The recent arrival of an intellectual property team in the UK offices of Clyde & Co, has prompted us to consider some of the differences between practising as an IP lawyer in the UK and the UAE. Top of our list is the handling of IP disputes. Through a series of questions and answers for David Wilkinson and Don McCombie (for our London office) and Rob Deans and Harriet Balloch (for our Dubai office), we have sought to highlight some of the key differences between IP litigation in England and Wales and in the UAE.

Question 1:  What is the Court system like in each jurisdiction?

Don and David (England and Wales):

England & Wales is a common law jurisdiction. Patents, trade marks, copyright and designs all have a statutory basis, but some IP rights, such as passing off and confidential information are governed solely by case law.

Many IP laws have been harmonised at European Union (EU) level, most notably in the fields of trade marks and designs. The UK is also a signatory to the European Patent Convention, and its patent laws are very similar to those of other EU member states.

The Courts apply the doctrine of judicial precedent, where previous judgments may be binding. There is a substantial body of IP case law, most of which is readily available to the public.

Harriet and Rob (the UAE):

The UAE is a civil law jurisdiction and, as a result, the primary source of law is the statutory codes. The UAE legal system has been influenced by the Egyptian and the French legal systems and Islamic law codified in the Shari’a.

There are both federal and emirate level laws and courts in the UAE. Accordingly, it is important to assess which laws apply and which court has jurisdiction to deal with specific cases.

The IP laws in the UAE are federal laws, which are then applied at an emirate level, for example in Dubai through the Dubai Courts.

Cases are rarely reported and, while previous judgments may be of persuasive value, they are not binding.

Question 2:  Are there any pre-action steps which a claimant is required to follow?

Don and David (England and Wales):

The English Civil Procedure Rules provide a Practice Direction on Pre-Action Conduct (the PDPAC), together with a number of 'Pre-Action Protocols' for certain types of claims, which set out the steps that claimants are expected to take before filing a claim.

There is no IP-specific protocol.  In practice, the 'groundless threats' provisions that apply to the assertion of certain registered IP rights discourage many IP practitioners from engaging in pre-action correspondence, as does the prospect of a defendant filing pre-emptive cancellation proceedings at the EU trade mark office (OHIM) in some cases.

However, the so-called 'Jackson reforms' to the civil procedure rules, which place a greater emphasis on civil litigation costs, together with recent increases to Court fees, have increasingly encouraged IP practitioners to engage in pre-action correspondence and attempt to resolve disputes prior to filing a claim.

If a claimant commences a claim without following the PDPAC, they may face adverse costs consequences.

Harriet and Rob (the UAE):

There are no statutory pre-action protocols in force in the UAE which require parties to take certain steps before filing a claim, such as a sending a letter before action.

However, a compulsory, pre-trial step has recently been introduced in Dubai which requires certain disputes to be brought before the Centre for Amicable Settlement of Disputes (the Mediation Centre) before it is referred to the Dubai Courts.  The aim of the Mediation Centre is to reduce the number of small claims being heard by the Dubai Courts, with a focus on encouraging settlement of claims of up to AED 50,000 (approximately £9,000).

However, the majority of IP cases which are brought in the UAE either seek damages payments far in excess of AED 50,000, or the plaintiff does not seek damages in its initial claim preferring instead to focus on liability with a damages claim to follow in the event that liability is established.  Accordingly, in these circumstances, it should not be necessary to bring the claim before the Mediation Centre, although in practice plaintiffs often choose to do so.

Question 3:  Is it possible to secure an injunction?

Don and David (England and Wales):

Interim (preliminary) and permanent (final) injunctions are common remedies for IP infringements.

Interim injunction applications are granted without hearing the full merits of the case. If the Plaintiff is able to establish that it has an arguable case and that the damage that it will likely suffer cannot adequately be remedied through the payment of monetary compensation, the Court then assesses the 'balance of convenience' to the parties in deciding whether to grant or refuse an interim injunction. The court places greater emphasis on commercial criteria than on the merits of the underlying claim when assessing the 'balance of convenience'.

One of the key criteria is that claimants must act quickly upon discovering any infringing acts in order to preserve the right to an interim injunction. By contrast, permanent injunctions are granted after hearing a full trial on the merits.

Harriet and Rob (the UAE):

It is possible to apply to the Judge of Summary Matters for ex-parte interim injunctive relief (commonly referred to as a precautionary measure) in some IP cases.  However, the UAE Courts are rarely willing to grant such orders and, as a result, they are not commonly sought.

In the event that an interim injunction is secured, the main claim must be filed within a specified period (usually 8 or 15 days) after an injunction is issued, failing which the order will cease to have effect.

It is also possible to request a permanent injunction from the Court as part of the main claim.

Question 4:  What will the trial process involve?

Don and David (England and Wales):

As a common law jurisdiction, English proceedings are heavily focused on the trial hearing.  In High Court proceedings, the duration of a first instance IP trial may range from a few days to several weeks.

A key determining factor in setting the length of a trial is the requirement for live oral testimony and cross-examination of witnesses. Parties' advocates will also typically deliver opening and closing speeches. There are no juries in English IP trials.

Trial hearings at the Intellectual Property Enterprise Court (IPEC - see below) may last up to two days, but provision is still made for cross-examination of witnesses, but the availability of disclosure, litigation experiments and expert witness testimony is more constrained as compared to High Court proceedings.

The Courts have stated their intention to hear IP cases in the High Court and the IPEC within 12 months of filing a claim. In recent years, High Court cases have more typically taken 12-18 months to reach trial, but the recent addition of a further specialist patents judge may serve to reduce the time to reach trial.

Harriet and Rob (the UAE):

In contrast, Court proceedings in the UAE are almost completely document focused and there is little oral advocacy.

The Courts place little weight on witness evidence and, instead, the Courts tend to rely on documentary evidence and incontrovertible facts.  Arguments and evidence are presented to the Court by way of written submissions in the Arabic language, with witness evidence rarely permitted by the Court.

As a general rule, any claim will need to be substantiated by evidence in the form of original documentation which, if not in Arabic, will need to be translated into Arabic by a legal translator (the costs of which can be significant).  While copy documents are admissible, non-original documents may be challenged by the other party and they can be rejected by the Court.

In terms of timeframe, a decision may be issued in relation to cases before the Court of First Instance within 8 to 12 months, while more complex cases will take longer than 12 months.  The appointment of an expert (which is common in IP cases) is likely to extend this timeframe considerably, depending on how quickly the expert issues the report.

Question 5:  Can intellectual property disputes be referred to a specialist Court?

Don and David (England and Wales):

The English High Court operates a specialist Court 'list' for patent cases, whereby cases are allocated to nominated judges recognized as having expertise in patent law. Parties are required to provide an assessment of the level of technical complexity at an early stage of the proceedings, and particularly difficult technical matters will be allocated to specialist judges having scientific training.

There are no similar High Court 'lists' for cases involving other IP rights, but a specialist IP Court, the Intellectual Property Enterprise Court (IPEC, formerly the Patents County Court) has been established to provide litigants with a lower-cost venue in which to try IP disputes.

Harriet and Rob (UAE):

There are no specialist IP courts in Dubai and, therefore, IP cases are heard by general Courts, where the judges are responsible for hearing a wide range of cases.

The Courts commonly refer key aspects of the case to an expert. Please see Question 6 below regarding the appointment of experts.

Question 6:  Will the Court appoint an expert?

Don and David (England and Wales):

It is rare for the Court to appoint its own expert in IP cases, but it is very common for the parties to appoint their own expert witnesses.

In High Court patent cases in particular, expert evidence and cross-examination forms a central part of virtually every case.

In the most technically complex cases, a technical assessor may be appointed to assist the judges, but this is very rare in practice, particularly at first instance where patents judges are often former IP barristers with technical qualifications.

Harriet and Rob (the UAE):

Given that witness evidence carries little, if any, weight by the Courts in the UAE, the appointment of an expert witness by a party to an IP dispute can be a pointless exercise.

However, it is common for the UAE Courts to appoint their own expert (or a panel of experts) in order to examine the facts of the case and issue a report on specific questions.  In fact, an expert is appointed by the Court in almost IP infringement cases in the UAE, and this is commonly a very important stage of the litigation.

The expert will hold a number of meetings with the parties, and typically, the parties are asked to file submissions in relation to the questions which the expert has been by the Court to address.  It is also not unusual for a Court appointed expert (unlike the Court itself) to ask the parties to produce witnesses in order to address particular points which the expert has been asked to consider.

Once the expert has submitted his or her report to the Court, each party will have an opportunity to file further submissions with the Court setting out its comments on the report.

The Court will usually ratify the conclusions of the expert, although it has the discretion (which it exercises in some cases) to override the expert’s findings and to reach a different conclusion.

Question 6:  Are the parties under any obligation to disclose documents which are not favourable to their case?

Don and David (England and Wales):

The parties are obliged to conduct a 'reasonable search' for documents which may adversely affect their own case or the case of another party, or which may support another party's case.

There are some IP-specific limitations on the scope of disclosure, and parties' disclosure obligations are far less onerous than discovery obligations in US court proceedings.

Harriet and Rob (the UAE):

There is no general requirement under the procedural laws in the UAE for the parties to disclose documents either to each other or the Court.  As a result, each party usually selects and discloses to the Court only the documents that it wishes to support its own case, or to damage the other party's case.

However, the Court (and any expert appointed by the Court) does have the power to order the parties to disclose documentation and, as a result, disclosure of documentation is sometimes required.  This is particularly the case when an expert has been appointed by the Court to assess damages, and he or she requires sight of certain documents in order to assess the level of damages that may have been suffered.

Question 7:  Are there restrictions on filing an appeal?

Don and David (England and Wales):

The parties must have permission from the Court in order to appeal.

In first instance decisions, leave to appeal may be sought from the trial judge at the time of handing down their judgment. If leave is refused by the judge, permission may be sought from the Court of Appeal.

Permission to appeal first instance decisions is commonly granted. The process for appealing judgments of the Court of Appeal to the Supreme Court is similar, although permission is very often refused.

Harriet and Rob (the UAE):

There is an automatic right of appeal against a judgment of the Court of First Instance to the Court of Appeal on issues of fact or law. As a result, the Court of Appeal proceedings are effectively a re-trial (commonly, in IP cases, with the Court appointing an expert at both stages of the litigation).

There is also a further right of appeal to the Court of Cassation, which is limited to an appeal on points of law only.  In addition, the Court of Cassation does not generally allow the submission of further evidence or documents.

Given the lack of recoverability of costs in the UAE, in practice the unsuccessful party will often appeal as there is no disincentive to appeal in terms of costs awards. Accordingly, almost all IP cases are appealed all the way to the Court of Cassation.

Question 8:  Can a successful party recover its legal costs?

Don and David (England and Wales):

The English courts system operates the 'user pays' system, whereby an unsuccessful party must pay the reasonable legal costs of the successful party.  In practice, this can result in the successful party recovering in the region of 60-70% of its legal costs.

The Courts in England and Wales are willing to take an 'issues-based' approach to costs assessment whereby the costs of discrete issues raised in the case are assessed on an individual basis, rather than simply considering the overall winner or loser.

Given the nature of litigation in England and Wales, involving disclosure of documentation and the cross-examination of witness, the overall costs of bringing a case to trial can be very substantial.  Accordingly, while a successful party may be able to recover a large proportion of its costs, its financial outlay in bringing or defending the claim can still be very significant.

Harriet and Rob (the UAE):

Legal fees are not generally recoverable in UAE.  Usually only a nominal sum is awarded to the successful party as a contribution towards its legal fees (equivalent to a few hundred US Dollars).

However, given the nature of litigation in the UAE, the overall costs incurred by the parties is likely to be significantly lower than the costs which would be incurred in a corresponding case in the UK.  The costs in the UAE will still be significant.  However, even factoring the possibility of a successful party recovering its reasonable costs in the UK, the overall financial outlay of case in the UAE may still be lower than in the UK.