INTELLECTUAL PROPERTY Protection in UAE

INTELLECTUAL PROPERTY Protection in UAE – Why is important?

The value of Intellectual Property protection in UAE is quite often not appreciated by entrepreneurs.  The IP is one of the most valuable assets of any company, it´s the essence of the business; it protects genuine business assets that may be integral to the core services of the business and overall long-term viability. Hence it is critical to have a strong protection for the rights obtained from it which allows the creators or owners of IP to benefit from their work or from their investment and to enhance their competitive advantage in the marketplace.

We cannot assume that laws and procedures for the protection of IP rights are the same worldwide. In this post we are going to explain the minimum standards of protection to enforce your IP Rights.

What are the recognized IP Rights in the UAE?

The Ministry of Economy is the competent authority to register and protect intellectual property in the UAE. You can register a trademark, copyright and patent through the Ministry.

            Patent

According to Federal Law No. 31 of 2016, promulgated by Law No. 17 of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs, a patent protection in the UAE is granted for any new invention resulting from an innovative idea or innovative improvement of an invention in all fields of technology, provided that such an idea or innovative improvement has a scientific basis and is applicable.

The invention shall be deemed industrially applicable in its broadest term if used or utilized in such fields as agriculture, fisheries, handicrafts and services.

The excluded categories for patent protection include:

1. Researches, plant and animal species, and biological methods for production of animal and plant excluding microbiological methods and their products
2. Diagnostic methods, treatments and surgical operations needed for humans and animals
3. Scientific and mathematical principles, discoveries and methods
4. Guidelines, rules or methods followed to conduct business, perform mental activities or play games
5. Inventions that violate public order or morals, or relate to national defence.

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.

            Trademark

According to Federal Law No. 37 of 1992 on Trademarks, a trademark is any distinguished form of names, words, signatures, letters, figures, graphics, logos, titles, hallmarks, seals, pictures, patterns, announcements, packs or any other marks or group of marks, if they were used or intended to be used either to distinguish goods, products or services from whatever sources, or to indicate that certain services, goods or products belong to the owner of the trademark, because of their provision, manufacturing, selection or trading. The voice accompanying a trademark is considered a part of it.

There are two main differences between trademark law in the United Arab Emirates and other major jurisdictions:

• Unlike many countries, the UAE does not allow applications that cover multiple classes. This means that separate applications must be filed for marks used across different classes.
• It is not possible to register trademarks for goods that are offensive to public policy (such as gambling or alcoholic beverages).

Registration is advisable to be able to take effective legal action against any unauthorized use. Unregistered marks are afforded protection only in civil proceedings where prior use can be demonstrated in the UAE, or where the mark is well known locally or internationally.

Trade mark protection lasts for ten years from the date of filing, but can be renewed.

            Copyright when considering Intellectual Property Protection in UAE

The UAE Federal Law No. 7/2002 (“Copyright Law”) lists the following as types of works that covers copyright protection:

• Books, pamphlets, articles and written works;
• Computer programs and their applications, databases and such similar works as are determined by a decision of the Minister;
• Lectures, speeches, addresses and other works that have a similar nature;
• Dramatic works, including those with music and those without sound;
• Musical works with and without words;
• Audio, visual and audio-visual works;
• Architectural works and engineering drawings and plans;
• Works of drawing by means of line or colors; sculpture; engraving; printing on stone, fabric, wood and metals, and any similar works in the field of fine arts;
• Photographic and similar works;
• Works of applied art and plastic art;
• Illustrative pictures; geographical maps; diagrams; three-dimensional works relating to geography , topography and architectural designs; and
• Derivative works.

The following works are expressly excluded from copyright protection:

• Official documentation including legal texts, regulations, decisions, international agreements and judgments; and
• Works that have fallen within the public domain.

Since the UAE is a member of the Bern Convention, it is not mandatory to register copyright ownership in the UAE. Non-deposit of the work or non-registration of its rights or any action allotted to it does not prejudice any of the protection aspects or the rights decided by this law. Despite this, in practice it is beneficial to have a copyright registration for evidential purposes in case it is necessary to enforce the right. The Copyright Office in Dubai will issue a COPYRIGHT CERTIFICATE that will offer protection in the 180 countries of the Berne Convention.

The term of copyright protection is generally the lifetime of the author and 50 years thereafter. However, the duration of protection for works in the UAE can depend on the nature of the work seeking protection i.e. different terms apply for performing artists, applied art and broadcasts.

Enforcement of IP Rights in UAE when considering Intellectual Property Protection in UAE

As we previously discussed at the beginning of this post, the greatest challenge to the patent right is to enforce infringement of your IP Right.

On the one hand, the intrinsic nature of IP involves certain complexities regarding the scope of protection which makes it so important to wisely select the IP right you want to protect, since some intangible assets are still not protected under any UAE IP Law. As an example, the protection of confidential information. Even though, there are general provisions in the Penal Code, Civil Transactions Law and Labour Law that can apply to confidential information, there are no specific laws on this matter and therefore there are no specific legislative defences. The DIFC has proposed a specific Trade Secrets Law (currently in draft) and the Federal Law No. 31/2006 relevant to Trade Secrets, amended by the Federal law 31/2006, approved on 19 January 2021, however has not been published in the Government Gazette yet and accordingly, the new law is not yet available and has not yet come into effect.

On the other hand, the interconnection of the IP asset with different legal scopes could turn into an obstacle when exceeding the territorial power of the entity or the country.

Enforcement of intellectual property rights  takes place generally at the emirate-level (i.e., state level). However, Lack of IP enforcement actions within Free Trade Zones (FTZs) is a major concern. A more coordinated approach would be helpful between emirates and customs authorities to control the transshipment of counterfeit goods, especially in the Free Trade Zones in the UAE.

Certain well design steps shall be followed by enterprises to solve these issues. First, developing a business strategy based on compliance policies, according to their objectives, in order to protect IPRs. Second, performing a precise due diligence analysis to understand the value of the IP asset, the type of transaction and the involved parties and foreign market so it is easier to comply with international IP laws. In case of an IPR infringement the best method to resolve conflicts is adopting ADR. Nonetheless, the existing international IP legal framework does not provide companies with enough mechanisms to face these challenges as the guidelines, in some cases, are unclear or blocks the maximization of benefits.

Therefore, the assistance of legal experts in adopting a structure to protect your IP Rights its vital for your company. You are welcome to apply for a personal consultation on the protection of your IP Rights in UAE.

If you are considering doing business in the UAE you cannot miss this video of our Managing Partner’s YouTube channel where she explains the most important aspects to be considered at the time of deciding an investment in the United Arab Emirates or all of our previous posts.

**This information does not intend to be legal advice and the content is merely indicative and is subject to change as relates to governmental decisions.