IP in business transactions: United Arab Emirates overview

A guide to intellectual property law in United Arab Emirates. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax.

To compare answers across multiple jurisdictions, visit the IP in Business Transactions Country Q&A tool.

This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.

Chad Dowle, Rouse & Co International
Contents

Overview of main IPRs

1. What are the main IPRs in your jurisdiction? How are they protected?

Patents

Patents (including utility models) are protected through registration with the UAE Ministry of Economy, Intellectual Property Protection Department (IPPD) and/or through the Gulf Co-operation Council (GCC) Patent (administered by the GCC Patent Office in Riyadh, Saudi Arabia, and governed by the GCC Patent Law). Patents are valid for 20 years and utility models for ten years. The UAE is a member of the Patent Cooperation Treaty 1970 (PCT) and WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention) (see Question 26). The GCC Patent Office is currently considering accession to the PCT.

Trade marks

Trade marks are protected by registration with the IPPD. Well-known marks have a degree of protection whether registered or not, including against unauthorised registrations of translations. A GCC Trade Mark Law was issued in 2006 but has yet to be ratified. Unlike the patents regime, this law is not intended to create a common GCC trade mark registration but instead to unify laws in the GCC countries.

Copyright

Copyright can be registered with the IPPD. It is generally recommended to register a copyright if enforcement is required, but as in other jurisdictions, the right itself subsists from creation.

Design rights

Design rights are registered with the IPPD. The term of protection is ten years. The UAE is a member of the Paris Convention. Unregistered design rights are not recognised (although in some instances, copyright may apply).

Confidential information

Confidential information is protected under the general criminal, civil and, with respect to employees, labour laws. There are specific know-how provisions in the Patent and Design Law (section 5, Federal Law No. 44 of 1992 for the Organization and Protection of Industrial Property for Patents, Designs and Industrial Models (Patent and Design Law)). The Dubai International Financial Centre (DIFC) has issued a draft law on trade secrets specifically, although it is yet to be issued and it will not have effect across the entire UAE. A UAE federal law may follow.

Other

Trade name, look-alike and some counterfeit issues may also be recognised and actionable under the Commercial Transactions Law No. (18) of 1993 (Commercial Transactions Law), Commercial Law No. 4 of 1979 in relation to the prevention of fraud and deception (Anti-Fraud and Deception Law) and Federal Law No. (24) of 2006 concerning consumer protection (Consumer Protection Law).

The ".ae" domain is subject to a modified Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Plant Variety Rights are now recognised under a sui generis law.

For further information about the main IPRs, see Main IPRs: United Arab Emirates.

 

Maintaining IPRs

Search and information facilities

2. What facilities are available to conduct IP searches and obtain IP information on registered IP rights?

To monitor potential third party infringements, rights holders must use the services of specialist watch companies and/or their local legal representatives to monitor third party IP applications through the various IP-related journals issued by the IPPD.

There are no caveat provisions at the IPPD. If a rights holder needs to monitor a pending IP application so that it can be opposed or cancelled at the appropriate time, this would need to be managed through a local representative, who in turn will need to make regular status checks at the IPPD.

Patents

At present there is no online search facility at the IPPD for patents, so searches of published rights must be manually conducted through the official IP-related journals.

Trade marks

Trade mark searches can only be conducted through the officials at the IPPD. The information provided in the official search results is limited, so certified copies of the appropriate rights must be obtained to have full information. The IPPD registry does not currently allow for searches of device marks or logos due to the limitations of the computerised system used. However, in early 2012, the IPPD started to use the WIPO IPAS system and the IPPD registry is expected to commence searches of device marks or logos in the near future.

Copyright

Basic information searches are only available through the Ministry of Economy.

Design rights

At present there is no online search facility at the IPPD for designs, so searches of published rights must be manually conducted through the official IP-related journals.

Confidential information

No searchable register.

Maintenance of main IPRs

3. What steps must a business take to maintain the registration and status of its main IPRs?

Patents

Applicants must ensure they pay the annuity charges for patents within the relevant period or the right is treated as abandoned. These annuity charges must be paid even where the application is still pending.

Trade marks

There is a five-year period following the completion of the registration process within which the trade mark proprietor must make genuine use of the registered trade mark in relation to the goods or services for which it is registered. If the registered proprietor is unable to show genuine use either directly, or with his consent (such as by a licensee), the trade mark is liable to cancellation by a third party on the grounds of non-use.

In addition, a registered trade mark can be challenged by a third party where it has been illegitimately registered, for example in the face of an earlier conflicting right.

A registered trade mark may also be voluntarily cancelled by the owner. However, where there is a recorded licence against that trade mark, the licensee must also provide written consent to the cancellation, unless they have already renounced the licence.

Ownership of registered trade marks cannot be contested if the owner has continuously used the trade mark for five years from the date of registration, other than where the interested party can show the trade mark was illegitimately registered.

For a trade mark registration to remain valid, renewal fees must be paid every ten years to avoid the mark being cancelled by the IPPD. It is possible to restore expired registrations, provided the application is filed within three months of the expiry date, and the renewal fees and late-filing fine is paid.

Copyright

No fees are payable for the maintenance of the right or related registration.

Design rights

Applicants must ensure they pay the annuity charges for patents and designs within the relevant period or the right is treated as abandoned. These annuity charges must be paid even where the application is still pending.

Confidential information

The confidential nature of the information must be maintained. Businesses should take steps to ensure that confidential information is treated as such in their business and that suitable contractual terms are in place for all employees and contractors who may come into contact with the confidential information. If the confidential information is thought to have been mis-appropriated then suitable preventative action should be taken as soon as possible.

Monitoring infringement

4. What steps can a business take to avoid committing an infringement of another party's IPRs and to monitor whether a competitor is infringing its IPRs?

Searches of the main IP registries should always be conducted before launching a new product or business.

Local counsel may be required to guide businesses through these checks and advise on likely risks and ways to mitigate these. There are a number of local, regional and international IPR protection firms in the UAE that provide services including surveys and searches of the relevant markets for infringements.

General or competitor watches for trade marks, domain names, patents and designs can be established. Customs border watches can also be established.

Registration of a business's own rights allows quick and effective action to be taken once an infringement is identified and good enforcement programmes are built on strong IP protection programmes.

Patents

For patents, this process should include a search of the GCC Patent Office records (in Riyadh) as a GCC patent also has effect in the UAE. Both the UAE and GCC patent publications only provide details of patent applications which have been examined and so details of all applications are not available.

Trade marks

The IPPD registry searches provide limited details of all applications and registrations. Searches should reveal details of marks applied for but not yet examined. For trade marks and trade names, in-use searches should be made, as well as searches of key directories and company registry records (such as Chamber of Commerce records). Arabic language translations and transliterations should also be considered, as should whether a translation or transliteration would have any negative connotation in Arabic. The rights holder should also ensure non-Arabic marks do not have any negative connotations for UAE consumers.

Copyright

Copyright is more difficult to research and it is generally good business practice to secure appropriate warranties and indemnities from third party consultants who produce copyright content.

Design rights

At present there is no online search facility at the IPPD for designs, so searches of published rights must be manually conducted through the official IP-related journals. Businesses should also consider searches in the local markets to see if similar products are already available to consumers as the IP-related journals only cover published applications.

Confidential information

A business should ensure that it has the right procedures and contractual arrangements in place to ensure that the confidential nature of its own confidential information is maintained. To ensure that a business does not come into possession of confidential information belonging to others, appropriate enquires should be made of any supplier who offers information that the business would itself normally consider to be confidential.

 

Exploiting IPRs

5. What are the main steps in an IP audit in your jurisdiction to determine the content of an IP portfolio?

Any IP audit conducted in the UAE should include the following steps:

  • The identification of IPRs owned or used by a company and any licences or unregistered rights.

  • The verification of the current status of these IP assets by checking the official records.

  • The identification of any problems with the IP portfolio to ensure that:

    • the company has title to or valid license to the IP assets in question;

    • maintenance fees and renewals have been attended to where necessary.

The records of the IPPD are not open to public inspection and it is not possible to conduct online status checks. Therefore, a review of physical files at the main registry in Abu Dhabi may be required to obtain the necessary information to establish the contents of the portfolio. This may also require the official certified extracts to be obtained with payment of the appropriate official fees.

The IP audit may include further steps, such as:

  • Assessing whether additional rights should be acquired or applied for, such as the need to register trade marks or domain names in Arabic by using the necessary translation or transliteration.

  • Assessing the scope and market value of the IP assets in question.

  • Assessing the scope of the current levels of protection to see if they provide sufficient or excessive protection for the business and where necessary considering filling any gaps in protection.

  • Assessing whether notifications to the customs authorities or other such protection options are required.

  • Identifying additional licensing opportunities or areas for IP development.

  • Assessing the validity and enforceability of IPRs and the organisation's freedom to operate in a particular area, such as in relation to patent rights.

  • Identifying opportunities to capture IP being developed within an organisation, so informed and early decisions can be made about protection and exploitation.

  • A review of contracts with external consultants who may be developing IP on the business's behalf.

Patents

For both the UAE and GCC, the publically available records do not cover all patents applied for and so any audit is inherently limited.

Trade marks

The IPPD registry records cover all applications and so any audit is not limited in the same way that an audit of patent rights is limited.

Copyright

As registration is not mandatory, any audit will be limited to the business's own records.

Design rights

Publically available records do not cover all designs applied for and so any audit is inherently limited.

 

Assignment

Scope of assignment

6. On what basis can main IPRs be assigned?

Assignments can only be recorded against registered/protected rights. It is not possible to record an assignment against a pending application.

Patents

The right to a patent can be assigned once the patent has been granted. An assignment has no effect against third parties, unless it has been recorded at the IPPD and published in the Industrial Property Journal.

Trade marks

For trade marks, the registration certificate must be issued before an assignment can be recorded and partial assignment is not possible. An assignment has no effect against third parties, unless it has been recorded at the IPPD and published. Assignment or mortgage of a trade mark can be made with or without the enterprise, and with or without goodwill.

Design rights

The right to an industrial design can be assigned once the design has been granted. An assignment has no effect against third parties, unless it has been recorded at the IPPD and published in the Industrial Property Journal.

Formalities for assignment

7. What formalities are required to assign each of the main IPRs?

All assignments must be in writing and signed by the assignor and assignee. If the document is signed in the UAE, signing must take place before a UAE notary public.

Where the document is signed outside the UAE, the document must be executed before a notary, and then legalised up to the UAE embassy or consulate in that country. The UAE is not a member of the Hague Convention and so an apostille is not acceptable. Where the assignment document is in a language other than Arabic, it must be accompanied by an Arabic translation undertaken by a translator in the UAE authorised by the Ministry of Justice. In addition, the IPPD requires the assignee to submit a duly notarised and legalised power of attorney appointing a local agent in the case of a non-UAE based company.

Assignments can only be recorded against registered/protected rights. It is not possible to record an assignment against a pending application.

Main terms for assignments

8. What main terms should be included in an assignment of IPRs?

The main terms include:

  • The full details of the assignor and the assignee.

  • The full details of the registered rights to be assigned.

  • Written offer and acceptance of the transfer of the rights.

  • An indication of the consideration involved (this can be nominal).

 

Licensing

Scope of licensing

9. On what basis can the main IPRs be licensed?

Patents and design rights

The Patent and Design Law allows licensing of registered rights. The parties generally have freedom to contract in defining the licence terms, including the scope of the licence and the territory. Licences must not exceed the period of protection of the patent or design, and must be in writing. Licences are non-exclusive unless otherwise specifically stated and should be recorded with the relevant registry to have effect. The licensee has the right to bring proceedings for infringement of the patent or design if he notifies the licensor of the infringement and the licensor does not take appropriate actions within 30 days. If the licensee enforces the right, he may also seek compensation from the licensor. There are provisions relating to the compulsory licensing of patents.

Trade marks

Trade mark owners can license the trade mark for all or some of the products or services for which it has been registered by written and attested agreement (Article 30, Federal Law No. 37 of 1992 on Trade Marks amended by Law No. 19 of 2000 and Law No. 8 of 2002) (Trade Mark Law).

A licence agreement can be limited but should not include any restrictions that do not result from the trade mark registration, or which are not necessary to maintain such rights.

However, the agreement can include restrictions on:

  • The geographical area for marketing products or services bearing the trade mark.

  • The period for using the trade mark.

  • Warranting the quality control of products under the licence.

  • Actions that may lead to lowering the value of, or causing harm to, the products or services bearing the trade mark.

Sub-licensing of trade marks is only permitted where the licence between the trade mark owner and licensee allows for sub-licensing.

Copyright

Only the author and his successors, or the holder of the copyright, can grant licences for exploitation of the work (Article 7, Federal Law No.7 of 2002 on Copyrights and Related Rights) (Copyright Law). Licences can be in any form and both general and limited licences of copyright are recognised. All the rights that are not expressly assigned or licensed remain the property of the author. There are provisions relating to the compulsory licensing of copyright.

Formalities for licensing

10. What are the formalities to license each of the main IPRs?

Licences can only be recorded against registered/protected rights. Generally, where a licence of any IP right is signed outside the UAE, the document must be legalised at the UAE embassy in that country. It then must be legalised again and translated into Arabic on receipt in the UAE. Recording a licence can take about eight months to be effected and during this delay the licence has no effect against third parties.

Patents

Licences should be executed in writing and set out the terms on which the right is licensed. The licence must not exceed the period of protection and the territory, the rights of sub-license and assignment, and whether the licence is exclusive, non-exclusive or sole should be specified. Registration of the licence is required for it to have effect against third parties.

Trade marks

Trade mark licences should be in writing and notarised before a notary public. To be enforceable, the licence must be recorded at the Trade Mark Registry, without which the licence has no effect against third parties. The recordal is cancelled on a request from the trade mark owner or licensee giving evidence of termination of the licence agreement. The Ministry notifies the other party when the application to cancel is filed. The other party can oppose the cancellation application.

Copyright

Licences should be executed in writing and the subject matter together with the purpose, duration and territory should be specified. There is no requirement for licences to be registered but registration would facilitate the burden of proof in any court proceedings. However, to be able to formally record a copyright licence, the copyright works must first be registered with the IPPD. Registration of copyright licences is not common in practice.

Main terms for licences

11. What main terms should be included in an IP licence?

The terms included in an IP licence are determined by the business relationship, but generally include:

  • What is to be licensed and for how long.

  • Exclusivity.

  • Territory.

  • Right to sub-license.

  • Restrictions on use of the right.

  • Warranties.

  • Term, termination and consequences of termination.

  • Governing law and dispute resolution.

Sub-licensing is not permitted unless expressly allowed for in the licence.

 

Taking security

12. Is security commonly taken over IPRs?

It is possible to take security over IPRs (trade marks, patents and designs) in the UAE. As there are very few protected patents and designs, trade marks are more commonly secured. However, few security registrations are made in the UAE, due to the high costs in providing the supporting documentation, costs of registration and the authorities' lack of experience in dealing with and enforcing security interests.

Security interests can only be recorded against registered IPRs in the UAE and cannot be recorded against pending applications. As the registration process for IP rights can mean long delays (particularly patents and designs where registration can take at least five years from filing), there are inherent difficulties in recording security interests.

Once the IP right is registered, it can take a further eight months from filing the security registration application before the interest is formally registered against the right. This complicates matters as under the relevant UAE IP laws, security interests are only effective against third parties once they are recorded on the register. Therefore, if the security interests have not been recorded, a third party could potentially take a valid assignment of the rights in question.

 
13. What are the main security interests taken over IPRs?

The main security interests placed over IPRs in the UAE are all rights, title and interest in relation to the trade marks (and where applicable other IP rights).

To record a security interest, the applicant must have a local representative (who in turn requires a legalised power of attorney if the applicant is based outside of the UAE), together with a legalised copy of the security interest agreement, and a copy of the original registration certificate. Where these documents are not in Arabic, a legalised translation must be prepared before filing. The legalisation costs are considerable; at least US$1,000 per document. These documents are required at the time of filing.

Once filed, the registration is processed by the officials, which includes its publication in the official journal and two local newspapers. Once the publication has taken place, the security is registered against the right. This process takes around eight months from filing to registration.

A similar process must be followed to remove the security interest from the registered IP rights and a legalised agreement signed by both parties confirming that the security is to be removed must be filed. Again, this requires publication before it is formally removed from the registered rights. The removal process can take eight months.

Rights holders and entities with an interest in security registrations must therefore take into account the inherent delays and difficulties in security interest registrations in the UAE, including the high costs for registration. These can deter interested parties from recording their security in the UAE, but this in turn leads to considerable exposure, due to the fact that the security interests are only effective once formally registered.

 

M&A

Due diligence

14. What IP-related due diligence is commonly carried out in both a share sale and an asset sale?

Share sale

It is vital in both a share sale and an asset sale that thorough and complete due diligence in relation to IP is undertaken. At a minimum this should include:

  • Identifying and obtaining details and copies of all IPRs (including registered and unregistered IPRs) owned by the company or used in relation to the asset.

  • Obtaining copies of all licensing, registered user and other agreements relating to or for the use of any such IPR, and checking assignment and change of control provisions.

  • Obtaining details and reviewing any research and development carried out by the company or which is relevant to the asset being transferred.

  • Obtaining details of any disputes in respect of any IPRs together with copies of all relevant correspondence and papers.

Asset sale

See above, Share sale.

Warranties/indemnities

15. What IP-related warranties and/or indemnities are commonly given by the seller to the buyer in both a share sale and an asset sale?

Share sale

In both share sales and asset sales, consideration should be given, as a minimum, to incorporating the following warranties confirming that:

  • Complete and accurate details of all the company's registered IPRs (and applications for any such rights) and material unregistered IPRs has been disclosed.

  • All official registry fees and steps required for the maintenance, protection and enforcement of IPRs have been paid or taken.

  • All the company's IPRs are valid, subsisting and enforceable.

  • Complete and accurate details of all licences and agreements relating to IPRs that have been entered into by the company or are currently in negotiation have been disclosed.

  • The company legally and beneficially owns or has a licence to use all IPRs necessary to carry on the business in the manner currently carried on and to fulfil any currently existing plans or proposals.

  • None of the IPRs is the subject of any litigation, opposition or administrative proceedings.

  • The vendor will take all necessary steps after the sale to assist in the completion of any formalities required to transfer the assets.

Asset sale

See above, Share sale.

Transfer of IPRs

16. How are the main IPRs transferred in both a share sale and an asset sale?

Share sale

If the share sale results only in a change of ownership and the entity still exists in the same name, no action is needed. In circumstances where the shares were transferred and the company's name changed as a result of the transfer, it would be necessary to record a change of name with the appropriate registries.

Asset sale

In an asset sale, it is necessary to effect a separate assignment of the IPR associated with the asset, which should then be recorded with the registry concerned.

 

Joint ventures

17. Is it common for companies to set up joint ventures in your jurisdiction to develop projects that heavily involve IPRs?

Before the economic downturn, joint ventures to develop projects were common among companies. Most joint ventures were signed between local UAE companies and international companies. The joint venture agreement should clearly set out:

  • What IPRs will be subject to the joint venture.

  • Who will own the IPRs.

  • Whether any IPRs will be licensed to the joint venture from one of the parties and, if so, what payments they will receive for this.

In joint ventures, where it is likely the venture will develop further IP or make improvements to the IP contributed by one party, provisions on ownership of such IP are helpful.

The economic downturn highlighted the need for joint venture agreements to look forward at all possibilities. Agreements should have clear development milestones, quality control provisions and termination clauses that are more than simply boilerplate.

 

Competition law

Main provisions and common issues

18. What are the main provisions of your national competition law that can affect the exploitation of the main IPRs?

Federal Law No. 4 of 2012 on The Regulation of Competition was implemented late in 2012. Its primary aim is to regulate monopolistic activities and restricts such things as the setting of prices and restrictions on buying and selling of commodities which may be relevant in licensing situations. However, there are a large number of exclusions, see Question 20.

There are no additional specific competition law provisions that directly affect the exploitation of the main IPRs. However, the Consumer Protection Law and its implementing Regulations (No. 12 of 2007) stipulate general provisions for fair competition and combating monopolies. Any contracts or agreements that aim to create or have the impact of creating a prohibited monopoly contravene this law, although this is not known to have been used specifically in relation to the exploitation of IPRs.

The Commercial Transactions Law also covers situations relating to unfair competition and similar activities between traders, which may extend to the misuse of IPRs. The Anti-Fraud and Deception Law and its related regulations deal with similar issues.

Federal Law No. 18 of 1981, as amended by Federal Law No. 14 of 1988 (Commercial Agents Law) provides exclusive commercial agents with the right to prevent the importation of goods by others subject to an exclusive agency arrangement. This affects the exhaustion of rights in certain limited situations.

 
19. What are the most common national competition law issues that arise in the exploitation of the main IPRs?

Generally, parties are free to exploit IPRs within the scope of the rights devolved under the various specific IPR laws. Competition issues are likely to be peripheral and only apply in the case of a specific misuse of an IPR. However, see Question 9 with regard to licence terms.

Exclusions/exemptions

20. What exclusions or exemptions are available for national competition law issues involving the exploitation of the main IPRs?

There are a number of categories of business exempt from the Federal Law No. 4 of 2012 on The Regulation of Competition. These include business in the following industries:

  • Telecommunications.

  • Finance.

  • Cultural activities.

  • Oil and gas.

  • Pharmaceuticals.

  • Postal and express mail services.

  • Utilities such as electricity and water, as well as waste disposal and related environmental.

  • Transportation.

Government entities and businesses, as well as small to medium enterprises are also exempt. The latter category is yet to be defined and all exclusions are subject to review by the cabinet.

 

Advertising

21. To what extent do advertising laws impact on the use of third party trade marks?

There is no specific comparative advertising regulation. The Trade Mark Law governs the scope of protection of registration of a trade mark. However, there are no specified honest commercial use exceptions. The Commercial Transactions Law, Prevention of Fraud and Deception Law and regulations, and Consumer Protection Law all generally prevent false statements or misrepresentations in the course of trade and this could cover situations involving use of third party marks. A reasonableness test is likely to be applied, specifically, whether either:

  • The use is likely to indicate a connection with the legitimate brand owner when none exists.

  • The legitimate brand owner is likely to suffer damage.

  • Consumers are likely to be confused.

Federal Law No. 15 of 1980 on the Press and Publications (Publications Law) should also be considered as this law covers advertising. In general, it is prohibited to publish any untruths or forged documents. There are also local regulations relating to the approval of shop front signage prior to use, advertisements and specifically any sort of promotion.

In late 2012, the National Media Council issued Decision No. 35/2012. The Decision applies to audio, visual, audiovisual and print advertising broadcast in the UAE, whether or not the advertising was created in the UAE. It sets out the points advertisers should take into consideration in creating advertisements, including:

  • Intellectual property rights.

  • Unfair competition.

  • Consumer protection.

  • Commercial fraud.

It also sets out what may not be included in advertisements, including:

  • False information.

  • Misleading information.

  • Threatening information.

  • Untrue competitor comparisons.

  • Fraudulent or deceptive statements.

  • Counterfeit marks or signs.

  • Exaggeration.

  • 'Mixing' with the names, products or activities of another.

As the Decision is new at the time of writing, it is yet to be seen how it will be implemented.

 

Employees and consultants

22. Who owns each of the main IPRs created by an employee in the course of his employment? Is compensation payable to the employee? What main steps can an employer take to ensure it owns each of the main IPRs?

Patents, designs and know-how

Ownership. Employers' ownership of patents and designs is presumed under the Patent and Design Law. The Patent and Design Law gives the employer the right to apply for a patent/design for an invention/creation made by an employee during the scope of his employment, unless the employment contract provides otherwise.

Compensation. The employee inventor is, however, entitled to compensation and may receive additional compensation if the economic value of the patent is more than was expected when the assignment was signed.

Main steps. The Patent and Design Law protects know-how against unauthorised use, disclosure or transmission by a person who knew (or did not know through negligence) of its confidential nature, regardless of any provision in the employment contract. However, to be entitled to protection, the employer must ensure necessary steps are taken to preserve the secrecy of the know-how.

Provisions in the criminal, civil and labour laws also deal generally with confidential information and provide a further level of protection.

Copyrights

Ownership. According to the Copyright Law, an employer's ownership of the copyright in an employee's work is not presumed, even if the work was created within the scope of employment.

Compensation. The author is entitled to compensation in exchange for the right to exploit a work. This compensation can be in the form of a royalty or lump sum, but is subject to review by a court if it is or becomes detrimental to the rights of an author. The law does not specify what may be considered detrimental in these circumstances.

Main steps. The employer should secure specific assignments on a work-by-work basis. There is a prohibition on assignments of all future works created.

 
23. Who owns each of the main IPRs created by an external consultant? What main steps can a business take to ensure it owns each of the main IPRs?

Patents and designs

The same provisions prescribed for employees are applicable to an external consultant.

Copyrights

Specific assignments should always be executed for any copyright work created by a consultant.

 

Tax

24. What are the main taxes payable by a licensor on the licensing of the main IPRs?

The UAE is a tax-free jurisdiction. Official fees are payable on recording IPR licences on the relevant official register. Significant legalisation fees are payable on documents prepared outside of the UAE used in registering licences, such as powers of attorney, licence agreements and removal of licence registrations.

Double taxation arrangements may apply in the licensor's home country.

 
25. What are the main taxes payable by a seller on the disposal of the main IPRs?

There are no taxes (such as stamp duty) payable. Official fees are payable with respect to recording assignments of IPRs on the relevant official register. Issues relating to double taxation arrangements that may apply in the licensor's home country are outside the scope of this chapter.

 

Cross-border issues

26. What international IP treaties is your jurisdiction party to?

The UAE is also a party to the following international treaties:

  • WIPO Convention Establishing the World Intellectual Property Organization 1967.

  • Paris Convention.

  • WIPO Berne Convention for the Protection of Literary and Artistic Works 1971 (Berne Convention).

  • WIPO Copyright Treaty 1996.

  • WIPO Performances and Phonograms Treaty 1996.

  • WIPO Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations 1961 (Rome Convention).

  • PCT.

  • WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS).

In addition, the UAE is also a party to the following multinational laws:

  • GCC Patent Law.

  • GCC Common Customs Law.

  • GCC Trade Marks Law (approved by the UAE but not yet in force).

A detailed list of treaties can be found at www.wipo.int/wipolex/en.

 
27. Are foreign IPRs recognised in your jurisdiction?

Patents

As a member state of the GCC, the UAE recognises GCC patents.

Priority rights derived from foreign applications or registrations are also recognised.

Trade marks

The Trade Mark Law offers protection to trade marks with an international reputation (that is, a reputation which goes beyond the borders of the original country of the trade mark to other countries). Therefore, trade marks with an international reputation cannot be registered, except by the owner.

Priority rights derived from foreign applications or registrations are also recognised.

Copyright

The UAE offers protection to nationals of other signatory states for copyright works under the Berne Convention and Rome Convention.

Design rights

Priority rights derived from foreign applications or registrations are also recognised.

 

Reform

28. Are there any proposals for reform?

A GCC Trade Mark Law was issued in 2006 but has yet to be ratified by all GCC member states. This law does not intend to create a common GCC trade mark registration such as the GCC patent system but rather aims to unify trade mark laws in the GCC countries.

A draft UAE Patent and Designs law amending the Patent and Design Law was circulated in 2010 by the UAE government. The draft law proposes important amendments to the current patent law. Most notably it:

  • Introduces protection for integrated circuits. Original layout designs for integrated circuits that have not been commercially exploited for a period longer than two years anywhere in the world are now protected in the UAE under the new law. The conditions of registrability and the application requirements for these layout designs have been specified, and the term of protection has been specified as ten years from the date of application or of the date of first commercial exploitation in the country.

  • Clarifies a number of issues relating to patent and industrial design protection, including the requirement for absolute novelty, as well as the examination, opposition and renewal fees payment procedures and deadlines.

  • Extends the term of protection for industrial designs from ten to 15 years.

  • Raises the monetary penalty ceiling for rights infringement from AED100,000 to AED200,000.

  • Introduces a deposit of micro-organisms requirement.

  • Makes the process of providing a technical Arabic translation of specification and claims on filing a patent application easier by giving the applicant a grace period to file the translation.

  • Clarifies the procedures and deadlines to oppose published patents and to pay maintenance fees and fines.

  • Introduces protection for confidential information. The new law defines protectable confidential information as information that:

    • is not generally known or readily accessible to persons that normally deal with that kind of information;

    • has commercial value because it is kept secret;

    • the owner has taken reasonable steps to keep it secret.

The draft law also provides protection for confidential information that has been submitted to the relevant authorities to gain permission to market pharmaceutical, chemical or agricultural products. The law provides a mechanism to enforce these rights through the UAE courts against acts of unfair trade practices such as bribery, instigation, espionage or breach of non-disclosure agreements.

These laws are anticipated to come into effect by 2013.

 

Online resources

UAE Ministry of Economy

W www.economy.gov.ae/Arabic/DoingBusinessUAE/Pages/default.aspx

Description. Ministry of Economy website. Home to the IPPD. Laws are only available in Arabic and the English version of the relevant pages is under construction.

Dubai Courts database

W www.dubaicourts.gov.ae

Description. Dubai Courts also has a legislative search engine. Again, the laws are only available in Arabic.

UAE Ministry of Justice

W www.elaws.gov.ae/ArLegislations.aspx

Description. Further Arabic versions of the laws are also available on the Ministry of Justice website.



Contributor details

Chad Dowle, Partner

Rouse & Co International

T +971 4 224 7678
F +971 4 224 7658
E cdowle@rouse.com
W www.rouse.com

Qualified. New South Wales, Australia, 2000. Licensed as a Legal Consultant by the Rulers Court of Dubai.

Areas of practice. IP.

Recent transactions

  • Managing the global and regional IPR portfolios for a number of international and local clients, including one of the world's largest port operators and a well known luxury hospitality group.
  • Representing a leading international car-rental company in relation to misappropriation of its well-known trade mark by a local business.
  • Representing a leading sportswear manufacturer in the seizure of over one million counterfeit products annually during 2011 and 2012 in the MENA region.
  • Regional advisory work on franchising, manufacturing and licensing agreements.
  • Advising one of the world's largest finance-related companies in relation to regional clearance for advertising and promotional campaigns.
  • Advising a number of FMCG and hospitality companies on rules and regulations around advertising and promotion across the MENA region.

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