As “Europe's most easterly hub and Asia's most westerly hub” and within an eight-hour flight from two-thirds of the world's population, the UAE is home to some of the world’s busiest sea and airports. With this unique position and its related massive influx of goods comes the negative side effect of the entry of large amounts of counterfeit items.
The UAE government has provided several avenues for the protection of brand owners’ rights.
1. Protection through the customs authorities
To prevent goods that infringe their trademarks from even entering the UAE market, brand owners can enforce their rights through the customs authorities. In particular, rights holders have the option to record their trademarks – which are registered with the UAE Trademark Office – with the customs authorities so that they will be watched by officials. This system has proven to be very efficient. The remedies imposed include fines, seizures and destruction of counterfeit goods.
It must be kept in mind though, that the UAE does not have a central customs recordation system. Thus, the recordation has to be done in each Emirate individually. As of now, the Emirates of Abu Dhabi, Dubai, Sharjah, Ajman and Ras Al-Khaimah offer the option of recording trademarks with their respective customs departments. In addition to this, brand owners can and should provide training to the officers to familiarize them with the originals and typical counterfeits.
2. Criminal prosecution
When brand owners – e.g., through market investigations – detect counterfeit goods in the market, they can file criminal complaints through the police or the public prosecution. The matter will be investigated; raids carried out and, if substantiated, the case will be transferred to the criminal court. It should be pointed out that initiating the criminal prosecution with the police would not involve a complaint fee, but the goods would have to be stored at the complainant’s cost until a judgment is passed.
The criminal court can issue fines and even jail sentences and order the confiscation and destruction of the infringing goods. The remedies and their extent find their positive law basis in the UAE Trademark Law (Federal Law No. 37 of 1992 as amended by Federal Law No. 8 of 2002, Art. 37 ff.) and Anti-Commercial Fraud Law. Moreover, the court may also order the closure of the defendant’s premises and the publication of the decision at the infringer’s expense.
When brand owners detect counterfeit goodsinitiating the criminal prosecution with the police would not involve a complaint fee.
3. Civil action
A further option for brand owners is to file a lawsuit against the offender in the civil court, as guaranteed in the UAE Trademark Law (Federal Law No. 37 of 1992 as amended by Federal Law No. 8 of 2002, Art. 37 ff.). Such a civil action can be filed after the criminal case or without filing a criminal complaint, or it can be joined with the criminal lawsuit. The advantage of the latter action is that evidence submitted in the civil case can also be considered by the criminal court. The court will award the damages incurred by the rights holder if the tort, the damages and the causal relation between the two are proven. Moreover, a travel ban on the infringer can be imposed.
4. Administrative action
Administrative actions are a faster and more cost-efficient way to counter infringements. They are executed by the Department of Economic Development (DED) in Abu Dhabi, Dubai and Sharjah and by the Ministry of Economy in the remaining Emirates. Brand owners can register their trademarks to ensure they are monitored. Additionally, they can file complaints against infringers. Investigations and raids will be carried out, and the remedies imposed for administrative actions include fines against infringers, as well as confiscation and destruction of the goods. In case of repeat offenders, the temporary closing of outlets can be imposed while for infringements in the area of pharmaceuticals, rights holders can call on the Ministry of Health.
The UAE government has equipped brand owners with various effective ways of combatting the counterfeiting of their trademarks. Counterfeit items can be prevented from entering the UAE market through the customs authorities or confiscated and destroyed with penalties for the infringers through the courts or administrative actions. Rights holders and their Intellectual Property lawyers are advised to work together with the authorities and develop a strategy for how to utilize the available means for their particular case.
This article was originally posted in the March 2019 issue of the German Emirati Joint Council for Industry & Commerce newsletter of the legal network.