Registering a trademark containing a personal or family name does not necessarily give its owner exclusive rights over every later mark using the same name.
That principle was recently considered by the UAE Federal Supreme Court in a trademark dispute involving two marks that shared the word “Hanafy”. The owner of an earlier registered mark objected to the registration of a later restaurant and confectionery mark, arguing that the shared name created unlawful similarity and a risk of consumer confusion.
The Court rejected the suggestion that the dispute could be determined by isolating the shared word alone.
Instead, it confirmed that trademark similarity must be assessed by examining the overall commercial impression created by each mark, including its wording, visual presentation, phonetic character, design and other distinctive elements.
The judgment provides important guidance for businesses that use personal names, family names or commonly used words as part of their branding. It also reinforces a fundamental principle of UAE trademark law: protection attaches to the mark as a whole, not automatically to every individual word appearing within it.
The Dispute
The proceedings arose after a company applied to register a trademark for restaurant and confectionery services containing the name “Hanafy”.
The owner of an earlier trademark, which also incorporated the name “Hanafy”, opposed the application. It argued that its earlier registration entitled it to prevent the later mark from being registered because the shared name created sufficient similarity between the two brands.
The competent trademark authority rejected the opposition and permitted the later application to proceed.
The earlier trademark owner challenged that decision through the available administrative and judicial procedures. The Court of Appeal ultimately rejected the challenge, prompting an appeal before the Federal Supreme Court.
The appellant argued that the lower court had failed to recognise the strong visual and conceptual similarity between the marks. In particular, it maintained that the word “Hanafy” was the dominant and memorable element of both trademarks and that the remaining differences were insufficient to eliminate confusion.
The Federal Supreme Court disagreed.
A Trademark Must Be Considered as a Whole
The central principle confirmed by the Court is that trademark similarity is not assessed by separating one word from the remainder of the mark.
A trademark may consist of several interacting elements, including:
- words;
- personal names;
- logos;
- colours;
- shapes;
- fonts;
- symbols;
- slogans; and
- visual arrangements.
The average consumer generally encounters those elements together. The legal assessment must therefore consider the overall impression created by the complete mark rather than conducting an artificial comparison of individual components in isolation.
Two trademarks may share a word without necessarily being confusingly similar.
Conversely, marks using different words may still create a similar overall impression where their visual identity, sound, concept or presentation closely resemble one another.
The relevant question is not simply whether the marks contain something in common. It is whether their similarities are sufficiently significant, when viewed as a whole, to create a likelihood that consumers will mistake one business for the other or believe that the businesses are commercially connected.
Why the Shared Name Was Not Decisive
In the dispute before the Court, the word “Hanafy” appeared in both marks.
That shared element was not ignored. It was simply not treated as conclusive.
The Court considered that “Hanafy” was a commonly used personal name. The earlier owner could not claim an unrestricted monopoly over the name merely because it formed part of its registered trademark.
The marks also differed materially in their other elements.
According to the judgment, the later mark possessed its own distinctive visual character, including a circular design, prominent colouring and a graphic representation of a man wearing recognisable clothing and holding a spoon. The verbal composition of the two marks was also different, as were their broader design identities and phonetic impressions.
When these elements were assessed together, the Court found that the marks created sufficiently different overall impressions.
The presence of the shared name alone was therefore insufficient to establish prohibited similarity.
Can Personal and Family Names Be Registered as Trademarks?
Personal and family names can, in appropriate circumstances, function as trademarks.
Many successful businesses are built around the names of their founders, families or historical figures. A name may become strongly associated with a particular commercial source through registration, use and reputation.
Registration does not, however, always grant absolute exclusivity over the name itself.
The strength of protection will depend on factors including:
- how common or distinctive the name is;
- the goods or services for which it is registered;
- the manner in which the name appears within the mark;
- whether the mark contains additional distinctive elements;
- the reputation acquired through commercial use; and
- whether the later mark creates genuine consumer confusion.
An unusual name that has acquired significant market recognition may receive relatively broad protection.
A widely used personal or family name may receive narrower protection, particularly where later applicants combine it with clearly distinguishable branding.
Trademark law must balance the legitimate interests of the earlier owner against the need to prevent ordinary names and commonly used language from being removed entirely from commercial use.
Registration Priority Is Important, but Not Absolute
An earlier trademark registration provides important legal rights.
It may allow its owner to oppose or challenge a later application where the later mark is identical or sufficiently similar and covers related goods or services.
Earlier registration does not mean that every subsequent mark containing a shared word must automatically be rejected.
The earlier owner must still establish the relevant legal grounds for opposition. This commonly requires demonstrating that the later mark creates a likelihood of confusion, association or harm to the earlier trademark owner’s interests.
Where the shared component is weak, descriptive or commonly used, greater attention may be given to the remaining elements of the marks.
A business cannot necessarily prevent all use of an ordinary name by registering one particular presentation of it.
The registration protects the distinctive sign as legally defined, not every possible variation of each word it contains.
The Average Consumer Test
Trademark similarity is generally assessed from the perspective of the average consumer of the relevant goods or services.
That consumer is not expected to conduct a detailed side-by-side legal analysis of the marks.
Instead, the court considers the general impression likely to remain in the consumer’s memory after encountering them in ordinary commercial circumstances.
Several factors may influence that assessment:
- the level of attention normally exercised when purchasing the relevant goods or services;
- the visual and phonetic characteristics of the marks;
- the distinctiveness of their shared elements;
- the similarity between the goods or services;
- the channels through which the businesses operate; and
- the commercial context in which the marks are encountered.
Consumers purchasing expensive or highly specialised products may exercise greater care than those purchasing inexpensive everyday goods.
Restaurant and food-service brands may be encountered through shopfronts, menus, delivery applications, packaging and advertising. Their logos, colours and complete presentation may therefore play an important role in distinguishing one business from another.
Visual, Phonetic and Conceptual Similarity
Trademark disputes frequently require analysis across three broad dimensions.
Visual similarity
This concerns how the marks look.
Courts may consider their colours, font, structure, logos, layout, images and overall design. Even where two marks share a word, significant visual differences may reduce the likelihood of confusion.
Phonetic similarity
This concerns how the marks sound when spoken.
The number of words, their order, pronunciation and dominant sounds may all be relevant. A shared surname may form only one part of a longer and clearly distinguishable verbal expression.
Conceptual similarity
This concerns the ideas or meanings communicated by the marks.
Two marks may create different conceptual impressions because of their surrounding words, imagery or brand identities, even where they contain one common element.
No single category is necessarily decisive in every case. The court must evaluate the combined effect of the relevant similarities and differences.
Why Common Words Receive Narrower Protection
Trademark protection is generally strongest where a mark is inherently distinctive.
Invented words, unusual expressions and highly original designs are more capable of identifying a single commercial source. Their owners may therefore have stronger grounds to object to similar later marks.
Common words, names and descriptive expressions occupy a different position.
Granting one trader exclusive control over an ordinary personal name or widely used term could unfairly prevent others from describing themselves or developing legitimate brands.
This does not mean that common names are incapable of protection.
A particular presentation of the name may be distinctive. The name may also acquire strong commercial recognition through extensive use.
The scope of protection must nevertheless remain proportionate to the distinctiveness of the mark.
Where the common word is only one component of a composite trademark, the comparison should normally focus on the complete identity of the mark rather than treating that word as independently owned.
Composite Trademarks Require Careful Analysis
A composite trademark combines multiple verbal and visual elements.
The legal protection afforded to such a mark may arise from the particular combination of those elements rather than from any single component.
For example, the distinctiveness of a restaurant trademark may result from the combined use of:
- a personal name;
- a descriptive reference to the food offered;
- a particular logo;
- a character illustration;
- a specific colour scheme; and
- a unique arrangement of those features.
Removing one element from that combination may distort the actual commercial identity protected by the registration.
This is why an opponent should not assume that sharing the most noticeable word will be enough to prevent registration.
The strength of an opposition may depend on demonstrating that the later applicant has reproduced the wider distinctive identity of the earlier mark rather than merely using a name also found within it.
Similarity Does Not Require Exact Reproduction
The Court’s approach should not be misunderstood as requiring trademarks to be identical before an objection can succeed.
Trademark infringement and opposition can arise even where differences exist.
A later mark may still be prohibited where its similarities are sufficiently strong to mislead consumers or create an impression of association with the earlier owner.
Minor cosmetic changes may not be enough where the later mark preserves the dominant identity of the earlier trademark.
The legal assessment remains one of overall impression.
The principle established by the judgment is not that shared names are legally irrelevant. It is that they must be evaluated alongside every other material feature of the competing marks.
What Businesses Should Consider Before Filing a Trademark
Businesses planning to use a personal or family name should conduct a comprehensive clearance exercise before filing.
That exercise should not be limited to searching for exact matches.
Relevant searches should consider:
- earlier marks containing the same or similar name;
- phonetic variations;
- Arabic and English transliterations;
- similar logos and visual arrangements;
- related goods and services;
- unregistered brands already operating in the market; and
- whether the proposed mark contains enough distinctive material to differentiate it.
Adding a generic word such as “restaurant”, “trading” or “sweets” may not always be sufficient to distinguish a mark from an earlier registration.
Businesses should focus on creating a complete brand identity that is independently recognisable.
This may include developing a distinctive logo, original verbal elements and a coherent visual presentation rather than relying principally on a common name.
What Trademark Owners Should Consider Before Opposing
An opposition should be based on more than the existence of one shared word.
Before commencing proceedings, the earlier owner should assess:
- the inherent distinctiveness of the shared element;
- whether it is common, descriptive or weak;
- the visual impression of the marks;
- their phonetic and conceptual similarity;
- the overlap between the relevant goods or services;
- the likely perception of the average consumer;
- evidence of acquired reputation; and
- whether actual confusion has occurred.
Where the earlier mark has developed a strong reputation, evidence of market recognition may materially strengthen the case.
However, an overly broad opposition based on a common name may be unsuccessful where the competing mark has a clearly different commercial identity.
The decision to oppose should therefore follow a realistic legal assessment rather than an assumption that registration creates ownership of every component of the mark.
The Importance of Evidence
Trademark cases are not determined only by comparing registration certificates.
Evidence may be required to demonstrate how the marks appear and function in the marketplace.
Relevant material may include:
- advertising campaigns;
- packaging;
- signage;
- social media use;
- customer reviews;
- sales information;
- market surveys;
- examples of actual confusion; and
- evidence of the earlier mark’s reputation.
Where an owner argues that a common name has acquired a strong association with its business, evidence of long-standing and extensive use may be particularly important.
Without such evidence, the court may be reluctant to grant broad exclusivity over an ordinary word or name.
Why the Judgment Matters
The Federal Supreme Court’s decision provides useful guidance for businesses, trademark practitioners and administrative authorities.
It reinforces that trademark law protects distinctive commercial identities without granting unjustified monopolies over ordinary language.
The judgment also confirms that similarity must be approached as a practical question of consumer perception.
The exercise is not confined to identifying matching letters or words. It requires consideration of how the competing marks are likely to be encountered and remembered in the marketplace.
For family businesses and founder-led brands, the decision is especially relevant.
A personal name can form the foundation of a valuable trademark. Its use by another business will not necessarily be prohibited where the later mark creates a sufficiently different overall impression.
Conclusion
A registered trademark is an important commercial asset, but its protection is not unlimited.
Where two marks share a common personal or family name, the legal question is not whether that name appears in both. It is whether the marks, viewed in their entirety, are sufficiently similar to confuse the average consumer or suggest a commercial connection.
The UAE Federal Supreme Court’s judgment confirms that visual identity, wording, sound, design and overall presentation must all be considered.
Businesses should therefore avoid assuming that registration of a common name gives them exclusive control over every later use of that name.
Strong trademark protection begins with building and registering a genuinely distinctive identity. Effective enforcement then depends on protecting that identity as a whole.
Al Kabban & Associates
For businesses seeking guidance, Al Kabban & Associates, with over 30 years of experience in UAE law and recognition by Legal 500, stands ready to help corporations build resilience against legal risks while ensuring compliance with local and international standards. For more information or to schedule a consultation, contact us at +971 4 453 9090 or visit www.alkabban.com. You can also follow us on social media for more updates on everything law related in the UAE: @Alkabban_Law
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