Primark copier could face legal bind

The owners of a Dubai firm allegedly faking Primark, a well-known European chain of clothing stores, could face federal fines of Dh10,000 (US$2,722) and up to a year in jail if found guilty of trademark violations, lawyers said yesterday.

The local Primark, a company registered with Dubai Economic Development, opened a new clothing store in Bur Dubai this week, purporting to be the huge European retailer. But the clothier based in Britain said on Monday that it did not have any stores in the UAE.

Lawyers say the local company is treading a dangerous legal tightrope, even if Primark from the United Kingdom does not have a registered trademark licence in the Middle East.

"The UAE Trade Marks Law says that foreign trademarks of an international fame that transcend the boundaries of their country of origin may not be registered except upon the application or under the authorisation of the original owner," said Dino Wilkinson, a partner at the law firm Norton Rose Middle East. "The law states that any person using an unregistered mark of this type faces a penalty of up to one year's imprisonment or a fine of between Dh5,000 and Dh10,000, or both."

The fake Primark store opened on Monday with two floors and is stocked with clothing that resembles Primark's value shirts, shoes and accessories. Attempts by The National to contact Primark in Dubai were unsuccessful.

The original Primark, which is part of Associated British Foods, a listed UK company, told The National on Tuesday that it was aware of the Dubai store and was seeking legal action. Representatives of Primark in the UK could not be reached yesterday to confirm that it did not have a registered trademark in the UAE.

But that may not matter, lawyers said yesterday.

"Many countries, including the UAE, recognise that international brands should be protected from opportunistic local infringement, even if they have not obtained a registered trademark," said Mr Wilkinson.

The UAE is a member of Paris Convention for the Protection of Industrial Property, signed in 1983, and established to enforce intellectual property laws in many jurisdictions around the world.

"At the end of the day, a trademark right pretty much trumps even a registered trade name," said Darshan Ramamurthy, the manager of trademarks at The Rights Lawyers, a law firm. "A company name is not supposed to be registered if it is similar or the same as a famous trademark. That is why you cannot register as Nike."

Tarik El Bakri, the head of intellectual property at Hadef & Partners law firm in Abu Dhabi, said the Primark case was "unique" and an "oddity", given the developed trademark laws in the UAE.

"Since the late 1990s, such stringent violation of trademark rights has decreased substantially," he said. "But the UAE did not even attract this kind of trademark breach when you have shops open claiming to be shops of an international brand. It's really an oddity."

But the Dubai Department of Economic Development said it was currently not taking any action against the company behind the store using the Primark name in the emirate.

"Please note that DED initiates action in such cases only when the trademark and its ownership is registered with the UAE Ministry of Economy," said Omar Bushhab, the chief executive of commercial compliance and consumer protection.

rjones@thenational.ae

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