellant are violation of the law, mistake in applying the law, deficiency in reasoning out, and incorrectness of induction that the trade name is what distinguishes a business enterprise from another.
The legal principle issued by the Supreme Court:
1.That Article 2 of Federal Law No. 37 for the Year 1992 Regarding Trademarks regards a trademark everything that takes a distinctive shape and consists of names, words, signatures, letters, etc.
Article 3 of the same law provides that among the things that shall not be registered as trademarks are the marks that are liable to mislead the public or which contain false indications on the business concern, the origin of the products or services or their other characteristics and those which contain imaginary, imitated or counterfeit trade name. Article 4 of the law reads:
Foreign well-known trademarks whose renown exceeds the limits of the owner's home country to other countries shall not be registered except upon an application in the name of its original owner.
Article 10 of the law does not permit the registration of any trademark identical or similar to another trademark that has already been registered for the same classes of goods and services.
2) A trade name is one of the abstract elements of the commercial store; it is every name under which a business concern operates its activity. Only the owner of the trade name has the right to use it and may use his trade name as his trademark and then enjoys the self-same protection.
3) The registration of a trademark and obtaining a certificate do not secure protection because the concept to be followed is evidence of prior use. This is not changed by the addition of the word supermarket to the mark because this does not preclude confusion and misunderstanding among the public who is previously attached to the trademark and trade name of the appellee.
This dictates that the appellee be compensated for the moral damage and positive reaction to the appellee's request to force the appellant to stop using the trademark "TESCO" which is registered as a trademark in the appellant's name as well as removing the mark from the walls and papers of the appellant including striking off its registration.
Based upon the provisions of Law No. 37 for the Year 1992 and Article 57 of the Trademarks Law No. 18 for the Year 1993, that a trade name shall not be false and shall not be misleading is just.
In view of all that, we hereby reject the appeal