Practical Tips For IP Rights Enforcement in the

“Practical Tips For IP Rights Enforcement in the UAE ” Presented By: Faisal Daudpota Seniro Associate IP/IT Dept 22 December 2010

Overview • Enforcement Options Generally • • • Trademarks Rights Enforcement Copyrights Enforcement Patents and Designs Rights Enforcement Domain names Rights Enforcement Trade secrets Rights Enforcement

Enforcement Options Generally • • • Legal Notice Administrative Action Criminal Action Civil Action Customs Enforcement

Trademark Rights Enforcement • Administrative Action • Depart of Economic Development / Municipality • Copy of Registration Certificate + Fee • Results in Confiscation / Destruction of Infringing Goods / Closure of the shop in the case of repeat offence

Trademark Rights Enforcement • Criminal Action • Police • Copy of Registration Certificate + Analysis at Criminal Lab • Results in Confiscation / Destruction of Infringing Goods / Penalty / Jail time

Trademark Rights Enforcement • Civil Action • • More formalities When You want Damages Documentary evidence required Usually companies fight out when they have competing commercial interest

Trademark Rights Enforcement • Customs Action • • • Separate Customs Authorities Recording Trademarks with Customs Application to Suspend Clearance Registration Certificate + Fee Results in Confiscation / Destruction of Infringing Goods

Trademark Rights Enforcement • Customs Action • Free Trade Zones & Transshipment of Counterfeit Goods • The free trade exemptions are sometimes abused by the counterfeiters and pirates to: • alter the true origin of goods in transit • as well as store, manufacture, distribute, and sell counterfeit goods

Trademark Rights Enforcement • Customs Action • Types of Counterfeiting Operations through FTZs • Re-export and distribution after ‘sanitizing’ documents • Re-packaging or labeling of unfinished goods and then exporting them as finished goods • Complete manufacturing of counterfeit goods

Trademark Rights Enforcement • Customs Action / With More then 630 FTZs

Trademark Rights Enforcement • Customs Action / Disrupting the Routing Opportunities for Counterfeiters are Unlimited All we can do now is to Disrupt We Cannot Eliminate the problem

Copyrights Enforcement • Administrative Action / Criminal Action • Not possible in all cases • Because you do not have a registration certificate all the time to prove your right • Easy in software copyright cases • Next to impossoble in online copyright infringement

Copyrights Enforcement • Civil Action • Preferable • Result in damages and permanent restraining orders • Interim Remedies not common

Copyrights Enforcement • Customs Action • No Recordation Procedure • In very limited circumstances • For example game software but coupled with trademark rights infringement

Patent & Design Rights Enforcement • Civil Actions advisable (though the law stipulates punishments also) • Limitation of technical issues – dependence on Expert • Translation Issues • Results in Damages / permanent restraint of infringer

Domain Names Rigths Enforcement • UDRP Complaint at WIPO • (. ae) domain or (. com) domain • Registration Certificate (there are exceptions) + Fee • Alternate Dispute Resolution / ADR • You Can Still Go to a Civil Court

Trade Secrets Rigths Enforcement • Civil Actions advisable (though the law stipulates punishments also) • The Know-how provision in the Patent Law • Limitation of technical issues – dependence on Expert • Translation Issues • Results in Damages / permanent restraint of infringer • Not tested so far

Thank You Any Questions