In the first case addressed by the LAW HUB initiative, participants examined a dispute showing that a trademark is not merely a name written on a product, but an identity that carries its owner's reputation and customers' trust. The case concerned the cancellation of the registration of the (DAY SWISTAR) trademark because of its similarity to the well-known SWISTAR trademark. This opened the door to discussion of several issues: from defining a trademark as any visually perceptible sign capable of distinguishing the products of one establishment from those of another—and not limited to a name or logo—to the difference between its legal value, which is protected by law, and its commercial value, which is built through its reputation in the consumer's mind. The discussion then turned to the fact that a well-known trademark derives its protection from its fame, not from local registration, as provided for by the Trademark Law and the Unified GCC Trademark Law.

Participants paused at the key question: Is adding the word (DAY) enough to negate similarity? The answer was that the trademark must be considered as a whole, along with its distinctive element and the likelihood of consumer confusion, rather than by looking merely at the addition. The discussion concluded with the issue of balancing freedom of legitimate competition against the prior trademark owner's right to protection. The standard for this balance is the likelihood that an ordinary person would confuse the two marks.

First: What is a trademark? What is its value?

Rseel Al-Nafie @Rseel Fahad stated that a trademark is one of the most common forms of intellectual property, and that the law defines it as names presented in a distinctive form, signatures, words, letters, numbers, drawings, symbols, seals, embossed designs, or any other sign or combination thereof that is visually perceptible and capable of distinguishing products or services. This definition shows that a trademark is not limited to a name or logo.

Mariam Al-Alimi agreed, saying that a trademark is anything presented in a distinctive form—a name, symbol, phrase, signature, or letters—with the purpose of distinguishing a commercial entity's goods or services from those of its competitors. She added that the judiciary assesses similarity according to the standard of the ordinary person: Would they think the two marks were identical at first glance? If the judge finds similarity, they reject registration of the similar mark.

As for the difference between the two values, Rseel Al-Nafie explained that:

  • Legal value is the protection that the law grants to the trademark and its owner's rights, such as protection against infringement and imitation.
  • Commercial and economic value is the mark's value in the market, which becomes associated over time in the consumer's mind with the establishment's reputation and the quality of its products.

Second: Is registration of a well-known trademark required?

Participants agreed that registration is not a requirement for protecting a well-known trademark.

Faisal Al-Mousa said that once a trademark reaches a degree of fame that makes it known to its relevant public, it receives special legal protection without registration being a prerequisite. The law protects well-known marks by prohibiting the registration of marks identical or similar to them.

Ayla Al-Shawaf added that the Unified GCC Trademark Law provides protection for internationally recognized marks even if they have not previously been registered in the country concerned. It prohibits the registration of a copy of a well-known mark, its imitation, or the translation of its name, particularly for similar products.

Waad Al-Otaibi @Waad Alotaibi believed that protection does not fundamentally depend on local registration, because the law specifically protects well-known marks on account of their fame and reputation. This protection extends where the second mark is similar or may cause consumer confusion.

Third: The SWISTAR case: Does the word (DAY) negate similarity?

Waad Al-Otaibi believes that adding (DAY) is insufficient to negate similarity. Not every addition makes a mark entirely different; the more important consideration is the mark as a whole and its core distinctive element, which here is SWISTAR. The likelihood of confusion remained present for several reasons, including:

  • Similarity in pronunciation.
  • The products belong to the same category.
  • The possibility that, upon seeing DAY SWISTAR, consumers would believe it to be connected to the SWISTAR mark.

Faisal Al-Mutairi considered SWISTAR an invented word, which gives it greater protection. He speculated that it is composed of the words Swiss and Star. By contrast, if the mark were a commonly used phrase such as "North Star," its protection would be more difficult because the phrase has multiple meanings and uses that would be difficult for one person to monopolize.

Fourth: The effect of confusion on consumers

and on the well-known trademark

Mohammed Al-Subaie believed that the effect of similarity on consumers is significant.

If consumers believe that the two marks belong to the same company and that the second represents a new product line, when that is not the case, the well-known mark suffers harm. The other mark is often far inferior in every respect and may have an approach that does not suit the customer, causing them to form a negative impression of the well-known mark because of the confusion.

Waad Al-Otaibi responded that she did not mean that merely linking the two marks in the consumer's mind was sufficient to establish confusion. Such a connection must result from material similarity and particular commercial circumstances. In the SWISTAR case, the matter was not based on similarity alone,

but on a combination of factors:

  • The mark's fame.
  • The fact that SWISTAR is the distinctive element.
  • Similarity in pronunciation.
  • Similarity between the products.

The combination of these factors provides an objective basis for the likelihood of confusion, and does not make it merely an assumption that the consumer might associate any two marks.

Ryouf Al-Sewailim @Ryouf Alsewailim agreed with her that "creating an impression of confusion" is not an absolute term, and that proof of protection and fame must come first. She added that under the law and judicial practice, as in the Swistar case, once it is established that the mark is well known in its field and that the products belong to the same category, the likelihood of confusion becomes the decisive standard for resolving the dispute and preventing unlawful exploitation. Waad's point is the conditional premise on which the judge relies, while confusion is the evaluative result on which the registration is cancelled.

Fifth: Balancing freedom of competition against the trademark owner's rights

Joudi Hamadah @Joudi Hamadah said that competition is a legitimate right, but it must not come at the expense of the trademark owner or mislead consumers. If a restaurant appeared using a name, logo, or design very similar to that of a famous restaurant, such that customers believed there was a connection between them, judicial intervention would be logical to protect the trademark owner. If, however, the mark were different and did not cause confusion, competition would generally be permitted. The aim is not to prevent competitors from entering the market, but rather to prevent the exploitation of an established mark's fame or the creation of consumer confusion.

She explained that not every similarity between two marks means that confusion exists. The key question is whether an ordinary person might confuse them or believe that there is a relationship between them. This is consistent with the Trademark Law, which makes similarity to an earlier mark likely to cause confusion or deception among the public a ground for refusing registration. If the similarity is minor and does not lead consumers to believe that the two marks belong to the same entity, it is insufficient to justify refusal. If, however, the similarity is substantial and may cause confusion, the owner of the earlier mark is entitled to protection.

In conclusion

Participants agreed that a well-known trademark is protected by its fame even if it has not been registered locally, and that the governing standard is the likelihood of confusion among consumers, not merely the addition of a word or the presence of passing similarity. They differed in their points of emphasis:

between the effect of confusion on the consumer and the well-known mark, the need for it to be based on objective factors and the fact that it is the result on which the judge relies in reaching their decision, and preserving the right to legitimate competition.