“ 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 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