How to Protect Your Brand Name: A Trademark Rights Case Study

Client Overview

Our client operates in the food and beverage industry and has been in business since 2016. They offer burgers under the “Brand X” brand name, along with other products that are sold under the same brand. Over the years, the company has made significant efforts to develop and promote its brand, establishing a strong and distinctive identity in the marketplace. Through these efforts, Brand X has become well-recognised by consumers, and the company is known for its high-quality products. This case underscores why every business should understand how to secure a business name and protect brand name rightsearly

The Challenge: Bad Faith Trademark RegistrationIn

2017, our client engaged in ongoing negotiations with a third party regarding the sale of its company and assets, including the restaurant under the Brand X name. As part of the sale process, the third party requested various documents from our client, including financial data, licences, an employee list, and documents related to the Brand X trademark registration.

During these negotiations, which ultimately did not result in a sale, the third party rushed to register the Brand X trademark in their own name. They were able to doso because, at the time, the trademark had not been officially registered.

Once the negotiations fell through, our client continued to operate their business as usual. In 2024, when our client decided to proceed with registering the Brand X trademark, they were shocked to find that the Ministry of Commerce, Industry and Investment Promotion rejected their application. The Ministry cited a similar existing trademark registration, which was the application filed by the third party back in 2017.

The Discovery of Bad Faith Registration

It is important to note that the third party has not used the Brand X trademark at any time up until 1 January 2025. Furthermore, they failed to complete the trademark registration process since their application in 2017. The status of the third party’s trademark application remained “pending registration” in the Ministry’s system. This inactivity clearly indicated that the third party had no intention of using the trademark and had merely registered it to block our client from securing their legitimate trademark rights.

After our client’s application was rejected, they reached out to the third party to negotiate the transfer of the trademark ownership. However, the third party refused to cooperate, demanding an unreasonable payment to cover alleged attorney’s fees for registering the trademark, despite having made no meaningful use of it since 2017.

Our Legal Approach: Enforcing Trademark Rights

We immediately advised our client on their options and took legal action. First, we reviewed the facts and the law, identifying clear grounds to challenge the Ministry’s rejection. Our key argument was that the third party had registered the Brand X trademark in bad faith and had failed to make use of the trademark, which should invalidate their application.

We referenced the principle established by the Supreme Court in Appeal No. 894/2015 (session of Tuesday 6 June 2017). The Court’s decision reinforced that priority in registration should go to the party who has used the trademark first andwho has demonstrated a genuine intention to use it. As the Court stated, "The court issuing the contested ruling ignored the appellant’s priority in registration, which is more deserving of protection, because it is well known that the one who registers first is the one who obtains the right first, especially after it was proven that the two conditions of Article (42) of the Intellectual and Industrial Property Protection Law were not met.

We further cited Article 42 of the Intellectual and Industrial Property Protection Law, which states: “Any interested person may request the Registrar to cancel a mark for the goods or services for which it is registered, on the basis that the mark, one month prior to the date of filing the cancellation request, has not been used by the owner of the mark or the licensee for a period exceeding (3) consecutive years. Cancellation is not permissible if it is proven to the Registrar that circumstances beyond the control of the owner or the licensee prevented the use of the mark during the aforementioned period, and that the owner has no intention of not using or abandoning the mark in relation to those goods or services.

The third party had not used the trademark and had shown no intention of doing so. In fact, they had left the registration process incomplete and in a state of limbo for several years.Moreover, we referenced Royal Decree 33/2017, which establishes the Trademark Law (System) of the Cooperation Council for the Arab States of the Gulf, which allows for an appeal to be filed against the rejection of a trademark registration within 60 days from the date of notification. Our client was within this period, and so we filed a formal grievance with the Ministry.

In our grievance, we made the case that our client had been using the Brand X trademark since 2016, and the third party’s registration was clearly made in bad faith, solely to obstruct our client’s legitimate claim. Our strategy leveraged trademark law to defend our client's right to register brand name protections.

The Outcome: Successful Trademark Registration

After submitting our grievance, the Ministry reviewed the matter and made a decision within two weeks. The Ministry revoked the third party’s trademark application and authorised the official registration of the Brand X trademark in our client’s name. The third party had failed to use the trademark, and the application remained incomplete, which allowed the Ministry to revoke the application without the need for further legal action.

Our client’s trademark was finally registered, securing their rights to Brand X andprotecting the brand they had been developing for several years. The decision was made swiftly and efficiently, without the need for prolonged court proceedings, saving our client both time and legal costs.

Why It Matters: Protecting Your Brand Under Trademark Law

This case serves as a reminder of the importance of trademark registration and therisks associated with failing to protect intellectual property. It also highlights the legal recourse available when a third party registers a trademark in bad faith, without any genuine intention to use it.

By acting quickly and presenting a strong legal argument, we were able to protect our client’s brand and prevent any further delays in their business operations. Thiscase also underscores the importance of securing trademark rights early, as it can prevent conflicts and legal challenges down the line.

Protect Your Brand with ConfidenceIf 

you are facing challenges with trademark registration or believe your intellectual property rights are being infringed upon, our experienced legal team is here to help. Get in touch with us today to discuss how we can assist you in protecting your brand and ensuring your business’s future success.