UAE Legal and Regulatory Environment
How Software Products and Trademarks Are Protectable By-laws in the UAE
Trademark infringement is considered to be a criminal offense in the UAE, as described in Article 37 under the trademark law (DLA Piper, 2020). This legislation highlights the different offenses that fall under trademark infringement ranging from imitation and counterfeits of trademarks to the sale or use of products with trademark imitations. The law in the UAE gives a trademark owner the right to petition a judge for any urgent matters based on ex parte rationale for Precautionary Measures Order in situations where the crimes established within the trademark law are being committed (DLA Piper, 2020). This legislation requires that any individual who forges trademarks registered by law or acts in a manner that is supposed to mislead the public using the forged trademark qualifies for punishment under the law for damages However, under these circumstances, the civil proceeding should commence immediately, a factor that can limit the effectiveness that comes with this order.
The Trademark and Copyright Under UAE Laws
According to the UAE Federal Law No. 37 of 1992, a trademark is described as anything with a distinctive form like names, signatures, Logos, seals, and advertisements, among other marks that are intended to distinguish products, goods, and services belonging to a specific trademark owner (Burge, 2009). The UAE trademark application form has 45 clauses establishing how various aspects of the trademark are protected. On the other hand, copyright is described as any formulated compilation in the form of art, science, or other modes of expression with specific value and expression (Burge, 2009). This definition implies that copyright works could refer to any registered books, logos, computer programs or applications, musical works, among other individuals or groups works that of a particular value (Burge, 2009). Trademark and copyright object registration within the UAE is considered to be a voluntary right that a particular right holder or author has the free will to exercise.
The Process of Registering a Trademark and Copyright in the UAE
In the UAE, two legal methods can be used to register a particular brand, either as a copyright or a trademark. Both the copyright and trademark certificates have equal legal power when it comes to protecting a particular brand as a legally established intellectual property object (Burge, 2009). The only difference between the two methods is when it comes to the process involved in the brand registration, law enforcement, and the registering bodies involved.
There are several steps involved when registering for trademark and copyright within the United Arab Emirates. The first step involves checking whether the registered trademark is entitled to any protection within the UAE. This step is necessary to undertake because not all trademarks have a right of registration as trademarks. For example, simple descriptive terms of specific goods and services don’t qualify for registration as trademarks (Burge, 2009). A trademark search is also necessary because it helps prevent collisions between a company and individual trademark registration within the UAE and other jurisdictions or older trademarks (Burge, 2009). Once the search is complete, the second step should involve applying for registration with the UAE’s Ministry of Economy, which is usually done through a local patent attorney.
The UAE Federal Law No. (7) Of the Year 2002 established that copyright can only be registered within the UAE once the copyrights objected is created (Burge, 2009). The two primary requirements for a copyright object registration should include the results of a given intellectual work, and this work has to be expressed objectively. Finally, a copyright object registration process can be completed by filling a registration form and then depositing a work sample with any of the following organizations within the UAE; the UAE Ministry of Economy, the Dubai Copyright Office and the U.S. Copyright Office (Burge, 2009).
Since 2014, the UAE has been a member of the Bern Convention touching on copyright (HHS, 2019). The Berne Convention refers to an international agreement that governs copyright ad it was first established in 1886 in Berne, Switzerland. This convention introduced the idea that copyrights exist when a given work or property is fixed. Moreover, this convention enforces requirements that a country should recognize copyrights that are held by citizens from all the other signatory countries (HHS, 2019). The fact that the UAE is part of the Bern Convention means that it would be easier for any foreign company to establish its business operations in the country because the regulatory framework in place is recognizable globally (HHS, 2019).
The length or period for undertaking a trademark or copyright registration within the UAE tends to vary based on the types of registration involved. For instance, it takes approximately 10 to 12 months to complete a trademark registration. However, copyright registration at the INTERCO offices, which are located in Dubai, takes approximately ten days (HHS, 2019). When the registration is done at the U.S. Copyright Office, it takes approximately 6 to 12 months (HHS, 2019). This timeframe would allow any business organization or individual to undertake their registration within a respectable period.
A registered trademark brand remains under legal protection within the UAE for ten years from the date the official T.M. registration is undertaken (HHS, 2019). However, to ensure that this trademark remains in place even after ten years, the owner is required to pay an additional official fee to the Ministry of Economy to ensure the further extension is undertaken (HHS, 2019). There is no specific limit in regards to when trademark extension certificates can last. When it comes to registered copyrights, their protection in the UAE exists throughout the author’s lifetime. Additionally, it also exists fifty years from the beginning of the first day within a calendar year from the time an owner dies (HHS, 2019). Based on this understanding, it is quite clear that any brand seeking to establish its brand in the UAE should adhere to this registration and ensure that trademark certificates are renewed once they have expired
The Damages and Remedies for Intellectual Property Infringement in UAE
The damages resulting from intellectual property infringement within the UAE include the unauthorized use of copyrights and trademarks in connection to any property, goods, or services within the UAE territory to cause confusion or deception regarding its source (Trademark, 2019). As such, any trademark right holder believing that their intellectual property rights are being violated can file civil action that requires the Competition Regulation Committee of the Ministry of Economy to take appropriate actions based on the circumstances of the violations involved. Additionally, Copyright infringement refers to the use of protected works without any permission, which is an infringement on certain exclusive rights that have been granted to a copyright holder (Trademark, 2019). In the UAE, the infringement of computer programs copyrights, trademarks, or patents is considered to be forbidden based on the Islamic Shariah law, which was established in 2014 (Trademark, 2019). Violation of these legal requirements is what leads to damages under intellectual property infringement rights.
Intellectual property infringement is determined by several state bodies. For instance, a registered trademark infringement tends to lead to the illegal or unauthorized use of service marks or trademarks (Trademark, 2019). Such damages tend to happen when these infringements are meant to cause confusion or deceive the original trademark holders (Trademark, 2019). As such, once these damages have been established to exists, trademark holders or owners have a right to claim these rights that are attached to a given trademark. Claims concerning the damages resulting from intellectual property rights infringements can be submitted to the Trademark Department of the UAE Ministry of Economy (Trademark, 2019). The Trademark Department receives these complaints and later follows upon them as specified by the law or the specialized courts. Copyright infringement refers to the violations on registered copyrights covered by copyright law such that it violates the exclusive rights of a copyright owner leading to damages. The Copyright Department of the UAE Ministry of Economy is mandated to receive any complaints in regards to the damages caused by a copyright infringement to make a follow up on the cases within a court of law (Trademark, 2019).
Penalties Intellectual Property Infringement in the UAE
There are several penalties that an individual can incur from damages resulting from trademarks infringements, which range from confiscation of goods, imprisonment or cash fines, or a combination of all of them. Any individual who forges trademarks registered by law or acts in a manner that is supposed to mislead the public using the forged trademark qualifies for punishment under the law for damages (Grose, 2016). Additionally, any individual who deliberately sells or offers products for sale after forging or illegally placing trademarks on a given property or product also qualified for punishment under confiscation of goods, imprisonment, or cash fines or a combination of all of them (Grose, 2016).
Similarly, copyright infringements are also liable to different penalties that include confiscation of goods, financial penalties that range between 30 000 AED and 200 000 AED or imprisonment for periods of more than six months and above (Grose, 2016). Moreover, the penalties for copyright infringements damages can also attract fines of about 50 000 AED dirhams (Grose, 2016). In extreme cases, deportation from the UAE is taken as a final result where the copyright infringements have exceeded the acceptable threshold or in cases where repeated violations and damages have been caused by the same individual or entity.
Remedies for Intellectual Property Infringement in the UAE
Intellectual property owners have the right to instigate civil suits against anyone guilty of infringement as several such laws have been established in the UAE to guard against intellectual property infringement. The first remedy would be the payment for damages to the intellectual property owner. In most cases, this payment is often done in monetary value, and it is usually intended to compensate the owner for any damage they might have suffered when it comes to lost claims or reputational damages arising from the property rights violations (HHS, 2019.
Another remedy is the enhanced damages which are meant to punish the property rights infringer. In most cases, court orders are used to impose this remedy, especially in situations where the damages suffered are beyond the value suffered by the owner of an intellectual property right (HHS, 2019. The purpose of these enhanced damages is to serve as a punishment towards the party that is involved in this infringement (HHS, 2019. However, these enhanced damages aren’t very common because they intend to punish the entities engaged in specific bad conducts.
A court injunction can also be used as a remedy for the damages arising from intellectual property rights violations. In most cases, intellectual property owners can obtain orders requiring that the infringing parties should stop selling or using the intellectual property right that is under protection (HHS, 2019.
In some cases, the protected material can also be destroyed as a remedy for intellectual property rights infringement. This takes place when a court of law gives orders requiring that the infringer should destroy the material protected to restrict it from being used further without any authorization (HHS, 2019.
Finally, the infringing party can be required to cover for all the attorney’s fees and costs that should be paid for any intellectual property rights violations. For example, the court can demand that the infringing party has to pay all the costs incurred by an intellectual property rights owner for bringing and prosecuting a particular case in court (HHS, 2019.
References
Burge. (2009). Trademark registration. Patent and Trademark Tactics and Practice, 159-178. DOI:10.1002/9780470172285.ch15
DLA Piper. (2020). Trademarks – Remedies for infringement in the United Arab Emirates – DLA piper guide to going global. Retrieved from https://www.dlapiperintelligence.com/goingglobal/intellectual-property/index.html?t=trademarks&s=remedies&c=AE
Grose, M. (2016). undefined. John Wiley & Sons.
HHS. (2019, December 29). Infringement of intellectual property. Retrieved from https://hhslawyers.com/blog/infringement-of-intellectual-property/
Trademark. (2019). Trademark and copyright registration in Dubai, UAE. Retrieved from https://www.trademark-copyright.ae/
