Introduction
Customs recordals and seizures
Administrative complaints
Court proceedings
Free zones
Registering trademarks in the United Arab Emirates can be relatively straightforward, albeit expensive. However, enforcing them against third parties can present a number of challenges.
As a first step, it is important for brand owners to understand the local landscape as it greatly affects the measures available. While there are federal level laws governing intellectual property, the United Arab Emirates comprises seven emirates, each of which has its own courts (none being specialised IP courts) and autonomy to implement certain administrative functions such as customs recordals. In addition, the United Arab Emirates also has many free zones across each emirate, the jurisdictional nature of which adds an additional layer of complexity when it comes to enforcement.
There are three main kinds of enforcement measure available in the United Arab Emirates:
- customs recordals and seizures;
- administrative complaints; and
- court proceedings.
This article provides a summary of each. Legal advice should be sought with respect to each fact pattern.
Customs recordals and seizures
At present, it is possible to record registered trademarks with customs in only five of the seven emirates – namely:
- Abu Dhabi;
- Ajman;
- Dubai;
- Ras Al Khaimah; and
- Sharjah.
This is an important step for brand owners to complete as the United Arab Emirates is a major gateway to the transit of goods from North Africa, Europe and East Asia. The Jebel Ali port in Dubai is one of the largest ports in the world, so protecting brands with customs is vital in the arsenal of protection measures.
Prior to resorting to court action, it is usually possible to file complaints with the local department of economic development. However, each emirate will assess cases differently – some will action only strict counterfeit goods, while others will consider infringement. If administrative action is possible, it is a quick and cost-effective measure to have goods seized and fines issued against an infringer. A repeat offence also leads to harsher penalties, so this option is often used by brand owners seeking quick relief. However, at present, the departments of economic development do not have authorisation to take action in the free zones as they are beyond their jurisdiction. This presents significant problems and specialist advice should be sought as to any alternative options that may be available
As a last resort, it is possible to file a civil infringement claim with the courts or a criminal complaint with the police. However, given the expense associated with court actions, not to mention the timeframe required for a decision to be issued in the first instance, this option is usually reserved for the most severe infringements. As there are no specialised IP courts, it is common for the judge to appoint an expert. While the expert's report is not binding, it can certainly be persuasive. Brand owners should also be mindful that preliminary injunctions are unavailable in the United Arab Emirates (although something similar called a "precautionary measure" is possible) and that any damages awarded are of a low value – certainly not of a level to recoup the costs of litigation, which acts a deterrent to bringing court proceedings.
Certain free zones have their own judicial system that may be used to counteract any infringements that take place therein – specifically, the Dubai International Finance Centre (DIFC) and the Abu Dhabi Global Market (ADGM). Contrary to the mainland, however, these free zones operate off common law, adding another dimension to the understanding of enforcement in the country. That said, in practice, enforcement of intellectual property within the DIFC and ADGM is relatively untested and so legal advice should be sought in advance of bringing any claims.
For further information on this topic please contact Renee Nugent at Bird & Bird by telephone (+971 4 309 3222) or email ([email protected]). The Bird & Bird website can be accessed at www.twobirds.com.