17 February 2015

Boxpark development in Dubai highlights the importance of protecting your brand early

This week saw the legal battle between Brands Incorporated (Brands Inc) and Meraas Holding (Meraas) shift gear when Brands Inc turned to social media in the hope of reaching a resolution.

Brands Inc and Meraas are fighting over ownership of the BOXPARK brand in the UAE.  Brands Inc opened BOXPARK, its award winning East London pop-up mall made of shipping containers, in 2011.  Meraas, a UAE based property company have announced plans to launch a similar mall in Dubai, also called BOXPARK, later this year.

In the UAE, trade mark rights are granted on a first to file basis.  Unfortunately for Brands Inc, they did not file for registered trade mark protection in the UAE after their launch in 2011, which meant that when Meraas filed its own application for the BOXPARK trade mark in the UAE in 2014, Meraas obtained exclusive UAE rights over the BOXPARK brand.

As they have no legal rights in the UAE, Brand Inc have been unable to stop Meraas so far, so, in a novel move, Brands Inc have released a video on Youtube and Twitter asking Meraas not to use the BOXPARK name. Brands Inc is hoping to persuade the public to put moral pressure on Meraas to change the name of their container park.

We will have to wait and see if Meraas take notice of the campaign.

Obtaining effective global protection for your brand

Brand Inc's video highlights the issues faced by businesses seeking to stop "copycats" in the UAE and other territories.  It is important to file trade marks as early as possible and in all countries of potential interest to limit the chance of your business encountering a similar fate to Brands Inc. However, this alone is not enough. Defensive registrations are not permitted in many territories and, unless you use the mark in the territory filed within your registration, you will be open to challenge within a few years of its registration (3 years in the UAE).

Although some businesses may decide to enter the relevant market place on their own, an increasingly attractive alternative is to enter into franchising and licensing arrangements with local partners. This option offers the advantage of working with partners who have already built up contacts and have local and cultural knowledge on their side which could help you to enter the market place more quickly than you would otherwise be able to.

Immaterial of the territory or means of expansion, there will always be various hurdles for any growing business to consider and overcome, so appropriate advice should always be obtained prior to embarking on any international expansion plans.

What does this case mean for you?

This case serves as a reminder not only of the importance of taking early steps to protect your business and brand globally, but also to make sure that you understand any local prerequisites for maintaining that protection – such as actual use in the territory.  Failure to do this can allow others to take advantage of your branding and reputation, and prevent you from expanding your business internationally.

If you have any questions or enquiries on the issues that may affect your business when considering international expansion, please don't hesitate to contact our Brand Protection and Franchising Teams.

Stefania Littleboy is a solicitor in our Intellectual Property Group.