Intellectual Property in the UAE: Types and Ways of Enforcement

What types of intellectual property rights exist in UAE to protect:

(a) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);

(b) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and know-how);

(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and know-how)?

Patents

Patents are available for new inventions, that are capable of industrial application. The following categories of the invention are excluded from patentability:

Plant varieties, animal species and biological methods of producing plants or animals.
Diagnostic methods, treatments and surgical operations.
Scientific principles, discoveries and theories, as well as mathematical methods.
Rules or methods of conducting business, performing mental activities or playing games.
Inventions that violate public order or morals or relate to national defence.

Utility models

Utility models are granted for new inventions capable of industrial application but that do not meet the inventive steps requirement for patent protection. They are subject to the same processes and procedures as patents but are subject to a shorter protection term.

Know-How

Know-how is defined under the law as information, data, or knowledge of a technological nature acquired through the profession and practically applicable. The law prohibits the disclosure, use or publication of know-how in certain circumstances.

Registered trademarks & Registered designs

Design registration extends to new, creative designs that can be used as industrial or handicraft products and do not violate public order or morals.

A trade mark may have a variety of forms, including words, drawings, symbols, colours and packaging. A sound may form part of a registered trademark, and protection will extend to the same. A trade mark may be registered if it can distinguish the origin of the goods or services of one entity from those of others and meets the filing requirements. Collective and certificate marks are allowed.

Unregistered designs

The law does not recognise unregistered designs. It may be possible to protect such designs through copyright or as three-dimensional trademarks.

Trade Secrets

The obligation of trade secret protection is provided across UAE Federal Laws, both in the employment and general context. According to the Penal Code, it is a criminal offence for an individual who, by position or art, profession, or craft, is entrusted with a secret and then discloses it in cases other than those allowed with the authorisation of the person or entity disclosing it or by law. The Civil Code imposes the duty on business employees to safeguard their work’s industrial or commercial secrets.

Copyright

Copyright protection includes dramatic, literary, musical and artistic works, sound recordings, films, broadcasts, architectural works and derivative works without prejudice to the safety of the works from which they were derived. Automatic protection arises when works are recorded in tangible forms, e.g., writing.

Plant varieties

Plant variety rights are only available by registration for homogenous, new, distinct, stable varieties that are harmless to the environment and health and subject to the same, not contradicting the principles of the Islamic Sharia law.

What are the procedures to extend the life of registered rights? What is the duration of each type of these intellectual property rights?

Patents

The law does not provide merits for an extension beyond twenty years from the date the application was filed.

Registered designs – 10 years.

Utility models – 10 years.

Know-How/Trade Secrets

If the secret nature of the information is maintained, the trade secrets and know-hows are protected.

Registered trademarks

A trade mark registration is valid for ten years and may be renewed indefinitely, provided renewal fees are paid.

Copyright

The life of the original author or authors plus 50 years from the calendar year when the last surviving author dies. Fifty years from the end of the year, the work was first made available for published works. For works of applied arts, the term is reduced to 25 years. The rights of broadcasting organisations are protected for 20 years from the end of the calendar year when such broadcasts were first transmitted

Plant Varieties

Twenty-five years from the date of application (for trees and vines) and 20 years from the date of application in all other cases.

What enforcement options are available for intellectual property? For example, intellectual property office proceedings, civil court proceedings, administrative proceedings, and alternative dispute resolution.

Civil proceedings

The primary recourse for IP rights owners in relation to enforcing IP rights in civil litigation before the Courts.

Criminal proceedings

The infringement of IP rights is a criminal offence under UAE law. Therefore, the owner of an IP right may complain to the police department, which will investigate the claim and, where there is merit, refer the same to the Public Prosecution for examination and, if appropriate, referral to the Criminal Courts. Criminal proceedings are generally better suited in respect of counterfeit goods.

IPPD

The IPPD generally deals with matters relating to the validity and registrability of an IP right. The IPPD may revoke the registration of a trade mark of its own accord (where the trade mark was registered in contravention of the law or error) or based upon a third party’s application to the Court (where the mark was unduly registered).

Border measures

Where a trade mark is registered with the customs authorities (see section 20), the customs authorities may seize infringing products upon entry into the UAE, including upon specific request from the right owner or their representative, in the event of a suspected shipment of infringing products arriving or having arrived at a port of entry.

DED IP Gateway

Administrative actions result in the seizure and destruction of infringing goods and the imposition of fines against infringing parties. The Department of Economic Department (DED) in the emirate of Dubai has established the IP Gateway. This system enables registered rights owners to open cases relating to the infringement of their trademarks through the mobile application and website and view market inspection reports relating to the same.

Alternative Dispute Resolution

Alternative dispute resolution requires the voluntary engagement of both parties unless provided contractually. It may include arbitration where an arbitration clause is included in a contract or mediation, subject to the parties agreeing to the same.

What options are available to settle intellectual property disputes?

Claims may be settled at any time, before or during an ongoing Court action. The terms of the settlement agreement are usually set out in a settlement agreement