The Middle East region has long been a major trading hub. The Gulf ports, particularly those of the United Arab Emirates (UAE), are the major entry point for goods coming from Asia to the Mediterranean, Europe, Africa and beyond. The UAE, especially Dubai, is now actively promoting trade in the region, introducing various initiatives. These include the establishment of free-trade zones to encourage local and regional trade, and to attract international businesses. In this environment it is increasingly important that intellectual property (IP) rights holders know how to protect, exploit and enforce their valuable IP assets. This article is a brief introduction to practical IP enforcement in the UAE, focusing on methods that have proved successful in the enforcement of trade marks. It is hoped that, as the experience of the relevant authorities develops, these methods will prove to be just as effective in the enforcement of other IP rights.
UAE Federation
Formed in 1971, the UAE Federation consists of seven relatively autonomous Emirates (Abu Dhabi, Dubai, Sharjah, Ras Al Khaimah, Fujairah, Umm al Qaiwan and Ajman). While the IP laws are issued at federal level, and registered rights cover all Emirates, each Emirate has its own jurisdiction for enforcement. This often results in differences of interpretation and is an approach that can be perplexing for foreign rights holders.
The three main Emirates likely to be encountered by rights holders are:
- Abu Dhabi – the capital, with an economy based on its large oil and gas reserves.
- Dubai – the main commercial Emirate, with a more diverse economy, rapidly establishing itself as the regional centre for business, logistics, media, leisure, tourism and trade. The largest port, which is linked to the largest free zone, is in Dubai.
- Sharjah – the main manufacturing region in the UAE. It is the only Emirate with a port on both the Gulf and Indian Ocean coasts, facilitating the transport of goods.
UAE IP Laws
The UAE is a member of the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO), and a signatory to the main IP treaties and conventions (including the Paris Convention, Berne Convention, Patent Cooperation Treaty, Rome Convention and WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)).
The UAE has adopted federal laws governing the protection and enforcement of trade marks, copyright, industrial designs and patents. The Dubai International Financial Centre (DIFC), a free zone with its own courts and a separate legal system, is currently drafting its own IP laws (based broadly on the federal IP laws) that will be enforceable within the DIFC. The UAE is also a member of the Gulf Cooperation Council (along with Bahrain, Kuwait, Qatar, Oman and Saudi Arabia). This is a trade bloc, much like the European Economic Area (EEA), that has issued the following IP-related laws:
- Unified Customs Law – implemented by each member state.
- GCC Patent Law – provides for a central patent right covering all member states.
- GCC Trade Marks Law – provides for a unified law, but not a central trade mark right. (This law has been issued but not yet ratified by all member states.)
Given that IP laws have been introduced to the UAE relatively recently, there is little case law to help guide the courts and government officials when interpreting the law. This can create uncertainty, but it also creates opportunities. The UAE courts have shown an increasing awareness of the importance of IP and a willingness to embrace new concepts. For example, the Dubai Court of Appeal recently recognised the ability of both product and packaging shapes to qualify for trade mark protection.
IP Enforcement and Dispute Resolution
There are several enforcement methods available to rights holders in the UAE. The main methods and some of the practical differences compared to enforcement in the UK are summarised below.
Border measures
Border protection measures are another recent introduction to the UAE. Rights holders can record their rights with Dubai and Sharjah customs, but customs authorities in the remaining Emirates have yet to establish a recording system.
While customs officials are making efforts to improve their monitoring and detention procedures, rights holders can do much to help. They can, for example:
- give customs as much information as possible to help identify genuine and counterfeit goods (the sheer volume of trade through UAE ports means that simple indicators of genuine or counterfeit goods will be the most effective, eg a list of authorised distributors or licensees, where that is possible);
- proactively offer (and be ready to implement at short notice) regular training sessions, eg on how to spot counterfeits and any recent market trends; and
- take the time to build relationships with customs officials because, if the authorities know you are willing to help and committed to working with them in the long term, they will be more receptive to your requests for action.
Civil litigation
Civil litigation is increasingly used as a method of resolving IP disputes, particularly in cases involving more complex issues such as lookalikes and trade name/trade mark disputes. Three Emirates (Dubai, Ras Al Khaimah and Abu Dhabi) have their own court systems. The other Emirates refer cases to the federal courts. Because the UAE is a civil law country, litigation may look and feel quite different to rights holders from common law jurisdictions. Some tips to bear in mind include:
- Representation – only local advocates can appear before the UAE courts and, because few have substantial IP experience, they will often require significant guidance.
- Evidence – there is no formal discovery process, although orders requiring the other party to disclose certain evidence can be sought. Documentary evidence to support cases is generally given the greatest weight. However, translation and legalisation requirements for such evidence can be onerous, time-consuming and costly. Affidavit evidence is generally given less weight, as the courts may consider it to be evidence created by a party for the purpose of the case. For similar reasons, witnesses of fact are rarely called to testify.
- Experts – court-appointed experts are an important feature of the legal system and the courts rely on such experts to guide them. Identifying an expert with significant IP experience and an international perspective can be difficult in any jurisdiction, but is especially challenging in the UAE, where experts have had less time and opportunity to consider IP issues or the relevant technological issues.
- Cases involve several hearings over many months, during which time written memorandums will be exchanged by the parties. There will not be one block of time set aside for a trial as in common law countries.
- Damages and costs – it is unusual to recover a significant amount in legal costs. Damages are likely to be restricted to direct loss/damage you can evidence. Nevertheless, civil cases can be useful precedents for dealing with infringers on a broader scale as part of a longer term IP enforcement strategy.
- Alternative dispute resolution (ADR) is becoming increasingly popular in the UAE and may be suitable for some IP disputes in the region. The DIFC has established, in partnership with the London Court of International Arbitration (LCIA), an arbitration and mediation centre to hear disputes referred to it (irrespective of the parties’ locations or the nature of the dispute).
Police raid and criminal prosecution
Rights holders can file a complaint with the police (in Arabic) requesting them to investigate and act against IP infringers under the criminal provisions of the IP laws. The police will observe the activities of the trader and can raid the trader’s premises/warehouse. If there is sufficient evidence the case will be referred to a public prosecutor to consider a criminal prosecution.
Working with the police can be a cost-effective means of deterring infringers, as criminal IP offences are punishable by a fine, imprisonment and/or deportation. To encourage the police to conduct an effective investigation, rights holders will need to invest time in supporting the police and developing good working relationships. This may involve:
- conducting research and including sufficient information in the complaint to demonstrate that an offence has been committed and that it is sufficiently serious to warrant the involvement of the police;
- persuading the police that the rights do exist and that assistance should be provided (this can be challenging if the rights are unusual);
- sharing information with the police in advance of their investigation, but taking a supportive rather than a leadership role; and
- persuading the police that the rights holder should attend the investigation and raid with them to identify infringing goods, and help them conduct a thorough search of premises for infringing goods and supporting documents (it can be particularly difficult to obtain documents evidencing the extent of the infringer’s trade and distribution methods).
Administrative action
Local government departments in each Emirate have the power to take action against IP infringements, including conducting raids, destroying infringing goods and fining traders. Some local government departments will consider suspending trade licences for unco-operative or repeat offenders, or referring serious cases to the public prosecutor for a criminal prosecution.
While this is potentially one of the cheapest and most effective means of removing counterfeit goods from the market, you will need to build a good working relationship with enforcement officials. This is outlined by the following points.
- The responsible departments and their operating procedures can vary between Emirates or change over time. Be flexible and ready to work with the new department when changes occur.
- Invest time and effort (where budget allows) in assisting at government-run IP awareness events and training enforcement officials. This helps motivate enforcement officials, who are then able to work more effectively (and, occasionally, proactively) for you.
- Understandably, enforcement officials will be much more likely to take on board rights holder requests if they feel the rights holder is going to be a long-term partner in the enforcement activities.
- Some departments will allow the rights holder to file an ‘open complaint’ for a fixed period of time, allowing the authorities to proactively monitor the market. If you have given the officials product training, developed strong working relationships and are ready at short notice to attend proactive raids with them, this can result in regular market sweeps, sending a strong deterrent message to the market.
- Be mindful that not all raids will end in success. For instance, enforcement officials will not force entry into locked premises.
Free zones
Free zones, established to encourage regional and local trade and allowing 100% foreign-owned companies to set up in business, are responsible for a significant amount of trade and therefore deserve a special mention. In most free zones, businesses will be subject to both UAE federal law and any regulations of the free zone authority. Enforcement methods can therefore vary in different zones and identifying the appropriate (and willing) authority to assist can be difficult. Technically, however, the criminal IP provisions should be enforceable in free zones.
Practical Tips
The following will help you to enforce your rights:
- Public understanding of IP is basicStress the importance of IP and any IP provisions when dealing with commercial partners in the UAE. Similarly, to reduce the risk of repeat-infringers, consider settling with infringers (where appropriate) and explaining what they have done wrong. Where budget allows, you can also support the government’s IP awareness programmes.
- Look for other enforcement anglesIf the authorities are reluctant to enforce your rights, consider if there is some other legitimate basis on which they could act, eg a threat to public safety.
- Benefits of registering your rightsTrade marks, copyright, designs and patents are registrable in the UAE. A registration will help you educate business partners about your IP and persuade enforcement officials to take action when infringements occur, especially where your rights are unusual. Most non-judicial authorities will refuse to recognise or enforce non-registered rights.
- Be patient with enforcement activitiesInvest more time when enquiring into large-scale infringers to gain their confidence and obtain valuable information about their dealings. This will help you to identify their distribution channels and determine the best place and time to co-ordinate your raids, potentially in different territories at the same time.
- Be flexible with enforcement activitiesEven after patient planning, things may change. Rights holders and their agents therefore need to be cost-conscious and keep lines of communication open, preferably with the rights holders or their representatives, attending any raids.
- Religious holidays and weekendsDuring the two main Islamic religious holidays (Eid al-Fitr and Eid al-Adha) businesses tend to close for around three working days (and government offices may close for longer).
- In the summer the civil courts barely operate. Judicial staff are granted holidays and those remaining focus on urgent civil matters and criminal prosecutions.
- Be mindful when instructing local agents or contacting businesses that the working week in the UAE runs from Sunday to Thursday.
Summary
Effective IP enforcement in the UAE is increasingly important. IP owners should adopt a flexible strategy that makes full use of the various enforcement routes. Developing such a strategy may be a long-term project, requiring the registration of all relevant rights, including non-traditional rights, and investing time in building supportive relationships and visibility with authorities. Fortunately, the environment to enforce such rights is improving, making it easier for rights holders to adopt and implement strategies to support their IP.
By James Elliott, junior associate and Sara Holder, head of Middle East/North Africa practice, Rouse.
E-mail: jelliott@iprights.com; sholder@iprights.com.