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Intellectual Property Rights

Introduction

This report analyzes the authenticity of the United Arab Emirates (UAE) government initiatives towards protection of Intellectual Property Rights (IPR) in general and Trademarks protection in particular. The UAE government has initiated various steps towards IPR protection through its own enforcement agencies. The Department of Legal Affairs, Ministry of Economy, is the legal reference for the Ministry. It is the source from which laws are issued and legislations enacted. The following are just examples - and not exclusive list - of the UAE Department of Legal Affairs, Ministry of Economy most important tasks towards IP:

· Preparation of draft laws and their amendments as well as Cabinet resolutions, ministerial decrees and administrative circulars related to the UAE economic and commercial activities

· Commenting on the conventions, treaties and resolutions related to trade laws in the GCC[1].

Through this report, I will be discussing in details the government adapted measures towards Trademarks protection and how these measures were affecting the forfeiting and piracy levels throughout the country. The report will also highlight the government intitaitives towards the enforcement of the trademark laws and its compliance with the Trade Related Intellectual Property Rights Agreement (TRIPs).

The report will also underline the international agreements and conventions related to Intellectual Property signed by the government of UAE and analyze their enforcement and how these agreements and conventions are being adopted by the local rules and regulation, and will point out the various limitations of the Trademark rules and procedures.

This report will also discuss what is protected under the UAE laws vs. protection adopted under TRIPs and will also address the procedures taken by the UAE government towards IPR protection and compare the same with the International standard procedures for enforcing Trade Related Intellectual Property Rights (TRIPs).

The Country and IPR Rules and Regulations

The United Arab Emirates is a federation of seven Emirates: Abu Dhabi, Dubai,

Sharjah, Ajman, Umm-al-Quwain, Ras al-Khaimah, al-Fujairah. The federation was established in 1971, a mere nine years after oil began to be exported. Until then, the Emirates had no boundaries, no roads, no newspapers, no telephones, and no electricity (Tomkinson, 1975; Taryam, 1987; Codrai, 1990). The rulers comprise the Federal Supreme Council (FSC), which elects the country's President and Vice President at five-yearly intervals from amongst its members. The Council of Ministers is chosen by the Prime Minister in consultation with the President, and is the executive arm of the government. The Federal National Council, or Parliament, has 40 members, drawn from each of the emirates, and has a legislative and supervisory role and can amend proposed federal legislation[2]. The Federal Supreme Court heads the judicial structure. There are also local governments in each of the emirates, while each major urban centre has a Municipality for local affairs.

This federation of seven ancient Emirates is not only the world's fourth largest oil-producer, but also its richest state per head of population, and the new commercial hub of the Middle East.[3]

Due to the young age of the country (came into existence in 1971), the Intellectual Property (IP) system in the country is still going through a continual development stage, but it is progressing in the right track towards the complete achievement of the government goals towards full compliance with the international signed treaties and agreements i.e. TRIPS agreement. The first IP laws were established in the year 1992 and were again updated in 2002 (Federal Law No. 8 for the year 2002 amending Articles of the Federal Law No. 37 for the year 1992).

Local laws and practices relating to patents and customs, are supplemented with laws issued by the Cooperation Council for the Arab States of the Gulf (GCC). The GCC consists of six countries on the Arabian Peninsula - Bahrain, Kuwait, Quatar, Oman, Saudi Arabia and the UAE - that are moving towards a European style Union. United Arab Emirates is a member of the Gulf Co-operation Council (G.C.C.)[4].

IPR Registration and Renewals

As stated earlier in this report, and due to new immature IP laws and regulation adopted by the government of the United Arab Emirates, it is unfair for this country to be benched mark with other well established IP regimes. It s clearly noticed here, that the adopted procedures are not well established compared to the western countries.

The first Federal Trademark registrations were granted in 1993[5].
The Trade Mark Registration Office, a department within the Ministry of Economy and Industry, has put together a number of instructions regarding the submission of application for the trade mark registration and renewal therafter. The following points summaries the instructions which can be found in a preprinted format at the Trademark registration office:

“Applicant for registration of trademarks or their agents shall comply with the following instruction:

· Application for registration shall be submitted on the original standard form prepared for this purpose by the trade-mark owner if the latter has a domicile in the UAE or by a law firm if he has no domicile in the UAE or by a Licensed registration agent.

The above act of having a local law firm for all with no domicile in the country is considered a barrier for registration of foreign Trademarks were by the local presence of the Trademark owners is not existing. In other terms, the cost involved in the hiring of a UAE registered law firm is considered to be high compared to other countries or the trademark owners countries of origin. According to public reports issued in that regard, and due to the cost of processing the application and the government imposed fees for each application estimated around AED 7,000.00, the total registered trademarks for the last 10 years is only 50,000[6].

Trademark Registration Application must comprise the following documents:

The following prerequisite of requirement are mandatory for filing the Trademark registration form:

· Application for registration of the trade mark

· 14 pictures of the trade mark to be registered (5x6) or (6x7) sm to be submitted in an envelope ((the trade mark shall be on adhesive paper) in addition the trademark picture shall be pasted on form no.1.

· Legal translation of the trademark words if the same is depicted in a foreign language (either legal translation or as the words are shown in the dictionary).

· Copy of the license.

· A copy of the Memorandum of Association if local Registered or official partners listing names.

· A copy of the power of attorney executed in favor of the legal attorney duly attested and translated from the original reference.

· Applicant for the trademarks or their attorneys shall give their representatives power of attorney in writing authorizing them to submit the application for registration of the trademark and to follow up the relevant formalities at the Ministry and sign amendments and receive and present documents and certification and to submit a copy of the power of attorney with each Application for trademark registration.

· The application shall be submitted in folder.

· The fees payable for the registration of trademark is (AED 500) paid by way of e-dirham.

· Total fees to register the trade mark is AED 7,000.00

· The fees is for trade mark protection up to 10 years.”

Again the above mentioned long procedure and associated hindrance with the process of filing the application makes it unappealing to trademark owners to register their Trademarks. I personally believe that, if the above total fees is put to the minimal (AED 500-1000) and the process is enhanced and the requirement of a local registered law firm is not mandatory for filling the application, trademark owners will be encouraged to register their trademarks.

What is protected under UAE Laws

UAE has the following Federal Laws enforce, regarding the regulation and protection of industrial ownership of patents, designs and industrial prototypes, trademarks, intellectual works and copy right:

1- Federal Law No. 44 of 1992, regarding the regulation and Protection of Industrial Ownership of Patents, Design and Industrial Prototypes.

The implementing bill for the above law defines the provisions for interim protection of inventions, designs and industrial prototypes with respect to products displayed in exhibitions within the State, taking into account the provisions with regard to agreement and undertakings or the condition of reciprocity[7]. Article 2 of the above Federal Law also refers to the provisions of this law which shall not prejudice anything stipulated by International Agreements or Conventions to which the State of the United Arab Emirates is a party and which regulates the rights of citizens of the state which are party to these agreement and conventions and the rights of persons doing business with them.

2- Federal Law No. 40 of 1992, Regarding the Protection of Intellectual Works and Copyright.

This Law was repealed on 14 July 2002 by publication in the Official Gazette of UAE Federal Law No. 7 of 2002.[8]

3- Federal Law No. 37 of 1992 Regarding Trademarks and Ministerial Resolution No.6 of 1993 and No. 11 of 1995 with the Implementing Regulations[9].

4- Federal Law No. 8 for the year 2002 amending Articles of the Federal Law No. 37 for the year 1992.

The Trademark and IPR rules has been revised after UAE became a member of the GATT to comply with the WTO TRIPs Agreement(Law No. 8 for the Year 2002). UAE being a signatory to the World Trade Organization (WTO), has made its provisions relating to intellectual property as stated in the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), including reciprocity, are applicable to the UAE regarding Copyright and Related Rights as per Article (2) of Federal Law No. (37) for the year 1992 concerning Trademarks, the law consider coverage of the following: “Anything which takes a distinct form comprising names, words, signatures, letters, numbers, designs, symbols, titles, stamps, seals, portraits, engravings, advertisements, packages or any other mark, or combination of these, if this is used or intended to be used either to distinguish goods, products or services, whatever their origin, or to indicate that goods or products are attributed to the owner of the mark by reason of their manufacture, selection or trade in them, or to indicate the provision of certain services, shall be deemed a trade mark. A sound shall be deemed to be part of the trade mark if it accompanies it[10].”

UAE Procedures for enforcing TRIPS

Enforcing IP Rights is relatively straightforward. Practitioners from around the world will be familiar with procedures governing actions brought through the civil court, with the police or the public prosecutor. Some government departments have jurisdiction over infringement of registered trademarks. These include sections within the Department for Economic Development in Dubai and Sharjah and a section within Abu Dhabi municipality. They are given a quasi judicial authority to punish infringers, seize and destroy goods and impose fines, but cannot order that compensation is paid to a brand owner. Administrative officials have settled the vast majority of trademark infringement actions during the past 12 years, particularly in Sharjah and Dubai. A far fewer number of cases have gone to court, but as more cases (particularly criminal prosecutions) are brought to court, judges have become more familiar with infringement issues. They are assisted in their enforcement work by WIPO, the International Anti-Counterfeiting Coalition and the World Customs Organization.[11]

The UAE government initiatives, through the Ministry of Economy and the local government authorities, for IP protection has taken various types to enhance the protection and to encourage traders as well as individuals to use only original and licensed material. The following demonstrate some of the Ministry's initiatives in that regards:

· The Ministry will sign comprehensive agreements with suppliers of genuine software for all UAE governmental departments[12].

· The Ministry launched a 2 weeks national copyrights campaign, to educate the general public about the need to protect copyrights and intellectual property rights and the effect of such a practice on the national economy[13].

· Ministry of Economy inspection campaigns in close coordination with the National Media Council, Economic Development departments and Economic Crime departments of police bodies.

· Regular Review of the Laws: The Ministry new legal initiatives included review of the federal laws on the suppression of fraud in commercial transactions, trademark, copyright and related rights[14].

· The Ministry of Economy has announced an initiative along with the Trade Mark Owners Council (TMOC) to activate the protection of intellectual property rights (PIPR) at the state level[15].

According to a local report on trademark registration published by Al Tamimi and Company(locally registered law firm), the report states the following: “Historically, UAE courts and local authorities have considered the UAE to be a free market into which all licensed businesses could import goods without any restrictions such as restrictions on the sale of counterfeit merchandise. Accordingly, trademark owners had no real means available to protect their interests from infringing marks in the UAE.”

In the emerging presence of major multinational corporation (MNC) from around the globe, the government were compelled, due to the MNC continuous agitation and unending demands for protection, to make major efforts towards the sale of counterfeit merchandise. In order for the government to change the above historically established business norm within the business community will need a huge efforts and a long period of time to convince the public and local businesses to only seek and import genuine goods. The mentality of people here towards copyright and to the IPR is completely different than the west. For example, business owners, due to historically established businesss norm, ill allow the use of unauthorized software in their business as long as it is cheaper and they are getting local support of these unauthorized software.

Limitations of the Trademarks Registration and Protections under the UAE Federal Law

International Trademark Association (INTA) reports in their “Developing Countries Compliance with the TRIPS Agreement[16]” the following limitation in UAE is noted:

· Personal names are registrable with consent of the person.

· An application may be solely refused based on lack of intended use.

· No provisions concerning the use requirements. The usual practice is to register the mark in the same form in which it is used.

· Recordal of licensing is compulsory.

· Some provisions concerning geographical indications are not covered.

· Wines and spirits are not registrable.

· No provisions concerning the Evidence of Proof.

· No provisions for seizure of infringing goods.

· No provisions for destruction of materials used in the creation of infringing goods.

In another report published, maintained and updated regularly by Al Tamimi and Company the clarifies the above limitations with the following:

“Local authorities in two of the emirates have trained personnel to provide for immediate action in raiding shops/warehouses, seizing goods and levying fines on offending parties. Police departments in each emirate are also equipped with Commercial Crimes Departments who will raid and send samples to their laboratories to examine counterfeit goods and to provide detailed reports on the differences and similarities between genuine and counterfeit trademarks.

A trademark owner may file a suit in civil court to demand compensation for damages suffered. Prior to or during such an action, the owner may obtain a preliminary attachment order against the counterfeit goods. Trademark owners may also apply to the court to issue a precautionary attachment order against all inventory, equipment and tools used to manufacture counterfeit goods. Store signboards, packaging, labels and other items which bear the infringing mark may also be seized. In some cases, successful plaintiffs receive court orders for the destruction of the goods attached and compensation for damages although such compensation orders are difficult and rare in practice. Furthermore, courts are empowered to order the offending parties to terminate their production of the counterfeit goods and to publish the judgment in local newspapers as a means of alerting the public to the offences which have transpired. Repeat offenders may also have their trade licences suspended for a period between 15 days to 6 months depending on the Judge, thus preventing them from conducting further business in the UAE during that time. The UAE courts have been active in reviewing trademark infringement cases[17].”

Having seen the limitations covered by the INTA report 1999and the major changes in the government efforts to overcome these limitations as described in the report of Al Tamimi and Company, it is clear here that the government is serious in its efforts to implement the TRIPs agreement and are making a huge efforts in the protection process of the laws in place.

Trademark Restrictions:

Although the government has moved way ahead since the year 1999, but still there are limitations that they need to address regularly in the process of enhancing their trademark rules and regulations in place. According to the report on Trademark Registration published by Al Tamimi and Company, the following summaries the limitations of the trademark registration in UAE:

“The following may not be the subject of a trademark registration or any element thereof:

(a) A mark that is similar or identical to a trademark previously registered with respect to the same class of products or services. For use to be sufficient, it must be on a substantial commercial scale over an adequate time period in the normal course of the business activities of the party claiming use.

(b) A foreign trademark having international repute that extends beyond the borders of the country of origin, except pursuant to a request by the original owner.

(c) A mark which is not distinctive in character or property or a mark consisting of generic names used in relation to goods, products or services, or familiar drawings and ordinary pictures of goods or products.

(d) A mark which is contrary to morality or public order.

(e) The insignia of the Government, flags and other symbols pertaining to the UAE, Arab or international organisations or any agencies thereof, or any foreign country except with the authorisation of those parties as well as any imitation of such insignia, flags or symbols.

(f) Symbols of the Red Crescent or the Red Cross and other similar symbols as well as marks which are imitations of the same.

(g) Marks which are identical or similar to symbols of a purely religious nature.

(h) Geographical names where the use thereof may cause confusion as to the origin or source of the goods, products or services.

(i) Name, surname, photograph or emblem of a third party, unless he or his heirs' prior consent to use has been obtained.

(j) Marks containing titles of honor which the person applying for registration cannot prove that he is lawfully entitled to.

(k) Marks which may mislead the public or which contain false information as to the origin or the source of products or services, or about their other characteristics, as well as marks containing an imaginary, imitated or forged trade name.

(l) Marks owned by natural persons or corporate entities with whom which it is illegal to deal with.

(m) A mark which if registered for certain classes of products or services would diminish the value of other products or services distinguished by such mark.

(n) Marks containing the following words or expressions: “Patent”, Patented”, “Registered”, “Registered Design”, “Copyright” or “Imitation is forgery” or similar words and expressions.

(o) National and foreign decorations, coins and paper currency.

(p) A mark that constitute a translation of a well-known mark or other previously registered mark, where the registration would confuse the consumer public as to the identity of the products that are distinguished by the mark or similar products.”[18]

Limitations of Trademark Protection under UAE Laws:

The UAE trademarks laws provides trademark proprietors with the exclusive right to prevent unauthorized use of identical or similar marks in respect of goods or services for which trademark is protected. However, the subject UAE Federal Trademarks law, has some limitations that should be considered by the government for further development and perhaps a need to amend theses laws to overcome these limitations:

The TRIPS agreement signed by UAE states the following under Section 2. TRADEMARKS, Article 15. Protectable Subject Matter: Any sign, or any combination of signs, capable of distinguishing the goods or services of one

undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names…”[19]. The use of Person's own name is an example of the UAE trademarks law limitation, as the use of a person's name is not permitted by the law if it is likely to generate confusion with a previously existing trademark.[20]

Article 17 of TRIPS states the following: “Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the

owner of the trademark and of third parties”. Under the UAE trademark law, the laws allows a sign to be used descriptively to indicate a characteristic of goods and services. However, in case of a secondary meaning acquired by a protected mark comprised of descriptive words, use of such mark by a third party would constitute an infringement[21].

Finally, Disclaimers form of limitation arises from a procedural or an administrative rule (e.g. registration, opposition, etc). where a mark that is registrable as a whole but contains an element or a component that would not be registrable standing alone, the trademarks Office may stipulate a disclaimer on that element or component[22].

International Signed Agreements & Treaties by UAE 1972 - 2004

UAE has been a member of the WTO since April 10, 1996. It has signed the following Treaties and Agreements:

· Berne Convention for the Protection Literary and Artistic Work

· Paris Convention for the Protection Industrial Property 1-3-1996

· Patent Cooperation Treaty

· WIPO Convention

· WIPO Copyright Treaty

· Accession of the UAE to the Copy rights and Neighboring rights Agreement 29.02.2004

Conclusion

[1] Ministry of Economy, Laws & Regulations, [http://www.economy.ae/ENGLISH/LAWSANDREGULATIONS/Pages/default.aspx] February 28, 2010

[2] UAE government: political system - UAEinteract, [http://www.uaeinteract.com/government/political_system.asp] visited February 18, 2010.

[3] [http://www.uae.gov.ae/government/country.htm] visited February 24, 2010.

[4] CPA Global Limited, The IP Guide to the UAE, 2006, [http://www.cpaglobal.com/ip-review-online/1150/the_ip_guide_tothe_uae] visited February 24, 2010.

[5] CPA Global Limited, The IP Guide to the UAE, 2006, [http://www.cpaglobal.com/ip-review-online/1150/the_ip_guide_tothe_uae] visited February 24, 2010.

[6] Edward Hardcastle, CPA Global Limited, the IP Guide to the UAE, 2006

[7] Article 3. UAE Federal Law No.44 of 1992

[8] The Copyright Law in the United Arab Emirate, Al Tamimi & Company

[9] Bryan Cave, Business laws of the United Arab Emirates, the Middle East, Volume 2, BMLE UAE April 1999.

[10] Business Laws of the United Arab Emirates, The Middle East, Volume 2 - Bryan Cave, BLME UAE April 1999.

[11] www.cpaglobal.com/sites/default/files/ip_review_8.pdf

[12] Emirates News Agency, WAM, June 03, 2007.

[13] Emirates News Agency, WAM, November 04, 2009.

[14] http://www.uaeinteract.com/docs/Ministry_mulls_laws_against_commercial_fraud/38754.htm

[15][http://www.uaeinteract.com/docs/Dubai_strengthens_protection_of_intellectual_property_rights/24953.htm] visited on February 24, 2010.

[16] International Trademark Association, Developing Countries Compliance with TRIPS Agreements, page 19.

[17] [http://www.zu.ac.ae/library/html/UAEInfo/documents/UAETrademarkLaw.pdf] visited March 5, 2010.

[18] [http://www.zu.ac.ae/library/html/UAEInfo/documents/UAETrademarkLaw.pdf] March 8, 2010.

[19] Page 326, agreement on trade-related aspects of intellectual property rights

[20] Eman Abdelrahman, Limitation of Trademark Protection in UAE, Jan 2010.

[21] Eman Abdelrahman, Limitation of Trademark Protection in UAE, Jan 2010.

[22] Eman Abdelrahman, Limitation of Trademark Protection in UAE, Jan 2010.


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