Business brief 2014: UAE
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
The registration procedure for patents in the UAE involves filing, formal and substantive examinations, publication, and grant. The patent application is filed and submitted to the UAE patent office for examination. Once the formal examination is completed, the application is forwarded to the appointed patent office for substantive examination. Once the letter of grant is issued, it is published in the Official Gazette. The opposition term as per UAE laws is 60 days. In the absence of any opposition, the patent grant letter is issued to the applicant.
What are the costs for obtaining a patent, and what are the costs of defending it?
The official fees for a straightforward case from filing to grant are $2,085 for individuals and $2,250 for companies. The official fees for filing an opposition/appeal are $28 for individuals and $55 for companies. There will also be annual costs for maintaining the rights.
Where can you find information on existing patents in your jurisdiction?
The UAE patent office does not conduct official searches on patents. However, SMAS-IP has a well-established and up-to-date in-house database that contains all published patents.
Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?
The UAE Patent Law is a complete law that clearly states all procedures and measures for the protection and enforcement of rights. In the UAE, most businesses are not still acquainted with patents, while some international companies are not keen to seek protection for their patents in the country. However, as the UAE is an economic hub in the region, there are great risks of infringement and, in cases where the patent is not protected in the UAE, no action can be taken against the infringer.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
If an invention owner does not hold a deed of protection in the UAE or GCC, he cannot take legal action against the infringer. Under UAE patent law, the holder of a deed of protection may request the court to order the seizure of the suspected infringing goods.
The procedure to file a court case against patent infringement is stipulated in Article 61 of UAE Industrial Regulations and Protection of Patents, Industrial Drawings, and Designs.
Have there been any changes to the patent law(s) in the last 12 months?
The first UAE Industrial Regulations and Protection of Patents, Industrial Drawings, and Designs was issued in 1992 and amended in 2002 and again in 2006. No amendments have been made since then. However, the UAE patent office has signed a Memorandum of Understanding with the Republic of South Korea to cooperate on IP rights, particularly in the field of patents.
Trademarks
How do you register or secure trademark rights, and what protection does it grant?
Trademarks should be registered with the UAE trademark office. Once the application is filed, it undergoes formal and substantive examination. Once accepted by the examiner based on absolute and relative grounds, the trademark is then published in the Official Gazette and two local newspapers. The opposition period in the UAE is 30 days from the publication date. If no opposition is filed, the registration certificate is issued and sent to the applicant or his attorney.
Registered trademarks can also be registered before customs in Dubai, Sharjah and Ras Al Khaima and Umm Quwain. This is an elementary record but is efficient in preventing the import/export of infringing products.
What are the costs for registering a trademark, and what are the costs of defending it?
The official fees for straightforward registration procedures are $1,970 for one trademark in one class, as multiclass filings are not allowed under the UAE trademark law’s provisions.
The official fee for filing an appeal/opposition/counterstatement or attending hearing sessions at the UAE trademark office is $70 for each procedure.
What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?
The UAE is an economic hub and international shopping destination so several trademarks, including well-known and local trademarks, are subject to infringement. In addition, the UAE is a transit point between the Arab market, especially the GCC, the Middle East and other countries. So several ways to infringe trademarks can be found, including counterfeiting and online infringement.
The UAE government is keen to protect the UAE’s image as an attractive market for investors so the authorities play their role in combating infringement. Various measures can be taken against infringers in the UAE, and the measures that can be taken against counterfeiters differ from one Emirate to another.
What are the most common mistakes trademarks owners make?
Some trademark owners do not register all their trademarks and no legal proceedings can be filed against infringers unless the trademark owners hold a certificate of registration. In addition, trademark owners sometimes consider the registration fees to be high and prefer to cover the registration of a main class, especially for goods trademarks, and do not cover Class 35, which is related to the commercialisation and distribution of such trademarks.
Have there been any changes to the trademarks law(s) in the last 12 months?
UAE trademark law has not changed in the last 12 months. However, there have been some changes in registration procedures. For example, the UAE trademark office has announced that no amendments to registration can be recorded until the trademark matures, effective February 2014. Hence, only the correction of typographical errors will be accepted in pending applications.
Copyright
What are the key challenges to copyright holders in your jurisdiction?
The popularity of social media makes it challenging for copyright holders to protect their rights. However, UAE copyright law is very clear in terms of the scope of protection and the measures that can be taken against infringers.
How should people ensure they are protected against copyright infringement? What is the best way to deal with infringement, and what are the costs associated with it?
To make sure people are protected against copyright infringement, a copyright application should filed at the Copyright Department of the UAE Ministry of Economy. However, any work protected in a member country of the Berne Convention is automatically protected in the UAE. .
Counterfeiting
How big a problem is counterfeiting in your jurisdiction?
Being an international business centre, the UAE, and especially Dubai, has its fair share of counterfeited products. However, the UAE authorities are working tirelessly to fight it. Several act against counterfeit and commercial fraud, depending on the nature of the goods, the Emirate, and the zone of action. For example, in Dubai, anti-counterfeit actions are the responsibility of Dubai Customs. In addition, various UAE laws include measures on counterfeiting and the sanctions can include heavy fines and/or imprisonment.
What industries are particularly under threat?
The most seized counterfeit goods are cosmetic products, cars and spare parts such as tyres. In 2013, the Dubai Economic Development Department seized 12 million counterfeited items while the Abu Dhabi authorities seized counterfeit items worth more than AED 35 million (Emarat Al youm, 2013).
What are the best strategies for dealing with the problem?
The UAE authorities are combating counterfeiting using judicial measures and by encouraging social responsibility. Several awareness campaigns have been organised for the public and officials. For example, special awareness campaigns are organised in schools and shopping malls to educate the public about ways of detecting counterfeits and the negative impact of counterfeit goods, especially on public health. Dubai Customs organises workshops where officials meet directly with trademark owners and these provide the specific technical information for agents to make their verification procedures effective.
General
Are there any legislative changes to the IP regime that would make life easier for businesses?
As stated above, the UAE government has acknowledged the importance of addressing counterfeiting. Various measures are taken by the authorities to combat it and provide a better market environment for investors.
Fatima Arrad is the manager of SMAS-IP’s UAE office. She can be contacted at: fatima@smas-ip.com
