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 PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
The patent must be new, contain an inventive step and be capable of industrial application.
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.
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.
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.
Lack of industrial applicability.
Lack of unity of invention.
Patent protection lasts for 20 years from the date of filing the application.
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.
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).
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.
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.
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.
The trade mark must take a distinctive form and must be capable of distinguishing the products or services from others.
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.
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.
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).
Concerned third parties can oppose an application based on absolute and/or relative grounds within the 30 day opposition period (see Question 13).
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.
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.
The civil courts deal with trade mark infringement actions (see Question 7).
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.
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:
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.
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.
Original/creative works in the literary artistic or scientific domains are protectable by copyright (Federal Law No.7 of 2002 on Copyrights and Related Rights) (Copyright Law).
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.
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.
Unauthorised copying, reproduction, distribution or publication of the copyrighted work can be grounds for an infringement action.
The criminal and civil courts deal with copyright infringement actions (see Question 7).
Certain uses are permitted, such as making a single copy of a work for non-commercial personal use and other fair-use exceptions.
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.
A design must:
Be usable in an industrial/handicraft product.
Not violate the public order or morals of the UAE.
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.
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.
Protection lasts for ten years dated from the date of application. Annuity fees must be paid (see Question 5).
Grounds include an infringement of the exclusive right to use the design or to manufacture or import products derived from the design.
The civil courts deal with copyright infringement actions (see Question 7).
That the alleged infringing design is not within the scope of protection of the registered design.
Counterclaim for revocation of a design.
The remedies are the same as for patent infringements (see Question 9).
Unregistered designs are not recognised. However protection of such designs may be achievable through copyright, or potentially as three-dimensional trade marks.
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.
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), which may in time be followed by a specific Federal Law.
The criminal and civil courts deal with actions for unauthorised use of confidential information. See Question 7.
As there are no specific laws on the point, there are no specific legislative defences.
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.
Main areas of responsibility. IP registration.
Guidance on application procedure. Limited information is available from the department's website.
Qualified. New South Wales, Australia, 2000. Licensed as a Legal Consultant by the Rulers Court of Dubai.
Areas of practice. IP.