Patents, trade marks, copyright and designs in United Arab Emirates: overview

A guide to intellectual property law in the United Arab Emirates. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the patents, trade marks and designs Country Q&A tool.

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

Contents

Patents

1. What are the legal requirements to obtain a patent?

The patent must be new, contain an inventive step and be capable of industrial application.

 
2. What categories are excluded from patent protection?

Excluded categories include:

  • Plant varieties, animal species and biological methods of producing plants or animals.

  • Diagnostic methods, treatments and surgical operations.

  • Scientific and mathematical principles, discoveries and methods.

  • Guides, rules or methods of conducting business, or performing mental activities or playing games.

  • Inventions that violate public order or morals, or relate to national defence.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The UAE Ministry of Economy, Intellectual Property Protection Department (IPPD) registers patents (see box, The regulatory authority).

The application form must be accompanied by all of the following:

  • Two copies of the specifications, claims and an abstract (English and Arabic copies are required).

  • Two sets of any formal drawings, with Arabic translation.

  • A copy of the published Patent Cooperation Treaty 1970 filing or copy of the priority filing (if applicable).

Within 90 days, the applicant must file a legalised copy of their certificate of incorporation, and where applicable:

  • A legalised deed of assignment.

  • A legalised power of attorney for their local representative.

  • A copy of the international search report.

  • The international preliminary examination report, if available. 

The IPPD may refuse to grant a patent in circumstances of:

  • Non-compliance with formalities.

  • Non-patentable subject matter (see Question 2).

  • Lack of novelty.

  • Obviousness.

  • Lack of industrial applicability.

  • Lack of unity of invention.

(A GCC patent is also assessed for compliance with the general principles of Sharia.)

 
4. On what grounds and when can third parties oppose a patent application?

An interested party may file an opposition within 60 days of the publication of a granted patent based on:

  • Non-compliance with formalities.

  • Non-patentable subject matter (see Question 2).

  • Lack of novelty.

  • Obviousness.

  • Lack of industrial applicability.

  • Lack of unity of invention.

 
5. When does patent protection start and how long does it last?

Patent protection lasts for 20 years from the date of filing the application. The law does not provide for extension of the term beyond this period.

Annuity fees are payable at the beginning of each year of protection starting from the year following the date of filing the application. These are to be paid within a three month period. Another grace period of three months is allowed with a late-fee. The annuity fees must be paid even where the application is waiting to be granted.

 
6. On what grounds can a patent infringement action be brought?

A patent holder has the exclusive right to exploit the invention. A patent holder can prevent a third party from manufacturing, using, retaining, selling or importing the patented product or process (or product derived from a patented process).

 
7. Which courts deal with patent infringement actions?

The civil courts deal with patent infringement actions. There are federal courts, while the Emirates of Dubai and Ras Al Khaimah have their own courts. The Dubai International Financial Centre (DIFC) courts may have jurisdiction over infringements occurring in that free zone. A recent extension of the jurisdiction of the DIFC courts may also allow infringement proceedings to be brought there either where one of the parties is registered in the DIFC or by the agreement of the parties.

 
8. What are the defences to patent infringement actions?

Defences include:

  • Legitimate prior use.

  • Use that relates to academic research and is not an industrial/commercial use.

  • For transportation, where the product/process is imported temporarily into the UAE as part of a vehicle.

  • A counter-claim for invalidity.

 
9. What are the remedies in patent infringement actions?

Preliminary conservatory measures to conserve evidence may be ordered by a Court of Urgent Matters. Damages and permanent injunction and destruction orders may be ordered in full substantive proceedings.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

No.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

The trade mark must take a distinctive form and must be capable of distinguishing the products or services from others.

 
12. Is it necessary or advisable to register trade marks?

Registration is advisable to be able to take quick and effective legal action against unauthorised use. Most administrative authorities require proof of registration to take action.

Unregistered marks are afforded protection where prior use can be demonstrated in the UAE, or where the mark is well-known locally or internationally. In practice, such protection is only available in civil proceedings.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The IPPD registers trade marks (see box, The regulatory authority). The application must provide:

  • The name and address of the applicant.

  • Representations of the mark.

  • Details of the goods or services for which protection is sought.

  • Details of the local representative appointed by the applicant.

For all applicants from outside the UAE, the application must be accompanied by a legalised power of attorney to the local representative.

An application must be filed in Arabic and accompanied by the official fees. Accepted applications are published in the Trade Mark Journal and two local newspapers for opposition purposes, before registration.

All trade mark applications must be filed in person. Filing by facsimile, online, post, or courier is not permitted.

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

Trade marks can be refused on absolute grounds (such as it being descriptive, non-distinctive or contravening morality) and/or on relative grounds (such as it conflicts with an existing right).

A recent procedural notice issued by the IPPD has also indicated that examination reports and conditional acceptances will no longer be issued for procedural faults in application with the result that applications will be rejected.

 
15. On what grounds and when can third parties oppose a trade mark application?

Concerned third parties can oppose an application based on absolute and/or relative grounds within the 30 day opposition period (see Question 13).

 
16. When does trade mark protection start and how long does it last?

Trade mark protection lasts for ten years from the date of filing, but can be renewed. Late renewals are permitted on payment of a fine within the three-month period following expiry.

 
17. On what grounds can a trade mark infringement action be brought?

A trade mark infringement action can be made against another's use of a mark where there is likelihood of confusion with prior registered and/or user rights.

 
18. Which courts deal with trade mark infringement actions?

The civil courts deal with trade mark infringement actions (see Question 7).

 
19. What are the defences to trade mark infringement actions?

The Trade Mark Law (Federal Law No. 37 of 1992 on Trade Marks amended by Law No. 19 of 2000 and Law No. 8 of 2002) does not contain specific provisions in relation to defences to trade mark infringement actions. A defendant is left to argue that the allegation of infringement is not properly made. A defendant may also bring separate proceedings seeking the cancellation of the mark relied upon.

 
20. What are the remedies in trade mark infringement actions?

Anyone who has used a mark identical to a lawfully registered mark or who has imitated it in a manner that is likely to mislead the public, or has used a counterfeited or imitated trade name may be punished by:

  • Imprisonment.

  • A fine of not less than AED5,000.

  • Closure of the premises of a repeat offender for a period of not less than 15 days and not more than six months.

Damages may be claimed in a civil case (whether stand alone or attached to a criminal case). Customs/border measures are also available.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no fast track procedure for infringement actions. However, administrative enforcement can provide a swift method of dealing with counterfeits and imitative businesses than court proceedings.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

For a work to be protected under Federal Law No.7 of 2002 on Copyrights and Related Rights (Copyright Law), a work must be original/creative, in the literary, artistic or scientific domains and be expressed. A total of twelve categories of protected works are listed in the Copyright Law. The law recognises the rights of the holders of neighbouring rights, including the rights of performers, producers and broadcasters in this works and provides (Article 24) that all rules applying to the financial rights of authors under the law also apply to holders of neighbouring rights.

 
23. Can copyright be registered?

The IPPD registers copyright (see box, The regulatory authority).

The application form must be accompanied by:

  • Three copies of the works with a description.

  • Details of the author.

  • A legalised deed of assignment, where applicable.

  • A legalised power of attorney for the representative. 

 
24. When does copyright protection start and how long does it last?

Copyright protection starts from the date of creation of the work and its duration lasts for the lifetime of the author plus 50 years beginning from the first day of the calendar year following the death, or 50 years from the date of publication in the case of cinematographic works. In the case of works of applied art, the term is reduced to 25 years.

The financial rights of neighbouring rights holders last for 50 years from the first calendar year following:

  • First performance or fixing of a performance, in the case of a performer.

  • First publication, in the case of a producer.

  • First broadcast in the case of a broadcaster.

 
25. On what grounds can a copyright infringement action be brought?

Unauthorised copying, reproduction, distribution or publication of the copyrighted work can be grounds for an infringement action. The Copyright Law also provides for offences in relation to manufacturing and importing unauthorised copies, as well as tools designed to infringe copyright. Disabling technical measures intended to manage copyright is a further breach of the law.

 
26. Which courts deal with copyright infringement actions?

The criminal and civil courts deal with copyright infringement actions (see Question 7).

In each case, action must first be brought in the Court of First Instance. In certain circumstances, an application may be made to the Court for a Precautionary Measures order in relation to an infringement. The main case must be filed within 15 days of this order.

 
27. What are the defences to copyright infringement actions?

Certain uses are permitted under Article 22, such as making a single copy of a work for non-commercial personal use, quoting extracts for the purposes of criticism or debate, copying for educational or training purposes and other fair-use exceptions. These serve as a defence to an infringement action.

 
28. What are the remedies in copyright infringement actions?

Preliminary measures are available to conserve evidence. Customs/border measures are also available. Criminal penalties apply for some copyright infringement offences. Civil remedies include damages and the right of the court to order the equivalent of a permanent injunction and destruction.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

No.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

A design must:

  • Be new.

  • Be innovative.

  • Be usable in an industrial/handicraft product.

  • Not violate the public order or morals of the UAE.

 
31. Which authority registers designs?

The IPPD registers designs (see box, The regulatory authority).

The application form must be accompanied by two copies of the design and a description in English and Arabic.

The applicant must file a legalised copy of its certificate of incorporation within 90 days, and, where applicable, a:

  • Legalised deed of assignment.

  • Legalised power of attorney for its representative.

  • Certified copy of the priority filing.

 
32. On what grounds and when can third parties oppose a registered design application?

Oppositions must be filed within 60 days of publication. Grounds for opposition include that the design does not meet requirements for registration or the applicant is not entitled to the design.

 
33. When does registered design protection start and how long does it last?

Protection lasts for ten years dated from the date of application. Annuity fees must be paid (see Question 5).

 
34. On what grounds can a registered design infringement action be brought?

Grounds include an infringement of the exclusive right to use the design or to manufacture or import products derived from the design.

 
35. Which courts deal with registered design infringement actions?

The civil courts deal with copyright infringement actions (see Question 7).

 
36. What are the defences to registered design infringement actions?

Defences include:

  • That the alleged infringing design is not within the scope of protection of the registered design.

  • Prior use.

  • Counterclaim for revocation of a design.

 
37. What are the remedies in registered design infringement actions?

The remedies are the same as for patent infringements (see Question 9).

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

No.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Unregistered designs are not recognised. However protection of such designs may be achievable through copyright, or potentially as three-dimensional trade marks.

 
40. When does unregistered design protection start and how long does it last?

Not applicable.

 
41. On what grounds can an unregistered design infringement action be brought?

Not applicable.

 
42. What are the defences to unregistered design infringement actions?

Not applicable.

 
43. What are the remedies in unregistered design infringement actions?

Not applicable.

 

Confidential information

44. What are the legal conditions for rights in confidential information to arise?

The party asserting confidentiality must demonstrate that positive steps have been taken to keep the information confidential and that the nature of the information as such was communicated.

The Patent and Designs Law specifically recognises the right of confidentiality in relation to know-how and requires that steps are taken to preserve the secrecy of that knowledge in accordance with the implementing regulations. The regulations contain detailed requirements in relation to how the material that constitutes the know-how should be managed and provide for registration of know-how contracts with the Department of Industrial Property. For confidential information to qualify as know-how under the law, it must be technical in nature but capable of practical application, having resulted from the practice of a profession or trade.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

Unauthorised use, disclosure or publication of confidential information, including trade secrets, may permit civil or criminal action in circumstances where the defendant knew of the confidential nature of the information or is unable to deny knowledge.

There are general provisions in the Penal Code, Civil Transactions Law and Labour Law that can apply to confidential information. The Patent and Design Law contains provisions specifically relating to know-how. The DIFC has proposed a specific Trade Secrets Law (currently in draft) and a specific Federal Law is following.

 
46. Which courts deal with actions for unauthorised use of confidential information?

The criminal and civil courts deal with actions for unauthorised use of confidential information. See Question 7.

 
47. What are the defences to actions for unauthorised use of confidential information?

As there are no specific laws on the point, there are no specific legislative defences. General defences under law are applicable, including that the information was already in the public domain or that the information was developed independently by the defendant.

 
48. What are the remedies in actions for unauthorised use of confidential information?

Remedies include an order preventing use of the confidential information and damages. If unauthorised use of the confidential information has resulted from criminal acts then a criminal prosecution is likely with punishments including imprisonment and/or a fine.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

No.

 

The regulatory authority

The UAE Ministry of Economy − Intellectual Property Protection Department (IPPD)

W www.economy.gov.ae/English/industrialproperty/Pages/default.aspx

Main areas of responsibility. IP registration.

Guidance on application procedure. Limited information is available from the department's website.



Contributor profiles

Chad Dowle, Executive and Country Manager – UAE & KSA

Rouse & Co International

T +971 4 309 8000
F +971 4 309 8001
E cdowle@rouse.com
W www.rouse.com

Professional qualifications. Admitted to the Supreme Court of 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.
  • Advising one of the world's largest finance-related companies in relation to regional clearance for advertising and promotional campaigns and activation of major event sponsorships.
  • Advising a number of FMCG and hospitality companies on rules and regulations around advertising and promotion across the MENA region.
  • 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 counterfeit products during annual enforcement programmes in the MENA region.
  • Regional advisory work on franchising, manufacturing and licensing agreements.

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