The United Arab Emirates (UAE) is an attractive global business centre and gateway to the wider Middle East region for international companies seeking to commercialise and exploit their brands, products and technologies.
However, the UAE is often considered to present risks from an intellectual property (IP) infringement perspective – a perception that potentially can undermine a business’s strategy and desire to build strong brand awareness and regional demand.
Protection of IP
International companies seeking to capitalise on the growth opportunities presented in the Middle East region (e.g. the hosting of Expo 2020 in Dubai) should take comfort in the fact that brands, products and technologies can be protected in the UAE and the UAE has an IP framework that is broadly aligned with international standards.
Trade marks, designs and logos can all be registered.
Enforcement proceedings can be brought against suppliers of counterfeit goods and unauthorised sellers. Various sanctions and remedies are available, including provisional prevention measures, seizures and confiscations, criminal sanctions, and damages covering lost profits .
In relation to patents, wide protection can be obtained under the UAE’s local patent regime or under the Gulf Cooperation Council (GCC) patent protection regime, which gives patent holders GCC-wide rights that are enforceable in all GCC member states (including the UAE and other markets such as Saudi Arabia).
Copyright can be registered, although not mandatory. The benefit of doing so ensures that there is a verifiable record of the content of work as it existed at that point in time. This can be valuable evidence if a dispute arises and an author needs to prove a copyright claim (e.g. in a case concerning breach of copyright materials in a technology transfer project).
Third parties can rely on the doctrine of “fair use” in certain circumstances to use copyright work without a licensor’s permission.
In addition, the UAE is a party to various internal multilateral treaties regarding the protection and exploitation of IP, including the Patent Cooperation Treaty, the Berne Convention for the Protection of Literary and Artistic Works and the WIPO Copyright Treaty.
6 Challenges in Protecting and Exploiting IP
Notwithstanding this, when seeking to protect or exploit IP, it is important to be mindful of a number of unique challenges under UAE laws, which may not be familiar to IP lawyers in other jurisdictions. We have listed 6 common challenges below, but please note that this is a non-exhaustive list.
Marks and logos that convey messages and images that conflict with local laws and culture and public order will not be registrable. For example, class 33 under the Nice Classification (10th edition), which is for alcoholic beverages, is not available in the UAE, although it may be possible for a brand-owner to register its brand under other classes of goods and services.
Any disposal by an author of the total body of his or her future intellectual work or more than 5 future copyright works is void.
Licence agreements must be registered to be effective against third parties (although non-registration does not affect the contractual obligations between the original licensor and licensee).
A trademark licensee has no right to initiate legal proceedings in its own name against infringing entities.
Employers are not automatically deemed to be owners of works created by their employees during the course of employment.
Moral rights cannot be waived or assigned (including a right to withdraw a work from circulation), even where an author has assigned a work’s financial rights.
Addressing these Challenges
Companies looking to develop, protect or exploit IP in the UAE need to give thought to including mechanisms in their contracts to address these challenges.
If the company is licensing its IP, impose responsibilities on the licensee to register any licences in the UAE and notify the company of claims relating to IP infringements, and including a procedure for dealing with such claims.
If a company is paying for the development of IP, establish contractual (as well organisational arrangements) whereby employees or contractors are required to assign financial rights in works and execute retrospective assignments when required.
When dealing with moral rights, impose clear compensation obligations in the event that an author seeks to withdraw a work from circulation.
In addition, companies should consider taking steps to register IP ownership rights or licences independently of any underlying agreement relating to such IP.
In conclusion, it pays to take time before developing and exploiting IP in the UAE to consider ways to protect your organisation’s IP in a manner that complements your organisation’s business objectives and growth plans. At Latham & Watkins, we are able to assist organisations looking to do business in the UAE in understanding the local IP regime and how they can best protect their IP. If you require further guidance on this topic, please do not hesitate to contact Brian Meenagh or Madonna Kobayssi.