DIFC IP Law Update 2025

Dubai Creek

Author Aravind Parameswaran Licence  CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

As a result of such initiatives as the Innovation Hub and the Metaverse Platform, new products and services are being developed in the Dubai International Financial Centre ("DIFC") in such technologies as fin-tech, virtual reality and artificial intelligence. They will require legal protection in the DIFC and beyond.  That is not as straightforward in the DIFC as it is in the rest of Dubai because the DIFC has its own legal system. It is for that reason that the Ruler of Dubai proclaimed the DIFC Intellectual Property Law (DIFC Law No. 4 of 2019) on 14 Nov 2019.

That law does not establish any IP rights for the DIFC as such.  It implements the existing intellectual property laws of the United Arab Emirates ("UAE") in the DIFC and provides for their enforcement.  These are:

• the Federal Decree-Law No. 38 of 2021 on Copyrights and Neighbouring Rights; 
• the Federal Law No. 11 of 2021 on the Regulation and Protection of Industrial Property Rights; 
• the Federal Law No. 17 of 2009 on the Protection of New Plant Varieties; and 
• the Federal Law No. 36 of 2021 on Trademarks.

The relationship between those federal enactments and DIFC Intellectual Property Law is explained in my article Introduction to, and Overview of, the New DIFC Intellectual Property Law which I wrote on 11 Dec 2019.

In that article, I observed that:

"The most interesting provisions of the new Law relate to the Commissioner of Intellectual Property, Art 5 provides that the Law and any legislation made for the purpose of that Law shall be administered by the Commissioner."

The first Commissioner was Dr Tarek Hajjiri and he gave a very interesting interview to Mariam Sabet on YouTube at the INTA virtual conference in 2021.  Dr Hajjiri held that appointment until 2023 and his successor is Katherine Nixon.

I noted that the Commissioner has very extensive powers under art 59 (3) of the DIFC Intellectual Property Law in my article.  Art 59 (3) (a) requires him or her to receive and decide on all complaints or disputes filed in connection with the law in the DIFC, and to impose fines for non-compliance with the Law and any related regulations.  Drafting those regulations and submitting them to the DIFC Directors was another of the Commissioner's responsibilities,  The DIFC Intellectual Property Regulations came into force on 5 July 2021. 

As I stated in The New DIFC Intellectual Property Law - Patents and Utility Certificates on 9 Jan 2020, anyone seeking a patent for the DIFC may apply to the Gulf Cooperation Council Patent Office for a GCC patent or to the federal Ministry of Economy for a UAE patent.  I wrote about GCC patents in Patents: Gulf Co-operation Council on 21 Jan 2011.  The Ministry of Economy is also the appropriate authority for the registration of utility certificates, trade marks, industrial designs and the layout of integrated circuits that apply to the DIFC.  The UAE is party to the Patent Cooperation Treaty ("PCT") and the Madrid Protocol.

IP rights that do not have to be registered with the UAE Ministry of Economy include copyrights, rights in performances and other neighbouring rights and the right to prevent unauthorized use or disclosure of trade secrets.  I discussed those rights in The New DIFC Intellectual Property Law - Copyright and Neighbouring Rights on 28 June 2020 and DIFC Trade Secrecy Law on 7 July 2021.  Two IP rights that predate the new Law are the rights to enforce an obligation of confidence under art 37 of the Law of Obligations DIFC Law No. 5 of 2005 and the right to bring an action for passing off under art 38.. I wrote about the duty of confidence in DIFC Law of Confidence on 27 Jan 2021 and The DIFC Law of Passing off on 7 April 2011.

A rights owner who believes that his or her right has been infringed has the choice of complaining to the Commissioner under art 59 (3) (a) of the DIFC Intellectual Property Law and art 2 or bringing an infringement action in the Court of First Instance.   By far the cheaper and less formal procedure is to complain to the Commissioner.  Complainants complete a simple form and pay an initial fee of US$500. By contrast, the fees for issuing a claim form range from US$1,500 to US$130,000 depending on the value of the claim.  The Commissioner has jurisdiction to hear claims under the Law but not for breach of confidence or passing off.  The Court, on the other hand, can grant interim injunctions including search orders and freezing injunctions.  It can also conduct inquiries as to damages and accounts of profits. Most complainants, particularly startups and small and medium enterprises, will complain to the Commissioner and the DIFC has prepared a helpful guide to assist them,  Those with urgent high-value claims are likely to prefer the courts.

Although there is no intellectual property division in the Court of First Instance the Technology and Construction Division will hear claims relating to the design, supply and/or installation of computers, computer software and related network and information technology systems and services under Rule 56 (3) (5) of the DIFC Court Rules. Similarly, the Digital Economy Court will hear claims involving:

"(1) fintech;
(2) digital assets, including the digital environment, platform or system in which a digital asset exists or may exist;
(3) distributed ledger technology and blockchains including applications based on blockchain technology;
(4) substantial or complex databases;
(5) artificial intelligence and any devices or components of devices whether integrated or not that are dependent on or controlled by artificial intelligence;
(6) data stored digitally including on cloud or other remote platforms, including distributed ledger technology;
(7) e-commerce, online intermediaries, digital payment platforms or marketplaces which include virtual asset service providers in relation to: exchange between virtual currencies; exchange between virtual and fiat currencies; the safe-keeping or administration of virtual assets; or, enabling participation in financial services connected to the offer or sale of virtual assets;
(8) interactions and transactions within virtual reality and the Web3 economy, including digital peer-to-peer transactions;
(9) the application of automatic dispute resolution processes;
(10) decentralised autonomous organisations (DAOs), decentralised finance vehicles (DeFi) and decentralised applications (DApps);
(11) the validity of digital signatures and digital identification and verification systems;
(12) the design, supply and /or installation of computers, computer software and related network and information technology systems and services;
(13) cyber-physical systems such as unmanned aerial vehicles, 3D printing technologies, and robotics;
(14) intellectual property claims arising out of or in relation to any of the above claims;
(15) insurance claims arising out of or in relation to any of the above claims;
(16) claims under the DIFC Data Protection Law (Law 5 of 2020); and
(17) any combination of the above claims."

under Rule 58 (7).

As all the IP rights enjoyed in the DIFC except the obligation of confidence and the law of passing off are established under federal law it is conceivable that conflicts will arise between rights existing in one system and those existing in the other.   The Ruler of Dubai jas recently established a Conflicts of Jurisdiction Tribunal to resolve such disputes.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

UK's New IP Attaché to the Middle East and North Africa

Author Nederlandse Leeuw Licence CC BY-SA 4.0 Source Wikimedia Commons

Jane Lambert

The UK has a new IP attaché for the Middle East and North Africa ("MENA") region.  Her name is Sanaz Javadi Farahzadi and she is interviewed in the latest issue of IP Overseas.  Ms Farahzadi succeeds Yamish Yakoob who was IP attaché to the Gulf Cooperation Council states between 2021 and earlier this year. Further information about Ms Farahzadi and her mission appears in the latest edition of the Attaché Contact Details guidance.

MENA is a large and diverse region stretching from the Atlantic to the Arabian Gulf. It includes some of the wealthiest states on the planet as well as some of the poorest. Wars are taking place in several parts of the region and the political complexion of the governments ranges from absolute monarchy to Ba'ath socialism.  

The countries of the region vary widely in their level of protection for intellectual assets.  Morocco and Tunisia have validation agreements with the European Patent Office.  Saudi Arabia is hosting the Design Law Treaty Diplomatic Conference.  The TRIPS agreement was signed in Marrakech.  On the other hand, Palestine offers much more limited IP protection as I stated in  IP Law in Palestine last year.

As I mentioned in Why is there no longer a British IP Attaché to the Gulf Co-operation Council? these chambers have invested heavily in the region.  We are all entitled to appear as advocates before the English language, common law, commercial courts in Abu Dhabi, Doha and Dubai and several of us have appeared before those tribunals.  We also sit as or appear before arbitrators and mediators in all parts of the region.  We can also advise and represent clients from that region with interests in the United Kingdom,

Stephen Somerville, our first deputy senior clerk is currently in Dubai.  Should anyone in that Emirate wish to meet him his email address is ssomerville@4-5.co.uk.  Anyone wishing to discuss this article may call me during UK office hours on +44 (0)20 7404 5252 or send me a message through my contact form,

Saudi Arabia to host Design Law Treaty Diplomatic Conference

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Jane Lambert

A diplomatic conference will take place in Riyadh between 11 and 22 Nov 2024 to conclude and adopt a design law treaty.   Although art 5quinquies of the Paris Convention for the Protection of Industrial Property requires industrial designs to be protected by all countries of the Paris Union how they are protected varies greatly from country to country.  Countries like the UK and EU member states provide a system of design registration.  Other countries like the USA grant design patents.  The purpose of the proposed treaty is to harmonize and facilitate the registration procedure.

A draft treaty and implementing regulations have already been proposed.  The proposed treaty consists of 32 articles covering abbreviations, general principles, filing, grace periods, publication, terms of protection, renewal, regulations and governance.  An agenda, timetable and social programme have also been published.  The proposed treaty will not affect contracting parties' obligations under the Hague Agreement or Section 4  of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs").

Further information on the conference can be contained from the World Intellectual Property Office and the Saudi Authority for Intellectual Property websites.  Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page,

Why is there no longer a British IP Attaché to the Gulf Co-operation Council?

Author IJA Public Domain Source Wikimedia Commons

British EmbassyAbu Dhabi

 

Jane Lambert

The UK Intellectual Property Office has published a Linkedin newsletter called IPO Overseas,  It is about the UK's network of overseas IP attachés, trade experts and UK-based policy teams.  The latest issue, which was published on 26 July 2024, is entitled "IPO's Middle East and North Africa ('MENA') International Team.,  Although the subtitle is "How our IP Attaché network can help you do business with the Middle East and North Africa" the publication features an interview with  Ben Llewellyn-Jones, IPO’s Director of Business and International Policy and not with an attaché.

The British government used to have an attaché to the Gulf Cooperation Council ("GCC"), On 27 Oct 2021 I wrote that HM government signalled the importance of the GCC as a trading and investment partner by appointing Yamish Yakoob as its first Intellectual Property Attaché to the bloc in UK's New Intellectual Property Attache to the GCC.  I based my article on the IPO's Case Study IP Attaché: Yamish Yakoob, Gulf Cooperation Council of 7 Oct 2021 which was apparently withdrawn on 27 March 2024.  No explanation has been given for the withdrawal.  Mr Yakoob is still at the British embassy in Riyadh but his new job title is "Retail, Food & Drink @ British Embassy." His LinkedIn page indicates that he started that job in April 2024.

In his interview, Mr Llewellyn-Jones said that the GCC is this country's 4th largest non-EU trading partner after the USA, China and Switzerland and that British trade with that region is worth around £59 billion.  He indicated that the government is negotiating a free trade agreement with the GCC.  He mentioned that UK businesses can face a number of challenges when registering and protecting their IP in the Middle East. These can range from the need to take effective action against trade mark infringement to high registration fees.

Mr Llewellyn Jones encouraged British businesses to use the IPO's international team: The team knows that local IP systems can be difficult for some to navigate even if a business has registered its IP in the UK with the IPO. He said:

“This is where our international team can help with their local knowledge”, said Ben. “We can help to guide businesses through these IP systems, guide you through what to expect and support you as you build your business overseas”

His top tips were:

• "If you're looking to trade in MENA and the GCC, include IP as part of your market research or export plan
• Do your due diligence and check, for example, if someone already registered a trade mark that is the same as yours. If you're not sure, we'll have a complex portfolio of IP rights and legal experts who will be able to help you.
• Finally, if your IP is an important part of your business value, register your rights as soon as you can!"

The British government has published further guidance and information on doing business and the IP issues that arise in the Middle East which is not linked directly to the IPO's newsletter.   However, I incorporated that guidance and information and combined it with my own in IPO Guidance on the Gulf Cooperation Council on 8 April 2023.

One resource that the IPO does not mention and perhaps should is that there are English-speaking common law courts in Dubai, Abu Dhabi and Qatar.  Each of those courts has judges who practised in the UK or other Commonwealth common law jurisdictions and all members of the Bar of England and Wales can qualify easily to appear before them.  If a British company is thinking of licensing its technology, distributing its goods or franchising its services in the region it may find advantages in choosing the law of one of those legal systems as the proper law and its courts as the forum for future dispute resolution. 

This is an area in which my chambers have some expertise.  Colleagues who practise other areas of law already appear before those courts.  Last year, Stephen Somerville, our first deputy senior clerk visited Dubai and he has been sufficiently encouraged by that visit to make a second trip later this year.   Anyone interested in using our expertise and connections should contact me on +44 (0)20 7404 5252 during UK office hours or send me a message at other times through my contact page.

IP Law in Palestine

 

Jane Lambert

Gaza and the West Bank of the River Jordan may not be in the Gulf but they are part of the Middle East North Africa region and those districts have plenty of links with the Gulf Cooperation Council states. Right now intellectual property is probably the last thing on the minds of the inhabitants of those areas but it is to be hoped that a time will come when the guns fall silent and their shattered economies can be reconstructed. Such reconstruction will require massive investment much of which could come from the GCC countries.  However, such investors will wish to see that their investments in branding, design, technology and creativity are protected adequately.

Finding information about the legal protection that is available in those territories is not easy because they are among the few parts of the world that are not yet party to the WIPO Convention.  That does not, however, mean that they have no interest in intellectual property.  When I visited the WIPO between 2 and 4 Sept 2019 to address the Advisory Committee on Enforcement I had the honour of sharing a table with the Palestinian observer to the proceedings (see Another Side of the WIPO 5 Sept 2019 NIPC News).  While chatting in the intermissions I learned that he was legally qualified and that he had actually been instructed in IP cases before entering public service.

As he did not seem to know any of the delegates whom I had been addressing I offered to introduce him.  We started with the British delegation which was staffed by Elizabeth Jones of the Intellectual Property Office and District Judge Hart of the Intellectual Property Enterprise Court small claims track and had just moved on to the American delegation when the chairperson called the meeting to order and we had to return to our seats.

The only information that I have been able to find out about Palestinian IP law from the WIPO Lex web page is that it is party to 29 treaties none of which seems to relate to IP and that the link to its national intellectual property office leads to An-Najah National University.  Another page on the WIPO website states:

"The term patent protection is four years as from the filing date, renewable for additional three periods of four years each. Palestine is not part of the TRIPS Agreement; therefore it is not obliged to have a minimum 20 year protection term."

I have, however, found a thesis by Ihab G. Samaan entitled A Historical View of Intellectual Property Rights in the Palestinian Territories which states on page 63 that:

"there are a number of laws protecting intellectual property rights. These are inherited from the British Mandate and the period of Jordanian rule in the West Bank. The Patents and Designs Ordinance No. 33 of 1924 and the Trademarks Ordinance No. 35 of 1938 are in force in the Gaza Strip, while the Patents for Inventions and Industrial Designs Law No. 22 of 1953 and the Trademarks Law No. 33 of 1953 are in force in the West Bank. The Copyright Act of 1911, as incorporated in Palestine and amended by the Copyright Ordinance No. 16 of 1924, is in force in both the West Bank and the Gaza Strip."

This seems to be consistent with information published by law firms with offices in the area.  The reason for the differences between the laws in Gaza and those in the West Bank appears to be that Gaza was administered by Egypt between 1948 and 1967 and the West Bank by Jordan during those years.

If and when I find out more about the laws of those territories I shall publish them here.   In the meantime, anybody who wants to discuss the topic can call me on +44 (0)20 7404 5252 during UK business hours or send me a message through my contact page,  

Enforcing Intellectual Property Rights in the DIFC

 

Jane Lambert

On 14 Nov 2019, the Ruler of Dubai proclaimed the DIFC Intellectual Property Law (DIFC Law No. 4 of 2019) ("the IPL"). That legislation does not create a separate body of intellectual property rights for the Dubai International Financial Centre ("DIFC"). It provides for the enforcement of rights subsisting under Emirati federal law in the financial centre.  I have discussed the IPL in the following articles:

• Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019; 
• The New DIFC Intellectual Property Law - Patents and Utility Certificates on 9 Jan 2020;
• The New DIFC Intellectual Property Law - Designs on 7 June 2020; 
• The New DIFC Intellectual Property Law - Copyright and Neighbouring Rights on 28 June 2020;
• The New DIFC Intellectual Property Law - Trade Marks and Trade Names on 20 Sept 2020; and
• DIFC Trade Secrecy Law on 7 July 2021.

One of the most interesting provisions of the IPL is the establishment of a Commissioner of Intellectual Property ("the commissioner").  Art 5 of the enactment provides that the IPL and any legislation made for the purpose of that law shall be administered by that commissioner.  He or she has very extensive powers under art 59 of the IPL.

In accordance with art 56 (1) of the IPL, the President of the DIFC has appointed Dr Tarek Hajjiri as the DIFC's first commissioner.   He has been interviewed on Al-Tamimi & Co's YouTube channel (see Mariam Sabet interviews Dr Tarek Hajjiri, Senior Vice President - #INTA202). One of his most important functions is

"receiving and deciding on all complaints or disputes filed in connection with the Law in the DIFC, and imposing fines for non-compliance with this Law and any related Regulations"

under art 59 (3) (a) of the IPL.  Pursuant to art 60 (1) of the law, the DIFC's directors have made the Intellectual Property Regulations ("IPR") to assist him in exercising that function.

Complaints filed with the commissioner must contain the following information:

"(a) full name, address and capacity of the Complainant;
(b) the name and details of the Respondent;
(c) the details of the complaint;
(d) a detailed statement of the alleged facts which the Complainant believes gives rise to the complaint; and
(e) the relief sought by the Complainant."

The complaint should be  supported by the following documents:

"(a) proof of ownership of intellectual property rights or the right to claim protection pursuant to such ownership, which may include patent registration certificates, trademark registration certificates and agreements evidencing ownership; 

(b) if a complaint is filed on behalf of the owner of the intellectual property or the holder of intellectual property rights, a suitable power of attorney; 

(c) any documents or other evidences, including witness statements, confirming that the infringement, misappropriation or conflict occurred within the DIFC; 

(d) proof of payment of the fees in accordance with Regulation 2.3; and 

(e) an undertaking to cover any costs and expenses incurred by the Commissioner (or his delegate) to investigate the complaint."

Unless the commissioner is of opinion that notifying a respondent of a complaint may pose a risk to the investigation of the complaint or the preservation of evidence relating to the complaint, he must notify the respondent in writing of the details of a complaint filed against him or her, within 10 business days of receiving the complaint or any additional documents, information or other evidence that the commissioner may have requested, whichever may be later.

A respondent has the right to respond to a complaint within 10 business days of receiving it or such other time as the commissioner may allow.  The commissioner should provide the complainant with a copy of the response together with any supporting documents on which the respondent may rely.  The complainant may then file a reply to any further points raised by the Respondent in his or her response. Any such reply must be filed by the complainant within 10 business days of receiving the respondent’s response from the commissioner or such other time as the commissioner may allow. The commissioner must provide the respondent with a copy of any reply that may be submitted by the complainant.

The commissioner may invite one or more of the parties to a meeting to discuss the dispute if he is minded to issue a direction.  He may also visit the respondent's premises with (or in some cases without) notice to inspect or collect evidence.  The parties may be represented in any of these proceedings by a legal practitioner registered on Part I or Part II of the DIFC Courts' Register of Legal Practitioners. My chambers are listed in Part II of that register and my friend Arann Dowling-Hussey who is also a member of the Irish Bar practises in the DIFC courts.  Other members of the English Bar including intellectual property specialists can qualify easily to practise in the DIFC.

After considering a complaint and completing all the investigations and inspections that the commissioner may deem necessary, he must issue a direction in accordance with art 66 of the IPL and art 3.1 of the IPR. If the commissioner is satisfied that a person has violated the IPL, he may issue a direction with 1 or more of the following measures: 

(i) order the respondent to refrain from the violation and carry out all necessary acts to comply with the IPL; 

(ii) request the DIFC Registrar of Companies to suspend temporarily the respondent's DIFC licence; 

(iii) order confiscation of all materials, goods, tools, machines, equipment, signs and advertisements related to the violation and order the transfer, storage and destruction of the same, at the expense of the respondent; 

(iv) impose fines in accordance with art 66 (1) and Sched 3 of the IPL; or 

(v) in case of a repeated infringement, request the DIFC Registrar of Companies to revoke the DIFC licence of the respondent.   The commissioner may also impose up to double the fines stipulated in Sched 3 pursuant to art 66 (2) of the IPL

If the commissioner is not satisfied that a person has violated the Law, he may issue a direction rejecting the complaint.   Alternatively, if the commissioner is unable to decide whether a violation has been committed, he will issue a direction requesting the parties to refer the matter to the DIFC Court of First Instance ("the court").

Should a respondent fail to comply with a direction the commissioner may apply to the court for an order to compel him or her to do so under art 66 (5) of the IPL  Any person aggrieved by the direction of the commissioner may file a request to the court to review the direction within 15 days of receiving a notice of direction from the commissioner.

My Deputy Senior Clerk, Stephen Somerville, has recently returned from a short visit to Dubai where he met several of my readers including some who practise before the DIFC Courts. He was accompanied by Arran and other members of chambers who were there for Dubai Arbitration Week 2023.  Those members have penned Decree No 34 of 2021 Concerning the Dubai International Arbitration Centre: Two Years On: Some Practical Issues which discusses recent changes to arbitration law in that emirate.

Anyone wishing to discuss my article or any of the topics mentioned in it may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

WIPO Design Law Treaty Diplomatic Conference to Take Place in Saudi Arabia

 

Author Emmanuel Berrod Licence CC BY-SA 4.0 Deed Source Wikimedia Commons

Jane Lambert

A diplomatic conference is a meeting of representatives of governments that are negotiating the terms of an international agreement. On 21 July 2022, the WIPO General Assembly voted to convene a diplomatic conference to conclude and adopt a Design Law Treaty before the end of 2024.  On 9 Oct 2023, the Preparatory Committee of the Diplomatic Conference to Conclude and Adopt a Design Law Treaty agreed to hold the conference in Riyadh between 11 and 22 Nov 2023 (see Saudi Arabia Set to Host 2024 Diplomatic Conference to Conclude Design Law Treaty PR/2023/909 9 Oct 2023).

Although countries that belong to the World Trade Organization are bound by arts 25 and 26 of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") to protect new or original industrial designs for at least 10 years and the Hague Agreement facilitates international design registration, the requirements for registration vary considerably from country to country.   The Design Law Treaty is intended to iron out those differences.   A draft of the proposed Treaty and its Regulations have been circulating for some time.  According to the WIPO press release,, the Treaty should make it significantly easier for designers and small and medium-sized enterprises to register their designs.

The new Treaty coincides with the Commission's proposals for a new Designs Directive to replace Directive 98/71/EC and amendments to the Community Design Regulation which I shall discuss in detail in NIPC News and IP after Brexit.,

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page.