Business brief 2018: UAE

23-05-2018

Munir Suboh

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

To obtain patent rights applicants may:

  • Submit a local patent application at the UAE Patent Office;
  • Submit an application before the Gulf Cooperation Council (GCC) Patent Office for regional protection in the GCC territories; or
  • Submit a Patent Cooperation Treaty (PCT) application with designation to the UAE.

The UAE Patent Law is lightly modelled on the European system and requires, inter alia, the absolute novelty as one of the fundamental prerequisites for patentability. At this stage, it is not possible to do any kind of official search at the UAE Patent Office.

To register a patent, the process is described as the following:

  • Submission of patent application (with specification in Arabic and English);
  • Filing of legalised power of attorney, a deed of assignment, a certificate of incorporation of the applicant (if relevant) and a certified copy of any priority document);
  • Patent application undergoes formal examination at the UAE Patent Office and substantive examination at the search authority in Austria under the supervision of the World Intellectual Property Organization (WIPO);
  • Publication of patent for possible oppositions (if any) after examination and acceptance; and
  • Grant of patent if no opposition is received.

"Advertisements, cautionary notices, participating in awareness events and working with local law enforcement agencies are all considered very important steps to improve awareness of trademarks."

The regional GCC Patent Office prosecutes patent applications on a relatively expedited basis and can be a very favourable option for patentees. However, enforcement of GCC-granted patents has been subject to many legal debates by professionals in member states. The common understanding is that a GCC-granted patent can, and shall, be enforced as a general rule in all member states.

Trademarks

How do you register or secure trademark rights and what protection do they grant?

The UAE promulgated its first Trademark Law in October 1992 and it came into force in January 1993. Following UAE’s joining of WIPO, this law was substantially revised and amended in 2002 and put more clarity on trademark protection.

The registration of trademarks in the UAE is based on the Trademark Law and the corresponding Executive Regulations. The official fees for the registration are based on a separate Ministerial Resolution issued by the UAE government. The application for the registration of a trademark is to be filed through a trademark attorney, who must be a licensed lawyer in the UAE, unless it is filed by the owner of the trademark himself. The process of registration starts by filing, examination, acceptance, publication and registration. 

Once the mark is registered, the protection lasts for ten years for indefinite renewable periods. The trademark owner will enjoy many rights including, but not limited to:

  • Use of the trademark for the designated list of goods and/or services;
  • Commercial exploitation of trademark and collection of royalties for licensing the use to a third party;
  • Assigning the trademark to a third party;
  • Enforcing the trademark against any infringement by way of criminal, civil or administrative proceedings;
  • Appointing an official distributor to act as exclusive distributor or agent according to the UAE Commercial Agencies Law;
  • Appointing franchisee(s) to use the trademark;
  • Opposing a third party who attempts to register or use identical or confusingly similar marks; and
  • Recording the trademark at customs authorities for enforcement and protection.

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

Trademark infringement by way of counterfeits, use of confusingly similar lookalike marks or any unauthorised use continues to be a concerning issue to the trademark owners in the Middle East in general.

Trademark owners should explore all available options depending on the nature of infringement, location, quantity, strategy of the counterparty and, most important, availability of a local law enforcement agency to deliver practical results. Administrative action before the Economic Development Department or Customs Authority has been a very important mechanism to enforce rights onshore in a timely and cost-effective manner.

Trademark owners should always maintain their rights by way of enforcement and monitoring the relevant markets. Recently, we have advised clients to be aware of the following silent threats in practice:

  • Vulnerability of mark and cancellation for non-use if mark is not used for five years;
  • Conflict with pre-existing trade names registered for companies’ names at local registrars. The coexistence of such conflict may undermine the trademark exclusive rights and occasionally the registration itself. Hence, proper clearance should always be conducted prior to registration;
  • Electronic violations and infringements, whether on social media, URLs, marketplaces, etc. It is very important to set up a proper online enforcement strategy for trademark owners;
  • Misuse of free zone authorities, which are designed to attract foreign investment to, and offer 100% ownership for, non-UAE citizens; there are a number of free zones in the UAE, and each has an authority and its own rules. Trademark owners need to work closely with local law enforcement to put proper strategy and measures to protect their trademarks in free zones, logistic hubs and other areas within the UAE; and
  • Lack of awareness of rights. Advertisements, cautionary notices, participating in awareness events and working with local law enforcement agencies are all considered very important steps to improve awareness of trademarks.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

It is a major issue since the UAE acts as a regional hub for trade between Asia and the Middle East, North Africa and Europe. The problem keeps lessening, however, and the local law enforcement also enhances its skills, resources, dedication and formalities to cope with this problem.

What are the best strategies for dealing with the problem?

There are many measures that should be taken to ensure counterfeiting issues are being dealt with. I usually advise brand owners to undertake some of the following steps as a strategy to improve enforcement against the counterfeit problem in the UAE:

  • Monitor the market and appoint a specialised team that can oversee any market investigation or research initiative for brand enforcement;
  • Participate in brand awareness training and programmes with law enforcement agencies, including administrative authorities such as the Department of Economic Development, customs and the criminal intelligence department of police authorities. Exchange experience and improve the knowledge of your trademarks;
  • Take legal action, criminal and/or civil, against entities that supply counterfeit products. Try not to focus on major targets only as retailers could be a very important target to ensure brand owners deliver the message clearly to markets;
  • Open doors for settlement against small retailers and undertakings with liquidated damages clauses. This can help brand owners to initiate a self-funded anti-counterfeiting scheme;
  • Work jointly with other brand owners to enforce collective campaigns. Competitors can work together to ensure fair competition is in place. Counterfeiting does not abide by any competition rules or policies; and
  • Report positive cases in other countries and ensure your appointed IP attorney/s share your success accomplished in other countries. Try to use the local language as it can be easily accessible to law enforcement agencies.

Munir Suboh joined BSA Ahmad Bin Hezeem & Associates in 2018 as a partner and head of the IP department, based in the Dubai office. He began his practice in the Middle East in 2006 and has worked on numerous contentious and non-contentious matters, including trademarks, trade names, copyright, patents, trade secrets, domain names and others. He can be contacted at: munir.suboh@bsabh.com 

Munir Suboh, BSA Ahmad Bin Hezeem & Associates, trademark, patent, counterfeit, copyright, business brief

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