UAE: Intellectual Property

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This country-specific Q&A provides an overview to intellectual property law in United Arab Emirates (UAE).

It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.

This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/

  1. What different types of intellectual property rights exist in this jurisdiction to protect?

    Inventions: Patents and utility certificates (where the invention lacks a sufficient degree of innovative activity). However, utility certificates do not grant exclusive rights. The UAE is a member of the PCT system, and so the UAE can be designated in PCT filings. Patent protection can also be obtained through GCC Patents.

    Brands: Trademarks

    Other creations: Copyrights, neighbouring rights granted to performers, producers of phonograms and broadcasting organizations, industrial design rights, plant varieties and plant breeders rights.

  2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

    Patents: 20 years from the date of filing, with no possibility of renewal.

    Utility certificates: 10 years from the date of filing, with no possibility of renewal.

    Trademarks: 10 years from the date of filing, and may be renewed indefinitely for additional periods of 10 years.

    Copyright and Neighbouring rights:

    • Economic rights of authors: author's lifetime and 50 years from the first day of the calendar year following his/her death.
    • Economic rights of joint authors: authors' lifetime and 50 years from the first day of the calendar year following the death of the last surviving author.
    • Economic rights of authors of collective works: 50 years from the first day of the next calendar year of the first publication if the author is a legal person (for natural persons see above).
    • Economic rights of authors of applied arts: 25 years from the first day of the calendar year immediately following the year of first publication of the work.
    • Economic rights granted to performers: 50 years from the beginning of the calendar year following the year during which the performance was accomplished. If the performance was fixed in a phonogram, the period of 50 years is calculated from the end of the year in which the fixation was made.
    • Economic rights of the producers of phonograms: 50 calendar years from the beginning of the calendar year following the year during which the publication of the phonogram was done or the year during which the phonogram was fixed if it was not published.
    • Economic rights of the broadcasting organizations: 20 years calculated from the beginning of the calendar year following the year during which the first transmission of these programs was made.

    Industrial design rights: 10 years from the date of filing, with no possibility of renewal.

    New plant varieties: 20 years for crops and 25 years for vines and trees, calculated from the date of the decision granting those rights.

  3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

    Generally, the creator is the first owner of each of the relevant IP rights, with copyright being a particular exception to this.

    The default position is that employers and commissioners are the first owner of patents, designs and utility certificates (unless otherwise agreed). UAE law allows for additional compensation to be paid to the inventor(s)/creators(s) if the economic value of the patent/design/utility model is greater than expected.

    Copyrights vests in the author of the work until, or unless, the copyright is assigned in writing. This is also the case for employee created rights, or commissioned works. Ownership of copyrights in collective works vests in the director of the creation of the work. Moral rights rest with the author of the works and cannot be waived. It is possible for an author to agree not to exercise moral rights.

    Neighbouring rights may be owned by performers in their performances, producers of sound recordings in their first recording of such sounds/performances, and broadcasting organizations in their broadcasts of programs and recordings.

    The owner of a trade mark is the person who obtains the registration of the mark in the UAE, though in certain circumstances this can be challenged through prior use or international rights.

    Plant variety and plant breeder rights belong to the person who bred, discovered or developed the new plant variety.

  4. Which of the intellectual property rights described in questions 1-3 are registered?

    Patents, trade marks, utility certificates, designs are all rights which can be registered with the relevant IP Departments within the UAE Ministry of Economy. Copyright and neighbouring rights can be recorded with the Copyright department in the UAE. A Gulf Co-operation Council (GCC) patent, a unitary right issued by the GCC Patent Office in Riyadh, also covers the UAE (as well as the remaining GCC Member States, Bahrain, Kuwait, Oman, Qatar and Saudi Arabia).

    A Federal law has been passed allowing for the registration of plant varieties and plant breeders rights with the Ministry of Climate Change and Environment. However, the Implementing Regulations have not been issued, so in practice, it is not yet possible to obtain registrations.

  5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

    Right

    Who

    Process

    Trade Marks

    UAE or foreign nationals or UAE or foreign companies, who carry on business, and public legal persons. However trade marks can be refused where it is owned by "natural or legal persons with whom it is forbidden to deal".

    PoA required at time of filing. Application will be examined for inherent and relative grounds within 6 months of filing. If accepted, it will be published for opposition purposes in 2 newspapers and the official gazette; if no oppositions are filed the trade mark will be registered.

    Patents (UAE national filing)

    The inventor or his successor in title

    Supporting documents can be filed within 90 days of the application being filed. The application will be examined, usually within 3 years of filing. If no objections are raised, it will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted patent.

    Patents (GCC patent filing)

    The inventor or his successor in title

    Supporting documents can be filed within 90 days of the application being filed. The application will be examined, usually within 18-24 months of filing. If no objections are raised, it will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted patent.

    Utility certificates
    Designs

    The inventor or his successor in title

    Supporting documents can be filed within 90 days of the application being lodged. The application will not undergo a substantive examination, but it will still take around 5 years from filing. It will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted utility model.

    Copyright & neighbouring rights

    The author or his successor in title

    The recordal of copyright is relatively straightforward taking up to a month to complete. The difficulties usually relate to the ability to put in place the required supporting documents for the recordal.

  6. How long does the registration procedure usually take?

    Right

    Timescale from filing to registration

    TMs

    9-12 months

    Patents (UAE national filing)

    5 years

    Patents (GCC patent filing)

    3-5 years

    Utility Certificates

    3-5 years

    Designs

    3-5 years

    Copyright recordal

    Less than 2 months

  7. Do third parties have the right to take part in or comment on the registration process?

    Right

    Challenge to registration process?

    TMs

    Yes within 30 days of the publication, through a formal opposition process before the Trade Marks Department; open to "an interested party" only.

    Patents (UAE national filing)
    Utility Certificates
    Designs

    Yes, within 60 days of the publication, through a formal opposition process before the Grievance Committee of the Patent Dept.; open to "an interested party" only.

    Patent (GCC patent filing)

    Yes, within 3 months of the publication, through a formal opposition process before the Grievance Committee of the GCC Patent office; open to "a concerned party" only.

    Copyright

    There are no provisions for challenging the recordal application process. A recorded copyright work can be amended or cancelled in the Ministry's records with a final judgement from a Court.

  8. What (if any) steps can the applicant take if registration is refused?

    Right

    Appeal to refusal

    TMs

    An appeal can be filed with the Trade Marks Committee within 30 days for official fees of AED10,000 (approx. USD 2,725). There are subsequent appeals available to the Court of First Instance and beyond after the Trade Marks Committee.

    Patents (UAE national filing)
    Utility Certificates
    Designs

    An appeal can be filed within 60 days of the decision to the Grievance Committee of the Department. There are subsequent appeals available to the Court of First Instance and beyond after the Grievance Committee.

    Patent (GCC patent filing)

    An appeal can be filed with the Grievance Committee within 3 months of the date of the decision for official fees of USD 270. There are subsequent appeals available to the Courts in Saudi Arabia after the Grievance Committee.

    Copyright

    There is no formal appeal system, but often it is possible to discuss the matter with the copyright officials who will provide pointers as to what steps could possibly be taken to record the copyright works in the UAE through a new application.

  9. What are the current application and renewal fees for each of these intellectual property rights?

    Right

    Application & registration costs (official fee only)

    Renewal costs (official fee only)

    TMs

    AED 12,009 (approx. USD 3,275)

    AED 12,003 (approx. USD 3,274)

    Patents (UAE national filing)

    AED 2,813 (approx. USD 766) – application & publication fees

    AED 7,003 (approx. USD 1,911) – examination fees

    Annuity fees start at AED 803 (USD 219) for 2nd year and incrementally increase to AED 1,523 (USD 415) by the 20th year

    Patent (GCC patent filing)

    USD 2,470 – application, publication & grant fees

    Examination fees are decided on a case by case basis by the examiner

    Annuity fees start at USD 1,070 for 2nd year and incrementally increase to USD 2,026 by the 20th year

    Utility Certificates
    Designs

    AED 2,813 (approx. USD 766) – application & publication

    AED 7,003 (approx. USD 1,911) – examination fees

    Annuity fees start at AED 803 (USD 219) for 2nd year and incrementally increase to AED 1,127 (USD 307) by the 10th year

    Copyright recordal

    AED 314 (approx. USD 85)

    N/A

  10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

    Right

    Are late renewals possible?

    TMs

    Yes, within the 3 month grace period from the original renewal date, with payment of late renewal fees (AED 2,000, approx. USD 545). Once that period expires, it is no longer possible to renew the registration. However, under local law a third party cannot register the same mark for the same or similar goods/services until a period of 3 years from the original renewal date has passed.

    Patents (UAE national filing)
    Utility Certificates
    Designs

    Yes. The late annuity charge is AED 410 (approx. USD 111) and must be paid within a 3 month grace period, where the annuity payments have not been paid by the annuity deadline. If the annuities and late fees are not paid within the grace period, the patent/design/utility model will be cancelled.

    Patent (GCC patent filing)

    Yes. The late annuity charge is USD 270 and must be paid within a 3 month grace period, where the annuity payments are not paid within the first 3 months of the beginning of the year. If the annuities and late fees are not paid within this six month period from the beginning of the year, the patent will be cancelled.

    Copyright

    N/A

  11. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    Rights

    Requirements for an assignment agreement to be valid

    Requirement to register an assignment with the Ministry of Economy

    Patents (national) and utility certificates
    Designs

    In writing and signed by both parties

    Notarised (and Legalised where notarised outside the country)

    Both registrations and applications may be assigned

    YES

    Patent (GCC patent filing)

    In writing and signed by both parties

    Notarised (and Legalised where notarised outside the country)

    Both registrations and applications may be assigned

    YES

    Trade marks

    In writing and signed by both parties

    Notarised (and Legalised where notarised outside the country)

    Both registrations and applications may be assigned, but assignments can only be recorded against registered marks.

    YES

    Copyrights & neighbouring rights

    In writing and signed by both parties

    Shall expressly specify the rights assigned, as well as

    the period of exploitation

    the purpose for which the rights are assigned and

    the territory of the assignment.

    The UAE Copyright law contains a provision that deems any disposal of the author's future intellectual rights in five or more future works to be null and void.

    Moral rights are personal and cannot be assigned. An author may only undertake in writing not to exercise his/her moral rights in relation to a specific person or entity, provided that the agreement specifies the work(s) and specific uses to which the undertaking applies. The more detailed these provisions are, the greater the likelihood that they will, if challenged, prove valid and enforceable in court.

    NO

    The assignment may be registered provided that the work, the copyrights of which are being assigned, has itself been registered with the Ministry of Economy.

  12. What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?

    Rights

    Requirements for a license agreement to be valid

    Requirement to register a license with the Ministry of Economy

    Consequences if no registration

    Patents (national) and utility certificates
    Designs

    In writing and signed by both parties

    Notarised (and Legalised where notarised outside the country)

    YES

    A license shall "not come into force" until it is registered and published in the industrial property journal.

    The licensee will not be entitled to enforce its licensed rights against third parties where the licence is not recorded.

    This could mean for the owner, that the patent may be vulnerable to compulsory licensing if the licensee's exploitation does not accrue to the patent holder, if the only exploitation is by the licensee.

    Patents (GCC)

    In writing and signed by both parties

    Notarised (and Legalised where notarised outside the country)

    YES

    The licence will not be effective until it has been recorded in the register.

    The licensee will not be entitled to enforce its licensed rights against third parties where the licence is not recorded.

    This could mean for the owner, that the patent may be vulnerable to compulsory licensing if the licensee's exploitation does not accrue to the patent holder, if the only exploitation is by the licensee.

    Trade marks

    In writing signed by both parties

    Notarised (and Legalised where notarised outside the country)

    licenses can only be recorded against registered marks

    The licence may not exceed the period of protection for the trade mark.

    YES

    The licence is not effective against others until it has been recorded in the register and published.

    This means for the owner, that the trademark may become vulnerable to cancellation if the only use is by the licensee.

    For the licensee, this means it will not be entitled to enforce its licensed rights in the trade mark against third parties.

    Copyrights and neighbouring rights

    Same principles as those applicable to copyright assignments (the Copyright Law deals with transfer of rights without differentiating copyright assignments and licenses).

    NO

    See copyright assignments

    N/A

  13. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

    The UAE IP Laws do not differentiate between exclusive and non-exclusive licensees in respect of the enforcement of the licensed rights.

    In this respect, the Patent and Design Law specifies that a licensee has the right to enforce its recorded licensed rights against a third party infringer provided that he has notified the patentee of such infringement by registered letter and the patentee does not initiate proceedings within 30 days from the notification date.

  14. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

    Yes there are criminal sanctions for infringement of intellectual property rights as follows:

    RIGHTS

    IMPRISONMENT

    FINES

    CLOSURE OF BUSINESS

    CONFISCATION AND DESTRUCTION OF THE INFRINGING GOODS AND TOOLS USED TO COMMIT THE INFRINGEMENT

    PUBLICATION OF THE JUDGMENT

    Patent (national & GCC) and Utility Certificates
    Designs

    not less than 3 months and not more than 2 years

    not less than AED 5,000 (USD 1,360) and no more than AED 100,000 (USD 27,250)

    The Law is silent

    YES

    YES

    Trade marks

    not exceeding 1 year

    not less than AED 5,000 (USD 1,360) and/or no more than AED 10,000 (USD 2,725)

    not less than 15 days and no more than 6 months;

    YES

    YES

    Copyrights & Neighbouring Rights

    not less than 2 months

    not less than AED 10,000 (USD 2,725), and not exceeding AED 500,000 (USD 136,240)

    not more than 6 months

    YES

    YES

    New Plant Varieties and Plant Breeders Rights

    not less than 2 months

    not less than AED 10,000 (USD 2,725) and not more than AED 250,000 (USD 68,120)

    The law is silent

    YES

    YES

  15. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

    The other enforcement options available are:

    Right

    Civil court

    IPO proceedings

    Administrative

    Trade Marks

    Yes, infringement and cancellation actions

    Yes, opposition and limited cancellation actions

    Yes, Economic Department complaints, Custom recordals and complaints

    Patents (UAE national filing)

    Yes, infringement and cancellation actions

    Yes, opposition actions

    Yes, Economic Department complaints, Custom complaints (but not custom recordals)

    Patents (GCC patent filing)

    Yes, infringement and cancellation actions

    Yes, opposition actions

    Yes, Economic Department complaints, Custom complaints (but not custom recordals)

    Utility certificates
    Designs

    Yes, infringement and cancellation actions

    Yes, opposition actions

    Yes, Economic Department complaints, Custom complaints (but not custom recordals)

    Copyright & neighbouring rights

    Yes, infringement and cancellation/amendment actions

    None

    Yes, Economic Department complaints, Custom complaints (but not custom recordals)

  16. What is the length and cost of such procedures?

    ADMINISTRATIVE ACTIONS
    Customs: Registered marks can be recorded with customs in 5 of the 7 Emirates (Abu Dhabi, Dubai, Sharjah, Ras al Khaimah and Ajman). Official recordal fees are AED220 (USD 60) per registration per emirate; official complaint fees are AED 2,020 (USD 550) per complaint per emirate.

    There are no provisions in the law for Customs or border control for patents (national and GCC), designs or utility certificates. Customs will take action if a Court Order is obtained by the rights holder.

    Department of Economic Development (DED): registered trade mark owners or licensees may file complaint with the Department of Economic Development to request that it inspects the infringer's premises and any other relevant warehouses within its jurisdiction. This would be to seize the infringing goods. The DED can order the cancellation of trade licences or the temporary closure of the business, in addition to the payment of a fine. It is necessary to file complaints with the relevant DED in each emirate, as these are separate jurisdictions for enforcement purposes.

    An administrative action with the DED may be used as a way to gather evidence of the infringement prior to a civil or criminal action.

    On average the DED action will take upto 2 weeks for the raid, but it could then take some months before a final decision and destruction (if ordered).

    Official complaint fees are AED 2,020 (USD 550) per complaint per emirate, with additional official fees of AED 2,500 (USD 680) per warehouse and AED 1,000 (USD 272) for the first three stores and AED 310 (USD 85) per each additional store to be raided.

    There are no provisions in the law for DED enforcement action to be taken for patents (national and GCC), designs or utility certificates. In some complaints the DED have considered design rights, where these exist alongside registered trade mark rights.

    Patent, design, trademark opposition with the Ministry of Economy

    • Duration: 1-2 years for a first level decision from the Ministry for trade marks; at least 2 years for a patent / design opposition
    • Official costs: AED 10,719 (USD 2,920) per trade mark application
    • Official costs: AED 200 (USD 55) for patent, designs and utility certificates

    Trade mark cancellation before IPO:

    • Duration: around 1 year for a first level decision from the Ministry
    • Official costs: AED 10,719 (USD 2,920) per registration

    CRIMINAL ACTION
    Patent, design, trade mark, copyright and/or neighbouring right infringement action

    • Duration: 9-12 months for a first level decision once matter is transferred from the public prosecutor
    • Minimum costs: from USD 20,000 (less expensive than a civil court action since the burden of proof is placed on prosecution)

    CIVIL COURT ACTION
    Patent, design, trade mark, cancellation action in court

    • Duration: Average 9-12 months for a first instance decision (assuming that no expert is appointed)
    • Minimum costs: from USD 30,000 (assuming that no expert is appointed)

    Patent, design, trade mark, copyright, neighbouring right, infringement action or violation of know-how

    • Duration: between 6 and 12 months for a first level decision (assuming that no expert is appointed)
    • Minimum costs: from USD 30,000 (assuming that no expert is appointed)

  17. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

    Civil court action
    The UAE has a Federal Court system, which consists of a Court of First Instance, Court of Appeal and Court of Cassation. However, a separate court system exists for the emirates of Dubai and Ras al Khaimeh. Would-be litigants would need to bring action in the Court which has jurisdiction as mentioned below.

    In addition to the "on-shore" judicial system, some of the Free Zones which operate within the UAE also have, or in some cases will shortly have, their own Court systems, such as the Dubai International Financial Centre, Abu Dhabi Global Markets and Dubai Multi Commodities Centre.

    The UAE courts having jurisdiction in infringement matters are:

    • The court of the domicile of the respondent, place of residence or work (absent his or her domicile in the UAE);
    • The court in the jurisdiction of which the damage occurred, or
    • The court in the jurisdiction of which the agreement was made or executed.
    • It is necessary to appoint a UAE advocate as these are the only lawyers with rights of audience in the UAE courts.
    • There is little to no oral advocacy in IP proceedings. Plaintiff files a writ with the court and shall pay court fees, the amount of which depends on the value of the claim. The writ must contain the following: identity of the parties, court in charge of the case, presentation of facts, purpose of the claim, list of documentary evidence.
    • Initially the case will be handled by the case management office, who will initially try to see if a settlement is possible. If a settlement is not possible, the Case Management Office (CMO) will set time frames in which the parties can file further written submissions and supporting materials. This can involve a number of exchanges of submissions.
    • Once the CMO will then decide when to transfer the matter to the appointed judge. The judge will then decide if further submissions are required, or whether to set the matter for a decision. This may not necessarily be a decision on the merits, but could be a decision by the judge to appoint an expert. The expert, chosen by the judge, may not have any experience in IP matters, but will be tasked by the judge to answer a series of questions put forward by the Judge. The expert will meet with the parties to help obtain information and documentation to answer the questions and prepare a report to the Court. The Expert's report is non-binding. Once the judge is satisfied that the parties have had sufficient opportunity to present their cases, the court sets a date for the final hearing and judgment. In practice, there is no hearing of oral arguments.
    • Time to judgment: see section 18 above, 6-12 months with no expert; up to 24 months if an expert is appointed
    • The Courts of First Instance decision may be appealed to the Court of Appeal. The appeal is a second trial on the merits. The Court of Appeal makes its own findings of fact and law and it usually takes 6-8 months. The appeal decision may be further appealed to the Court of Cassation. The Court of Cassation proceedings, usually last 6-12 months, but can take longer if the matter is remitted to the lower court for comments. The Court of Appeal decision will be enforceable even if an appeal is filed with cassation, unless the appellant obtains a suspension of the implementation of the ruling of the Appeal Court (which is at the discretion of the Court of Cassation). The Court of Cassation only decides issues of law. It can only cancel or refuse to cancel an appellate decision (it is not entitled to reverse the decision as a Court of Appeal would do) and remand to another lower Court of Appeal.
    • It is common for IP related court cases to be appealed to the Court of Appeal and a relatively high number are appealed to the Court of Cassation.

    Criminal court action

    • Criminal complaint filed with the Police (the Dubai Police has a specialized department in charge of IP infringement) or directly with the Public Prosecutor;
    • The Public Prosecutor transfers the matter to the Police for investigation or, if the complaint is filed directly with the Police, the Police submit the complaint to the Public Prosecutor for approval.
    • The Police carry out an investigation, including raids and interrogations, to gather evidence of the infringement, and submit its investigation report to the Public Prosecutor.
    • The Public Prosecutor may order the Police to provide additional material evidence and information related to the criminal acts. If the Public Prosecutor finds sufficient evidence of the criminal acts, it will refer the case to the criminal court which has jurisdiction for where the crime occurred.
    • The Public Prosecutor may order the dismissal of the complaint and closure of the investigations due to lack of evidence.
    • If the claimant wishes to monitor progress of the criminal proceedings, it can file a civil claim against the defendant that is joined with the criminal proceedings (at the Public Prosecutor stage or when the matter is referred to the criminal courts). This will also allow the claimant to be officially represented at the hearing. A civil claim will be required to obtain damages.
    • Time to judgment: see section 18 above
    • Right to appeal: see section 19.1 above (there are also three levels of court in the criminal courts)
  18. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?

    The Court relies on the parties to proceedings to put further the necessary information and supporting materials in their respective pleadings. As outlined in 19.1 above, where the judge believes it is necessary to do so, it is possible for a Court expert to be appointed. The Court expert is not always an expert in IP matters. The expert's report is not binding on the judge.

    a) Since 2015 the UAE has trained up a number of judges and other members of the judiciary in IP matters. This has involved IP specific qualifications and spending time training with overseas experts. Whilst there is no specialist IP Federal court, these judges are part of an IP Court Circuit in the Federal Courts. The emirate specific courts, such as Dubai, do not yet have similar IP Court Circuits. Rights holders are already seeing the benefit of this circuit with cases progressing more quickly and an increased awareness of and experience in dealing with complex IP issues.

    b) There have been a small number of cases where the Court of Urgent matters has provided orders relating to the preservation of evidence in IP matters. There is no discovery process. A party will submit into evidence the documents it wishes to rely on. Documents issued from overseas will need to be notarised and legalised in order to be given any evidential weight by the Court.

  19. How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

    Evidence submitted to the UAE courts shall be by way of written submissions supported by documentary evidence, translated into Arabic (if in another language). The UAE Courts do not expect to see, and actively deter, witness statements, affidavits and other such legal instruments. As a result, witnesses of facts do not give oral evidence, unless a party is granted the right to call a witness.

    The officials expect to see documentary evidence such as invoices, order forms, advertisements, registration certificates and such documents. Where the documents are issued outside of the UAE, such as foreign trade mark registration certificates, these will need to be legalised to the UAE Embassy in the country of issue.

  20. What customs procedures are available to stop the import and/or export of infringing goods?

    Custom recordal mechanisms for the recordal of registered trade marks are available in five of the seven emirates. Separate recordals must be filed in each emirate; there is no central recordal system.

    For other IP rights, Customs will consider stopping suspect shipments on request from the rights holder with supporting intelligence, particularly where accompanied by a court order. The customs recordal lasts for the term of registration of the trade mark, so must be renewed on renewal of the registration in question.

  21. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

    Administrative enforcement actions are available as outlined above.

    All disputes between employers and employees must first be referred to the Ministry of Labour for settlement.

  22. What options are available to settle intellectual property disputes in your jurisdiction?

    The parties can come to a mutual settlement. The parties could also consider using mediation, such as the Mediation Centre, or the Dubai Chamber's Mediation services, or arbitration services through the Abu Dhabi Global Market.

    Dubai's first dedicated business mediation centre launched on May 16, 2016.

  23. What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?

    Registered rights are vital to take action against infringements and counterfeits. Without registered rights, action through administrative or criminal actions are not possible, your only options will be a civil court case.

    Patents and utility certificates

    • Proof of granted rights in the UAE
    • Proof that the defendant has, for commercial purposes,
    • If the granted right covers a product: manufactured, used, retained, sold, or imported an infringing product without the permission of the right owner.
    • If the granted right covers an industrial process: used an infringing process and the product obtained directly therefrom, and/or retained, imported said product, without authorisation.
    • Criminal liability may only be incurred if the infringement was intentional.

    Trade marks

    • Proof of registered or unregistered trade mark rights in the UAE
    • Proof that the defendant has:
    • counterfeited or imitated a lawfully registered trade mark in a manner that would lead to the deception of the public, for the same or similar goods and services;
    • knowingly used a counterfeit or imitated trade mark;
    • affixed on a product a registered trade mark in bad faith or used without a right to do so;
    • knowingly sold, offered to sell, circulated or possessed (with intent to sell) goods bearing a counterfeited, imitated or wrongfully affixed trademark (this provision protects unregistered as well as registered rights): or
    • knowingly provided or offered to provide services under a counterfeited or imitated trademark or otherwise used a trademark without a right to do so (again this provides some protection for unregistered marks).

    The forgoing acts constitute criminal offenses under the articles 37 and 38 of the UAE Trade Mark Law. A defendant may not have committed any of these offenses (and may therefore not bear criminal liability) but may nevertheless have infringed claimant's trademark rights if it has:

    • used an identical or a similar mark for products or services that are identical with or similar to the products or services for which claimant's trade mark is registered, in such a way that confuses the consumers.

    However, in such a situation, the claimant will not have a right to seek compensation for the damage suffered as a result of the infringement to the extent that such right results from the commission of one of the criminal offenses as listed in articles 37 and 38.

    Copyrights and Neighbouring Rights

    • Proof of ownership of the copyrights in the relevant work (the relevant paper trail showing the ownership of the rights to the claimant is paramount).
    • Proof that defendant has, without a written permission from the author or the holder of the neighbouring right or their successors:
    • made any protected work, performance, phonogram, broadcasting program available to the public
    • sold, rented or put in circulation by any way whatsoever a protected work, phonogram, broadcasting program protected in accordance with the provisions of this law.
    • manufactured or imported without having a right, for the purpose of sale or rental of any equipment, instruments or apparatus designed or prepared for the purpose of fraud against any technology used by the author or the holder of the neighbouring right to arrange or administer such rights or for preservation of specific standard of quality of the copies.
    • delayed or disgraced, without having a right, any technological protection or electronic information meant to arrange and administer the protected rights
    • loaded or stored any copy of the programs, applications, or databases in the computer before having a license from the author, the right holder of their successor.
    • used a computer programs or its application without a prior permission from the author or his successors.

    The following acts constitute criminal offenses under the articles 37, 38 and 39 of the UAE Copyright Law. A defendant may not have committed any of these offenses (and may therefore not bear criminal liability) but may nevertheless have infringed claimant's copyrights in case of a violation of its moral rights.

    Designs

    • Proof of registered drawing/design rights in the UAE
    • Proof that the defendant has:
    • used the industrial drawing or design for the manufacturing of any product;
    • Imported or acquired any product relating to the industrial drawing or design with the intention of using or selling that product.
  24. What defences to infringement are available?

    Patents and utility certificates

    • Acts done for non-industrial/commercial purposes (this defence is only available in relation to patents infringement)
    • Activities related to academic research (this defence is only available in relation to patents infringement)
    • Good faith acts done by a person in the UAE prior to the filing date or priority date of a patent or utility certificate and that subsequently constitute an infringement

    Trademarks

    • There are no statutory defences to trademark infringement.

    A cancellation action against claimant's rights may be contemplated but it will be a separate action to the infringement claim.

    Copyrights and Neighbouring rights

    • Copy of a published work for personal and non-commercial use (with the exception of works of fine art or applied art in private places, architectural works, computer programs and database – apart from a backup copy)
    • Copy of a protected work for use in judicial and similar proceedings
    • Copy of a protected work at libraries or documentation centre for the preservation of original documents
    • Copy at libraries or archives for a person's studies or research
    • Quotation of an extract of a protected work for the purpose of criticism or information
    • Performance of a protected work in family gatherings of in educational institutes against no remuneration
    • Broadcasting of fine arts, applied and plastic arts, and architectural works located in public places
    • Copy of short excerpts for cultural, educational or religious needs, for no profit
    • Copy by the press of extracts of publicly available works
    • Copy by the press of protected works relating to issues preoccupying the public opinion
    • Copy of public lectures and speeches for the purpose of reporting news

    Designs

    • Good faith acts done by a person in the UAE prior to the filing date or priority date of an industrial drawing or design and that subsequently constitute an infringement

    New plant varieties

    • Scientific experiments
    • Activities done for the purpose of deriving new varieties and
    • The use by farmers in their own holdings for the purpose of the propagation of the harvest they gained through growing the plant variety for non-commercial use.
  25. Who can challenge each of the intellectual property rights described in questions 1-3?

    Right

    Who can challenge?

    Patents (national)
    Designs
    Utility certificates

    any person who has an interest

    Trade marks
    Copyright recordals

    any concerned person

    GCC Patents

    a concerned person

    It is therefore necessary for any party looking to challenge one of these rights, to ensure that they can prove that they are an "interested person" or a "concerned person" as without such proof, the challenge will fail.

  26. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

    UAE national patents, utility certificates and designs: can be opposed within 60 days of the publication date. An interested person can file post-grant cancellation actions with the UAE Courts at any time.

    GCC patents: can be opposed within 3 months of the publication date.

    Trade marks: can be opposed within 30 days of the publication date by any concerned persons. Non-use cancellations can be filed where a registered mark has not been used for an uninterrupted five year period. Cancellation actions on other grounds can be filed at any time, though where the registered mark has been used continuously for at least five years from the date of registration without challenge, no dispute may be raised against the ownership of the mark.

    UAE copyright recordals: once a final judgement has been obtained from a court.

  27. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

    UAE national patents, utility certificates and designs: oppositions are filed with the Grievance Committee within the Patent Department of the Ministry of Economy, a tribunal function. The decision can be appealed through the Courts where it is a litigation matter.

    For cancellation actions, these can be filed with the UAE courts by an interested person and can request full or partial cancellation. The cancellation can be filed on the basis that the patent / design / utility model was granted without satisfying the conditions stated for them in the law or its implementing regulations and/or that the right was granted without taking into account the priority of applications filed with a priority date earlier than the granted right.

    UAE trade marks: oppositions are filed with the Opposition division of the trade marks department, a tribunal function. Its decisions can be appealed to the Trade Marks Committee (again, a tribunal function), which can in turn be appealed on to the UAE Courts. Oppositions can be based on the provisions of the law which outline what may not be registered as a trade mark, as well as other provisions of the law.

    Invalidation actions can be filed through the court, or through the Trade Marks Department, depending on the type of invalidity action. As of May 2017, the Trade Marks Department will accept and consider invalidation actions where it is alleged the registration was filed without a right. This is a limited action aimed at dealing with hijacking of a trade mark by a business partner or similar. Other invalidation actions, such as non-use, or registrations which offend other provisions of the law, are to be filed with the Courts.

    GCC patent: the law is silent on invalidation actions, though Article 26 provides for authorities in the Member States to examine disputes relating to infringement or imminent infringement of a patent. It is generally considered that a request for cancellation action may be filed with the national courts appointed for handling GCC patent matters, the relevant country being where the infringement or imminent infringement is likely to occur. Invalidation claims can be raised through new court proceedings, or as a counter-claim for infringement, based on the patent offending the following provisions of the law regarding patent requirements:

    • It was filed by someone other than the inventor or the inventor's successor in title
    • It is not new
    • It does not involve an inventive step
    • It is not obvious to a person having ordinary skill in the art
    • It is not industrially applicable
    • It conflicts with Sharia law
    • It conflicts with public rules of conduct
    • It was publically disclosed
    • To safeguard public order and proper conduct, protection of human, animal and plantation life and health, or to avoid serious damage to the environment
    • It is not regarded as an invention (discoveries, scientific theories, mathematical methods, computer programs, schemes rules and methods for doing business, purely mental acts, playing games, varieties of plants, species of animals, biological processes to produce plants or animal, methods of surgical or therapeutic treatment, methods of diagnoses)

    UAE copyright: The court may, based on an application by a concerned person, order the cancellation of a copyright recordal in the register on the basis that the works did not meet with the requirements for protection as a copyright works in the UAE.

  28. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?

    UAE national patents, utility certificates and designs: where the patent has not exploited at all, or has not been sufficiently exploited, within three years from the date of grant, a compulsory licence may be granted. The applicant for the compulsory licence must show that over a reasonable period efforts have been made to obtain a licence for adequate compensation, under fair terms. Where the patent relates to semi-conductors, further limitations will apply. A compulsory licence may also be granted where the invention is important to the public interest.

    A compulsory licence may not be granted where the owner justifies his position with lawful reasons.

    Further defences available for patent infringement only, are where the right is being used for non-commercial or non-industrial purposes, or for scientific research purposes.

    UAE trade marks: The court may, based on an application by a concerned person, order the addition of any information in the register that has been omitted from it, or to remove or amend information stated in the register if it was entered unlawfully or is inconsistent with the truth. The Ministry can do these things of its own volition.

    UAE copyright: The court may, based on an application by a concerned person, order the amendment of any information in the register. Any interested person may request the Copyright Section to correct any material error made in any registration.

    The law provides for permitted acts as outlined in Section 26 above.

    GCC patent: where the patent has not been exploited at all, or has not been sufficiently exploited, within three years from the date of grant, a compulsory licence may be granted by the Board of Directors of the GCC PO. The applicant for the compulsory licence must show that over a reasonable period efforts have been made to obtain a licence for adequate compensation, under fair terms. Where the patent relates to semi-conductors, further limitations will apply. A compulsory licence may also be granted where there is a state of emergency, a dire public necessity, or for non-commercial use.

  29. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?

    Interim remedies

    • Precautionary order :
    • to attach infringing goods,
    • to gather evidence of the infringement (only available for trademark, copyright and neighbouring right infringement),
    • to stop the publication, exhibition, reproduction of a work (only available for copyright and neighbouring right infringement),
    • to assess the income resulted from publication or exhibition of the work (only available for copyright and neighbouring right infringement), requested ex-parte by the right holder (or the licensee in patent and design cases). A lawsuit on the merits should be filed within 8 days of the issue of the order in patent, industrial drawings and designs, and trademark infringement cases, and within 15 days in copyright or neighbouring right infringement cases, failing which the order will be null and void.
    • Order prohibiting a defendant from leaving the country (where there is a risk of the defendant fleeing the country);
    • Appointment of an expert to examine evidence which may be destroyed or lost.

    Final remedies

    • Injunction to stop the infringing acts (although the right for an injunction is not expressly provided for under the under the UAE Trademark Law and the UAE Patent and Design Law, courts have already granted injunctive orders in trademark infringement cases).
    • Damages to compensate for the damage suffered (although the right to seek compensation is omitted in the Patent an Design Law and in the Copyright Law, claimants may rely on the provisions of the Civil Transactions Act and the Commercial Transactions Law to request damages), it being specified that under the UAE Trademark Law, the right to compensation is subjected to the commission of a criminal offense as provided for under articles 37 and 38.
    • Confiscation and destruction of the infringing goods and equipment used to commit the infringement
    • Publication of the judgment
  30. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

    Costs of enforcement proceedings: see section 17/18 above.

    Costs recovery: UAE courts ordinarily award to the winning party a nominal amount as partial reimbursement of its legal fees. The winning party may however recover court fees.

    Security for costs: UAE courts would order a claimant to provide security for costs only when issuing an interim attachment order at claimant's request (as per section 31 above).