Cassation "Parties to Appeal" . Judgment: "Appeal against it: Parties to Appeal ". Suit: " Parties to It."  Cassation. "Grounds of Appeal: Irrelevant Grounds."  Judgment: "Reasoning of: When Considered Not flawed ". Trademarks " Trade Name." Evidence: "proof proceedings: Effect of Proof and Waiver of ". "Binding force of proof verdict". Judgment: "Binding Force of ". Res Judicata. Court of First Instance "Its Power to Waive Proof Proceedings Already Taken". Trading business "Trade Name". Compensation: "Elements of: Fault, harm", "Compensation for Unfair Trade Competition". Cassation: "Grounds of or Reasons for: Irrelevant Grounds", "Power of Court of Cassation". Liability: "Fault Liability: Elements of", "An Instance of: Liability for Unfair Trade Competition". Court of First Instance: "Its power" for legal qualification of the act against which compensation is claimed."

 

Session: January 27, 2009

 

Appeal No. 116, 128, 130 2008 Civil Cassations

 

(1) Cassation "Parties to Appeal". Judgment: "Appeal against it: Parties to Appeal ". Suit: "Parties to Suit." 

Appellant's acceptance of judgment by not appealing it. Sending suit back to the Court of Appeal on cassation dismissing the appeal for cassation. Effect of. No appeal for cassation of this last judgment may lie. Article (155) Civil Procedures. Reason for.

(2) Cassation. "Grounds of Appeal: Irrelevant Grounds."  Judgment: "Reasoning of: When Considered Not flawed". Trademarks " Trade Name."

Appealed judgment's conclusion finding First Respondent having precedence in using the disputed trade name and having it registered, before the Appellant company, in the State of Qatar since 1991. Argument against judgment for not considering the issue of international protection of this name pursuant to Paris Convention for the Protection of Industrial Property- which was signed by the two states of Qatar and UAE in 1996 and 2001- is irrelevant.

 (3,4) Evidence: "proof proceedings: proof instruction: disregarding of". "Binding force of proof instruction". Judgment: "Binding Force of ". Res Judicata. Court of First Instance "Its power to disregard proof instructions made by it".

(3) Proof instructions made by the court are not conclusive nor having res judicata effect. Effect of. Court may disregard such instructions before their execution, and if executed, it may disregard their outcome. Article (215), Civil Procedures.

 

(4)  Court of First Instance. Not bound by the outcome of proof instructions executed. It may decide the subject matter of on other proofs.

 

(5-9) Trading business "Trade Name". Compensation: "Elements of: fault, harm", "Compensation for Unfair Trade Competition". Cassation: "Grounds of or Reasons for: Irrelevant Grounds", "Power of Court of Cassation". Liability: "Fault Liability: Elements of", "An Instance of: Liability for Unfair Trade Competition". Court of First Instance: "Its power" to legally qualify an act against which compensation claimed is based."

 

(5)         Unfair trade competition. Is a fault liability act rendering doer responsible to compensate for the resulting harm. Article (67) of Civil Law No. (16), 1971 applicable to the issue in dispute. Exceeding the lawful limits of competition. Reason for. Intention to make confusion between two commercial establishments or cause distraction from one of them for the purpose of attracting the customers of one to the other or distracting them away from it.

 

(6)         Appealed judgment decree to compensate First Respondent based on the fact of their precedence in using the disputed trade name so that Appellant's user of the same name resulting in confusing the public as to Appellant's establishment and that of First Respondent is detrimental to the latter as to call for compensation. Argument against such compensation for being based on the registration of Appellant's name in the commercial register is inadmissible.  

 

(7)         Concerned parties may resort directly to the civil court to claim for invalidation of a trade mark or name registered without a right to do so. Article (26) of Law No. (9), 2002 on Trade Marks, Information and Names.

 

(8)         Legal qualification of the act for which compensation is decreed as a wrongful act or not, is subject to scrutiny by the Court of Cassation.

 

(9)         Accountability for compensation. Reason for. Responsible person's wrongful act. Appealed judgment diverging from this view, and considering registration by Appellant – Minister of economy and trade, in his capacity – of Second Respondent's trade name in the commercial register a wrongful act calling for compensation. Misapplication of law. Reason for.

 

1-    Whereas Article (155) of Civil Procedures provides for invalidity of appealing by the party who accepts the judgment, and as is established in the papers that Appeal No. 935/2005 filed by Appellant company was dismissed by judgment passed on 25/6/2007 without being appealed by Appellant, and that judgment was referred back to the Court of Appeal after the judgment by the Court of Cassation passed on 15/1/2008 dismissing Appellant's appeal, and as the Court of Appeal did not decree against Appellant in the second judgment for more than it did in the first judgment which he accepted without appealing it, therefore, this appeal filed by him is invalid, and hence, inadmissible.

 

2-    As is established in the appealed judgment that First Respondent used the name (-) for its establishment and registered it in the commercial register in the State of Qatar on 27/8/1991, and that Appellant's defence stated in the grounds of argument that this name was used by the UAE company (-) which was Appellant partner in UAE since 1985, and which had the right, pursuant to  Paris Convention for the Protection of Industrial Property, to use the name inside the State of Qatar, and as the issue of international protection arising around this name, would have no significance in Qatar before UAE and the State of Qatar accession to this convention, and as is established in the papers that the UAE did not sign the convention before 1996, and that the appealed judgment proved, as accepted by Appellant, that First Respondent used this name in the State of Qatar in 1991, thereby, having precedence over Appellant; and as the appealed judgment having reached this conclusion, so it is not to be faulty merely because it did not consider the issue of the international protection included in the grounds of this argument, and that argument against the reasons for the judgment in this respect, whatever they may be opined to be, is irrelevant and hence inadmissible.

 

3-    The provision of Article (215) of Civil Procedures Law No.(13), 1990 as amended by the two Laws No. (7), 1995 and No. (13), 2005 that: " The court may disregard its instructions as to proof, provided that is must state its reasons in the record, and may disregard the outcome of such instructions, provided that it must state the reasons for so doing in the judgment.", means that the decisions regarding proof instructions are not conclusive and do not have the effect of res judicata; so that the court may disregard them after issuance and before execution, and if executed, it shall not be bound by the outcome brought by them.

 

4-    Decided – in the judgment of this court – that the Court of First Instance is not bound by the outcome of instructions as to proof made and executed by it, and that it may determine the issue on other evidence.

 

5-    Decided – that unfair trade competition is wrongful act rendering its doer liable for compensation according to Article (67) of Civil Code No. (16), 1971 applicable to the point in dispute; it is considered an excess of lawful competition to commit acts contrary to the law or custom or use means violating to the principles of honour and honesty in transactions if intended to confuse between two commercial establishments or to create trouble in one of them so as to make the customers of one avoid the other or push its customers away from it.

 

6-    As it is clear from the reasons of the appealed judgment that its decree against Appellant to pay compensation was not based on Second Respondent's fault of entering in the commercial register of the trade name used by the First Respondent establishment, but because of the latter having precedence over Appellant in using that name and that Appellant's later user of it was to cause confusion and distraction to the public between his establishment and that of  First Respondent such as to mislead them and result in tangible and intangible harm to the latter for which he must be compensated. Therefore, the argument that the appealed judgment decreed Appellant to compensate First Respondent, based on the registration of its trade name in the commercial register is not true, hence, inadmissible.

 

7-    Provision in Article (26) of Law No. (7), 2002 that: "…the Bureau or any one concerned may petition the civil court for invalidating the registration of any trade mark registered without a right to do so…" means that the lawmaker made it permissible for any one concerned to resort directly to the civil court to claim invalidation of the trade mark or name registered without a right to so.

 

8-    Decided – in the judgment of this court – that qualification of the act for which compensation is decreed as a wrongful act or not in the first instance judgment, is subject to scrutiny by the court of cassation.

 

9-    Since accountability for compensation is based on the wrongful act of the person responsible, and that appealed judgment reasoning that Appellant registration of the trade name of Second Respondent was a wrongful act calling for compensation – does not satisfy this element of responsibility on Appellant's part, for, the government is not required by law to search for whether this name or that was registered for another person so as to refrain from registering it again, and such view is confirmed by the provision of Article (26) of Law No. (9), 2002 on Trade Marks & Names, which permitted the government and any one concerned to petition the civil court to decree the registration of any trade mark or name so registered without legal right to be invalid; and as appealed judgment diverted from this view, it becomes faulty.

Court:

After reviewing the papers and hearing the report, read by the reporting judge, and the pleading, and after deliberation.

Whereas the appeal has satisfied its formal conditions;

The facts, as stated in the appealed judgment and all the papers, are that  (-) instituted Suit No. 671/2004 Full Civil Circuit against (-) Company – Qatar and the Minister of Economy and Trade praying for enjoining the first to cease and desist using the trade name of his establishment and ordering the second to strike off the name adopted by it as a business title and order both to jointly pay to him the sum of two million Riyals in compensation. Explaining this, saying he is the owner of (-) establishment which has been using this name since 27/8/ 1991 as stated in Commercial Register No. (-) issued by the Ministry of Economy and Trade, but he was taken unawares to discover that first Defendant uses the same trade name for his establishment in the State of Qatar as stated in Commercial Register No. (-) issued on 11/1/2003, which caused damage to him; so he filed the suit. UAE company (-) joined suit siding with first Defendant for its dismissal. The court, after accepting joinder of the UAE company, passed an injunction decree enjoining first Defendant to cease and desist from using the trade name (-) on the frontage of its company and ordering second Defendant to strike off of the registers, and dismissed the other claims. First Defendant filed Appeal No. 903/2005, Plaintiff also filed Appeal No. 920/2005 and the UAE company joined to suit, as well, filed Appeal No. 953/ 2005. The court, after joining the three appeals, referred the case for investigation and after hearing the witnesses passed judgment cancelling the appealed judgment and dismissing the suit. Plaintiff appealed this judgment for cassation by Appeal No. 93/2007 and on 15/1/2008 cassation was allowed and after expediting the appeal the court on 25/6/2008 passed judgment on Appeal No. 920/2005 ordering first and second Defendants to pay to Plaintiff the sum of one hundred thousand Riyals and confirming the appealed judgment otherwise, and dismissed the two Appeals No. 935 and 903/ 2007. first Defendant appealed against this judgment by way of cassation filing Appeal No. 116/2008, the UAE company joined to suit also filed Appeal No. 128/2008 as well as second Defendant by Appeal No. 130/2008. The three appeals for cassation were put before this court in the consultation room, which it decided to join them and fixed a date for hearing.

Whereas Article (155) of Civil Procedures provides for invalidity of appealing by the party who accepts the judgment, and as is established in the papers that Appeal No. 935/2005 filed by Appellant company was dismissed by judgment passed on 25/6/2007 without being appealed by Appellant, and that judgment was referred back to the Court of Appeal after the judgment by the Court of Cassation passed on 15/1/2008 dismissing Appellant's appeal, and as the Court of Appeal did not decree against Appellant in the second judgment for more than it did in the first judgment which he accepted without appealing it, therefore, this appeal filed by him is invalid, and hence, inadmissible.

Whereas the two Appeals Nos. 128 and 130/ 2008 have satisfied their formal conditions;

Second: Appeal No. 116/ 2008:

Whereas this appeal is based on three grounds, Appellant first arguing against the appealed judgment for unsound reasoning and contrary to the findings on the papers, explaining this by saying that it presented to the Court of Appeal on 5/2/2007 a certificate issued in UAE to the effect that the UAE company, the Appellant's partner, was using this name since 1985, and pursuant to the Paris Convention for the Protection of Industrial Property which was acceded to by the UAE in 1996 followed by the State of Qatar by Emiri Decree No. (31), 2001, so that this name acquired international protection allowing Appellant to use it in the State of Qatar, however, the appealed judgment relying on first Respondent's registration of this name in the Commercial Register in 1991, considered as having precedence and decided that Appellant failed to adduce evidence that it used the name in the UAE before first Respondent although such evidence was included in the papers, something which censures the judgment and calls for cassation.

Whereas this argument is not correct, for, it is established from the appealed judgment that first Respondent used the name (-) for its establishment and registered it in the commercial register in Qatar on 27/8/ 1991 and the Appellant's defense stated in their grounds of argument was that this name was used by the UAE company which was its partner in the UAE since 1985 and that pursuant to the Paris Convention for the Protection of Industrial Property it has the right to use it in the State of Qatar, and as the issue of international protection arising around this name, would have no significance in Qatar before UAE and the State of Qatar accession to this convention, and as is established in the papers that the UAE did not sign the convention before 1996, and that the appealed judgment proved, as accepted by Appellant, that First Respondent used this name in the State of Qatar in 1991, thereby, having precedence over Appellant; and as the appealed judgment having reached this conclusion, so it is not to be faulty merely because it did not consider the issue of the international protection included in the grounds of this argument, and that argument against the reasons for the judgment in this respect, whatever they may be opined to be, is irrelevant and hence inadmissible.

And whereas Appellant's second part of argument against the appealed judgment is for contradiction and unsound reasoning, being explained in that the appeal judgment after cassation referred the suit for investigation to enable first Respondent to prove that he has precedence over Appellant in using the name (-) for its establishment, and then passed judgment cancelling the appealed judgment and dismissing the suit for failure of the witnesses to prove that, therefore, the appealed judgment should have abided by that judgment and dismiss first Respondent's case, and since appealed judgment deviated form this view, it is therefore flawed and calling for cassation.

Whereas this argument is not admissible, for, the provision of Article (215) of Civil Procedures Law No.(13), 1990 as amended by the two Laws No. (7), 1995 and         No. (13), 2005 that: " The court may disregard its instructions as to proof, provided that it must state its reasons in the record, and may disregard the outcome of such instructions, provided that it must state the reasons for so doing in the judgment.", means that the decisions regarding proof instructions are not conclusive and do not have the effect of res judicata; so that the court may disregard them after issuance and before execution, and if executed, it shall not be bound by the outcome brought by them. As such is the law, and that the Court of First Instance is not bound by the outcome of instructions as to proof made and executed by it, and that it may determine the issue on other evidence, and as the appealed judgment, having substantive power, disregarded the witnesses testimony for not being satisfactory and decided the point under proof based on the certificate issued from the Commercial Register presented by first Respondent to prove that it has precedence over Appellant in using the name (-) for its establishment since 1991 before Appellant, and since this finding by the appealed judgment was based on tolerable inference from evidence in the papers, so argument to the contrary is baseless.

And whereas Appellant's second grounds of argument against the appealed judgment for misapplication of law, explaining this by saying that its user of the trade name the subject of dispute was an extension of its user of it in the UAE and it presented the supporting documents to the Industrial Property Protection Bureau which approved the registration of this name in the name of Appellant and its entitlement to use it in Qatar, something which negates the element of fault on its part, and that the Bureau represented by second Respondent is alone to blame for such fault and responsibility for compensating first Respondent. However, the appealed judgment decided against it to be jointly liable with second Respondent for such compensation when second Respondent is alone to blame since it’s the body responsible for licensing Appellant to use a name already licensed to another by the concerned department subordinate to it, so that appealed judgment is faulty and requiring cassation.

Whereas this argument is not in place, for, unfair trade competition is wrongful act rendering its doer liable for compensation according to Article (67) of Civil Code No. (16), 1971 applicable to the point in dispute; it is considered an excess of lawful competition to commit acts contrary to the law or custom or use means violating to the principles of honour and honesty in transactions if intended to confuse between two commercial establishments or to create trouble in one of them so as to make the customers of one avoid the other or push its customers away from it.

That being so, and as it is clear from the reasons of the appealed judgment that its decree against Appellant to pay compensation was not based on Second Respondent's fault of entering in the commercial register of the trade name used by the First Respondent establishment, but because of the latter having precedence over Appellant in using that name and that Appellant's later user of it was to cause confusion and distraction to the public between his establishment and that of  First Respondent such as to mislead them and result in tangible and intangible harm to the latter for which he must be compensated. Therefore, the argument that the appealed judgment decreed Appellant to compensate First Respondent, based on the registration of its trade name in the commercial register is not true, hence, inadmissible.

And whereas Appellant's third grounds of argument against the appealed judgment for breach of the right of defense, explained by saying that it maintained its defense before the Court of Appeal on inadmissibility of suit for not being instituted in the proper manner prescribed by Law No. (9), 2002 on Trade Marks, Information and Names, which makes imperative to resort to the Industrial Property Protection Bureau and regulated the procedures for objection against the decisions made by the Bureau in this regard by resorting to the courts against the decision issued by it, however, the appealed judgment did not consider this defense when it is crucial, which makes the judgment faulty and require cassation.

Whereas this argument is not in place, for, the provision in Article (26) of Law No. (9), 2002 that: "…the Bureau or any one concerned may petition the civil court for invalidating the registration of any trade mark registered without a right to do so…" means that the lawmaker made it permissible for any one concerned to resort directly to the civil court to claim invalidation of the trade mark or name registered without a right to so.

That being so, and as the factual situation of suit and claims by first Respondent included striking off from the commercial register of the name used by Appellant who actually registered it without a right to do so because Respondent had precedence over them in using it; if his claim went along these lines, it would be admissible, and if the appealed judgment abided by this view and determined its subject, it would not be flawed for not considering the defense stated in the grounds of argument which is not founded on any proper legal basis, making this argument baseless.

Third: Appeal No. 130/ 2008:

Whereas, Appellant argues against the appealed judgment for misapplication of law and explaining it by saying that the appealed judgment considered mere registration of the trade name of Respondent company in the commercial register a wrongful act entailing government liability and ordered it to pay for compensation, while the government behaved in this regard pursuant to Law No. (9), 2002 which negates the element of fault and makes this judgment faulty and needs cassation.

Whereas this argument is correct, for, it's established in the judgment of this court that legal qualification of the act for which compensation is decreed as a wrongful act or not, is subject to scrutiny by the Court of Cassation. That being so, and since the accountability for compensation is based on the wrongful act of the person responsible, and that the appealed judgment reasoning that Appellant registration of the trade name of Second Respondent was a wrongful act calling for compensation – does not satisfy this element of responsibility on Appellant's part, for, the government is not required by law to search for whether this name or that was registered for another person so as to abstain from registering it again, and such view is confirmed by the provision of Article (26) of Law No. (9), 2002 on Trade Marks & Names, which permitted the government and any one concerned to petition the civil court to decree the registration of any trade mark or name so registered without legal right to be invalid; and as appealed judgment diverted from this view, it becomes faulty so that cassation is partially allowed regarding this part of judgment without need to consider the rest of grounds of the appeal.

And where the subject matter is ready for determination, and for the above….