DUBAI // Companies with names similar to well-known global brands are being warned to carry out a proper investigation to ensure they are not breaching copyright laws.
It comes after Facebook, the social-networking giant, said it was looking into whether a small hairdressing salon in Discovery Gardens had breached its intellectual property rights by calling itself Facelook.
A Facebook spokesman for the Mena region said the company was still investigating the case.
“We are careful to protect the Facebook brand and we will be looking more closely at this particular case,” he said.
The owner of the salon, who declined to give his name, said he had not run into any problems.
“It’s been quite cool,” he said. “We’ve registered this name and even the brand under UAE labour law. We haven’t had any issues.
“We started with the name Facelook, but when later on the branding came through, coincidentally it looked like Facebook.
“For a normal guy, with a naked eye, it looks familiar. However, the colour and the font is different to Facebook.”
Last year, a shop purporting to be Primark, the UK budget retailer, opened in Bur Dubai. The owners of the shop registered the name with the Dubai Department of Economic Development (Ded) but the British brand denied the shop was part of its group and said it was considering legal action.
Lawyers said it was a common for businesses to face penalties for breaching trademark rules, whether intentional or not.
“When it comes to trademark infringement, intention doesn’t play a role,” said Darshan Ramamurthy, a legal consultant at The Rights Lawyers in Dubai. “If someone has adopted a company name, but has not done their due diligence, it could cause problems for them.
“If their company name is conflicting with someone who has better rights than them, then they could stand to lose everything.
“They could have gone ahead and invested a significant amount in their business under the infringing name. It’s a huge inconvenience in building up a brand name, only to have to give it up because due diligence wasn’t carried out.”
Under UAE law, international brands have to register their trademarks locally to prevent others misusing their brand.
In the Primark case, the Ded said at the time it was not taking action against the local version. But a year later, the shop could not be found at its original location on Bank Street.
Rob Deans, a partner in the intellectual property group at the law firm Clyde and Co, said the Facelook case was different from the Primark incident in that the salon was not misleading the public by pretending to be Facebook.
“The question is, is it a joke or is it serious?” he asked. “Is it a parody of Facebook or is it trying to be Facebook itself? In the US, there are laws about tarnishing a brand, while in the UK, it’s more about confusing the two entities.”
Dino Wilkinson, a partner at the law firm Norton Rose Middle East, said it was a difficult issue for a company to tackle.
“It’s not a company that is directly competing with Facebook, but it is trading on its reputation,” he said.
“What it boils down to is whether Facebook is actually going to be bothered enough over a small hairdresser’s to take action. If it feels like it is demeaning its brand, then it may do.”
Hair salons around the world have become famous in the past for having pun-filled names, including Sherlock Combs and Grateful Head.
source: the national.ae
But that sense of humour has landed some in trouble. In 2000, a salon called British Hairways in Sheffield, England, was threatened with legal action by British Airways.
The threats went back and forth for two years, before finally being dropped by the airline. The shop is still open, under new management.
Former owner Steve Parkin, who fought for the right to maintain the name, said the case had backfired on British Airways.
“I got a lot of publicity over it, and in the end it just looked bad on them,” he said.
source : http://www.thenational.ae