Wednesday, 27 October 2021

Science and Innovation Network in Saudi Arabia

Jane Lambert

 






Earlier today I wrote about Yamish Yakoob's appointment as the first British intellectual property attaché to the Gulf Cooperation Council or "GCC" (see UK's New Intellectual Property Attache to the GCC 27 April 2021).  I posted Mr Yakoob's contact details at the British embassy in Riyadh but forgot to check whether our embassy has a website and I have discovered that it does (British embassy website).   It also has some information about a lot of useful services in Saudi Arabia and the GCC which merit this postscript.

Science & Innovation Network in Saudi Arabia

The Science and Innovation Network in Saudi Arabia is part of a wider network of approximately 110 officers in over 40 countries and territories around the world who are building partnerships and collaborations in science and innovation.  According to the network's website, it has 3 officers covering all 6 GCC countries. The head of the network in the GCC, who is referred to curiously as "the Head of SIN (Gulf)", is based in Doha.  The officials in Saudi Arabia are based at the British embassy in Riyadh.

The Network's Objectives in Saudi Arabia

According to the network's website, its officials in Saudi Arabia are working on the following objectives
  • "Establishing the UK as Saudi Arabia’s pivotal partner of choice in science and innovation.
  • Supporting the Saudi Arabia in enhancing their resilience and security by addressing long-term threats, including emerging health issues and global challenges on water and food security, as well as through building their capacity to deliver evidence-based policies.
  • Increasing trade and investment cooperation in education, healthcare, infrastructure, water, clean energy, cyber security, Science and Innovation – working on higher education, collaborating with the British Council and the Gulf Science and Innovation, Knowledge and Economy programme.
  • Broadening security cooperation between the UK and Saudi Arabia – keeping Britain, and our interests, safe.
  • Strengthening bilateral relationship through engagement on science and innovation.
  • Helping Saudi Arabia to deliver commitments made at COP 22.
  • Helping Saudi Arabia with Vision 2030 and achieving economic diversification.
  • Engaging with the next generation of thinkers.
  • Helping Saudi Arabia to deliver on G20 commitments."
Priorities

The website states that the officials in Saudi Arabia are focusing on the following priorities:
  • "Antimicrobial Resistance (AMR)
  • Genomics and Precision Medicine.
  • Food Security
  • Cyber and ICT
  • Clean and Renewable Energy
  • Future/SMART Cities"
Possible Overlap

The reference to "SMART Cities" reminds me of the work on SMART Towns carried out by the Enterprise Hub (Yr Hwb Menter) at the Menai Science Park in North Wales. There may be scope for fruitful collaboration between Welsh and Saudi collaborators in that field.   

Snapshot

The network has produced the following snapshot of its work in Saudi Arabia.

Further Information

I have summarized the links in the following table:

British Embassy in Saudi Arabia

https://www.gov.uk/world/organisations/british-embassy-riyadh

UK Science & Innovation Network In Saudi Arabia 


https://www.gov.uk/world/organisations/uk-science-innovation-network-in-kingdom-of-saudi-arabia

UK Science & Innovation Network Country Snapshot

https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/910663/Saudi_Arabia_Snapshot-2020.pdf

British embassy Facebook page

https://www.facebook.com/ukinsaudiarabia

UK Science & Innovation Network Twitter stream

https://twitter.com/uksinet?lang=en-gb


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

UK's New Intellectual Property Attache to the GCC

Map indicating GCC members
Author Furfur Licence CC BY-SA 4.0 Source Wikimedia Commons


























The British government has signalled the importance of the Gulf Cooperation Council ("GCC") as a trading and investment partner by appointing Yamish Yakoob as its first Intellectual Property Attaché to the bloc (see the IPO's Case Study IP Attaché: Yamish Yakoob, Gulf Cooperation Council 7 Oct 2021 IPO website). Yakoob's appointment increases the number of IP attachés to 7.  The others are in North AmericaSouth-East AsiaChinaBrazilIndia and Geneva (see Guidance Attaché contact details 7 Oct 2021 IPO website).

I first learnt about the work of our attachés when I chaired meetings for Tom Duke and Monica Su at the studios of Northern Ballet and Phoenix Dance Theatre in Leeds and the Business Village in Barnsley on 19 Sept 2018 (see Meet our IP Attaché to China 21 July 2017 IP Yorkshire). At those meetings, our representatives met business leaders and IP practitioners from the Leeds and Sheffield city regions.  

Yakoob was educated at the International Indian School and Asan Memorial College from where he graduated with a bachelor's degree in business administration and economics.  He has spent the greater part of his career in the consular service as a trade and investment advisor between 2004 and 2018 at the British Consulate-General. Since 2018 he has served in the diplomatic service as Senior Trade Advisor - Creative (Culture, Sport and Tourism) at our embassy in Riyadh. He speaks Arabic, Hindi, Malayalam. Tamil and Urdu as well as English.

He can be contacted at the British embassy in Riyadh at 
Abdullah Alsahmi Street,
Near Circle 10,
As Safarat
Al Safarat,
Riyadh
12513,
Saudi Arabia.
Tel: +966 (0)11 481 9100 and
Email Yamish.Yakoob@fcdo.gov.uk

I congratulate Yamish Yakoob on his appointment and wish him every success.

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

Postscript

In view of the worldwide interest in this post, I have added a short postscript on the work of the UK's Science & Innovation Network in Saudi Arabia and other GCC states with some useful links. Mr Yakoob is likely to be closely involved in the Network's activities.

Saturday, 2 October 2021

Expo 2020 Dubai Association Rights

Author SumikashaC Licence CC BY-SA 4.0 Source Wikimedia 



























Expo 2020 Dubai opened on 1 Oct 2021. It should have taken place between 20 Oct 2020 and 10 April 2021 but, like the Tokyo Olympics, it was postponed for a year because of the pandemic.  As it happens, International Expos have a lot in common with the Olympic Games. They attract visitors from all parts of the world. They require lavish sponsorship.  They are regulated by ithe Bureau International des Expositions much in the way that the Games are regulated by the International Olympic Committee.

Like the Olympics and other major sporting events, their funding is vulnerable to ambush marketing.  The booklet, Expo 2020 Dubai Brand Protection Guidelinesdescribes ambush marketing as "the act of creating a false or unauthorized association with an event, whether intentional or not." It effectively gives worldwide publicity to the ambushers for nothing.

The right to associate with a major sporting event or Expo is called an "association right" and it is regarded as an intellectual property right (see para 16.1 (6) of the Part 63 Practice Direction).  I discussed the legislation that protected the rights of the International Olympic Committee and the London Organizing Committee in Olympics Association Right and London Olympics Association Right on 31 July 2012 in NIPC Law.  Similar legislation has been enacted for the Commonwealth Games in Birmingham in 2022 which I mentioned in Guidance on Birmingham Commonwealth Games Association Right on 10 Aug 2021 in NIPC West Midlands.

The marks that are protected in the United Arab Emirates include the composite word and device marls of the Bureau International des Expositions and Expo 2020 Dubai. Images of those marks appear on pages 11 to 13 and 16 of the booklet. The booklet suggests that neither the Emirati nor the Dubai government has enacted special legislation to protect those marks or association rights. The intellectual property rights that are mentioned on page 19 are trade marks and copyright. I discussed the relevant legislation in UAE Trade Mark Law on 30 May 2013 and copyright and related rights on 4 Jan 2012 and 11 Feb 2012.

The booklet does not mention the courts in which infringement proceedings would be brought. It is assumed that these will be the civil courts in Dubai. As an intellectual property law has been enacted for the Dubai International Financial Centre. it may also be possible for sponsors to seek relief in the Centre's English speaking common law courts (see  Introduction to, and Overview of, the New DIFC Intellectual Property Law 11 Dec 2019).  An advantage of that jurisdiction is that the DIFC provides a remedy for passiong off (see The DIFC Law of Passing-Off  7 April 2012).

Changing the subject, almost every country in the world seems to be represented with its own pavilion in Dubai including very small states such as Monaco and the Holy See.  The British pavilion seems particularly lavish.   A day ticket to the Expo costs 95 UAE dirhams which is just under £20 and children, students, seniors and "people of determination" get in for free.  That compares very favourably to the Roman remains in Bath, an important tourist attraction in this country. 

Anyone wishing to discuss this article can call me on  +44 (0)20 7504 5252 during office hours or send me a message through my contact form. 

Friday, 6 August 2021

Copyright - Disclosure in Multi Jurisdictional Litigation - Performing Right Society Ltd v Qatar Airways Group QCSC

Author Joshua Doubek Licence CC BY-SA 4.0 Source Wikimedia Commons


 










Jane Lambert

Chancery Division (Deputy Master Francis) Performing Right Society Ltd v Qatar Airways Group QCSC [2021] EWHC 869 (Ch) (13 April 2021)

The Performing Right Society is a British collecting society.  It has brought proceedings against the Qatari national airline for copyright infringement in London.  It alleges that the airline has made available works in its repertoire without its licence through its inflight entertainment service.  The airline applied unsuccessfully to the English High Court to stay those proceedings on the grounds that Doha was a more appropriate forum for the resolution of this dispute than London (see Performing Right Society Ltd v Qatar Airways Group QCS [2020] EWHC 1872 (Ch) (17 July 2020)). I discussed that case in Copyright - Performing Right Society Ltd v Qatar Airways Group QCS in NIPC Law on 20 July 2020 and the forum non conveniens doctrine in PRS v Qatar Airways - Is London the appropriate forum for a claim against a Qatari state-owned corporation for the alleged infringement of many countries' copyright laws?  on 21 July 2021.

Since that hearing, the parties have agreed that the following should be tried as preliminary issues:

"(1) Whether, on every occasion that one of the Repertoire Works (including any of the Sample Infringing Works) has been played to any of the Defendant's passengers via the Services at a time when the relevant aircraft was present in:
(i) the United Kingdom (whether on the ground or in the territorial airspace of the United Kingdom), the Defendant performed such work in public within the meaning of section 19 of the CDPA?
(ii) Qatar (whether on the ground or in the territorial airspace of Qatar), the Defendant performed such work in public within the meaning of Article 7 (6) of the Qatari Law No. 7 of 2002 on the Protection of Copyright and Neighbouring Rights?
(2) Whether, at any time when one of the Repertoire Works (including any of the Sample Infringing Works) has been made available to any of the Defendant's passengers via the Services at a time when the relevant aircraft was present in:
(i) the United Kingdom (whether on the ground or in the territorial airspace of the United Kingdom), the Defendant communicated such work to the public within the meaning of section 20 of the CDPA?
(ii) Qatar (whether on the ground or in the territorial airspace of Qatar), the Defendant communicated such work to the public within the meaning of Article 7 (7) of the Qatari Law No. 7 of 2002?
(3) Whether, for the purpose of issue (2) above, the Defendant only communicated such work to the public when the Repertoire Work was actually played by one of the Defendant's passengers?
(4) Whether, for the purposes of issues (1) and (2) above, sections 19 and 20 of the CDPA are inapplicable when the relevant aircraft was only in the territorial airspace of the United Kingdom in transit to some other territory?
(5) Whether, for the purposes of issues (1) and (2) above, Articles 7(6) and 7 (7) of the Qatari Law No. 7 of 2002 apply whenever the relevant aircraft was in the territorial airspace of a country other than Qatar in transit to Qatar or to some other territory?"

 In common law jurisdictions (such as England and Wales and the Qatar International Court), the parties to a dispute must exchange lists of relevant documents and allow the opposite party to inspect them unless there is a lawful reason for not doing so.  In England, the rules relating to disclosure and inspection are set out in Part 31 of the Civil Procedure Rules and the practice in the Part 31A, Part 31B and Part 31C Practice Directions.   In addition, there is a 3-year pilot scheme for disclosure in some but not all of the Business and Property Courts of England and Wales which started on 1 Jan 2019.  That pilot scheme is governed by Practice Direction 51U (for information on the Business and Property Courts see my article Launch of a Judicial Superhighway in IP Northwest on 12 July 2017).

Para 10.3 of that practice direction requires parties to disputes in such courts to complete, seek to agree and update a document known as a Disclosure Review Document. That is a document by which the parties must identify, discuss and seek to agree the scope of any Extended Disclosure sought of Model C, D or E, and provide that information in due course to the court.   "Extended Disclosure" is defined by para 6.1 as "disclosure of documents in addition to, or as an alternative to, Initial Disclosure".  Para 5.1 requires each party to

"provide to all other parties at the same time as its statement of case an Initial Disclosure List of Documents that lists and is accompanied by copies of
(1) the key documents on which it has relied (expressly or otherwise) in support of the claims or defences advanced in its statement of case (and including the documents referred to in that statement of case); and
(2) the key documents that are necessary to enable the other parties to understand the claim or defence they have to meet."

Para 5.2  refers to that form of disclosure as "Initial Disclosure".   The "Extended Disclosure Models" which include Models C, D and E are set out in para 8,

The parties were unable to agree the following issues in completing their Disclosure Review Document:

"1. Is the Claimant the assignee from its members of (i) the right to perform in public the musical works created by them and (ii) the right to communicate those works to the public within the meaning of provisions corresponding to sections 19 and 20 of the CDPA in countries throughout the world?

PRS states that this issue requires Model B disclosure on its part alone.

3. To what extent is and/or was the Oryx One Play app available for use by the Defendant's passengers?

PRS states that this issue requires Model B disclosure on its part and request-led search-based Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
'Technical guides, manuals, instructions to and from software and other suppliers, purchase orders and invoices to and from software and other suppliers, internal inventories and documents, and stock lists recording or evidencing the technical specifications relating to the Oryx One Play app and the Oryx One on board screen system and, in particular, the aircraft on which the Oryx One Play app is, and was, made available to the Defendant's passengers.'
4. To what types of devices can and/or could the Oryx One Play app be downloaded by the Defendant's passengers?

PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
"Technical guides, manuals, internal documents, information for passengers and download store operators, promotional materials and download data recording or evidencing the types of devices to which the Oryx One Play app could be downloaded by the Defendant's passengers."
5. What content is and /or was available through (i) the Services and (ii) the Oryx One Play app?

PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
'Documents for or from within each of the Services and the Oryx One Play app, databases relating to each system, instructions to and from content suppliers, content lists provided by those suppliers, playlists, content menus, usage reports and app data, manuals and entertainment guides, promotional materials and information provided to passengers which record or evidence the range of content made available to the Defendant's passengers via each of the Services and the Oryx One Play app.'
6. What content can and /or could be streamed using the Oryx One app?

PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search as comprising:-
'Documents from or from within the Oryx One app, databases relating to the Oryx One app, instructions to and from content suppliers, content lists provided by those suppliers, playlists, content menus, usage reports and app data, manuals and entertainment guides, promotional materials and information provided to passengers recording or evidencing the extent to which audio and audio-visual content can and could be streamed by passengers using the Oryx One app.'
7. How, and to what extent, does the Defendant optimize and promote content that it has made available through the Services?

PRS states that this issue requires Model B disclosure on its part and narrow search-based Model D disclosure on the part of Qatar Airways.

9. Does the Defendant provide the Services for profit and/or are the Services intended to enhance the experience of the Defendant's passengers such that they form part of the package of benefits and services for which the Defendant's passengers pay?

PRS states that this issue requires Model B disclosure on its part and Model C disclosure on the part of Qatar Airways. It sets out in section 1B the classes of document for which Qatar Airways should be required to undertake a search.
'Internal documents (including strategy and planning documents), advertising materials and other promotional materials relating to the IFE System and the Services recording or evidencing the way in which the Services are marketed to the Defendant's passengers.'"

The claimant argued that Extended Disclosure was required by its proposed Models in relation to each of the items within its List of Issues for Disclosure to enable the matters of principle ordered to be tried as preliminary issues to be fairly determined.  Those included information about the nature and operation of inflight entertainment services which was solely within the airline's knowledge. For instance, information about the means of access to the content, the quantity and type of content, the way in which content is presented – for instance, whether curated or promoted by the search facilities offered – and whether the content was provided at a profit.

The defendant replied that none of the items listed within the List of Issues for Disclosure were genuinely key matters in dispute which needed to be determined by reference to contemporaneous documents in order for there to be a fair resolution of proceedings. The issues of principle arising for determination on the trial of the preliminary issues were all matters which were primarily questions as to the application of the law to the admitted facts as set out in the parties' statements of case and could fairly be tried based on those admitted facts. In so far as there were some factual disputes between the parties the claimant  was not asserting any positive case by way of reply to the details set out in the defence.  The mere joinder of issues on such matters was not itself sufficient to trigger a requirement for Extended Disclosure,  Para 6.4 required an order for Extended Disclosure to be reasonable and proportionate.  The order sought by the claimant would involve a very extensive exercise in searching for documents and in managing the volume of documents was estimated at £158,340 for the defendant and £90,080, for the claimant.  Thise octs were disproportionate and could not be justified.

The matter came on before Deputy Master Francis who heard the dispute on 23 March 2021. The learned deputy master delivered his judgment on 13 April 2021 (see Performing Right Society Ltd v Qatar Airways Group QCSC [2021] EWHC 869 (Ch) (13 April 2021). Readers from outside England and Wales who are unfamiliar with English civil litigation should know that a "master" is a procedural judge of the High Court of Justice which is the first instance or trial division of the Senior Courts of England and Wales.

In resolving this dispute, the deputy master referred to paras  2.4, 6.3, 6.4, 6,5 and 6.6 of the practice direction.  He also referred to paras [46] and [47] of Sir Geoffrey Vos's judgment in McParland & Partners Ltd v Whitehead [2020] EWHC 298 (Ch), [2002] Bus LR 699:

"[46] It can be seen, therefore, that issues for disclosure are very different from issues for trial. Issues for disclosure are issues to which undisclosed documentation in the hands of one or more of the parties is likely to be relevant and important for the fair resolution of the claim. That is why paragraph 7.3 of PD51U provides that issues for disclosure are "only those key issues in dispute, which the parties consider will need to be determined by the court with some reference to contemporaneous documents in order for there to be a fair resolution of the proceedings" (emphasis added). Paragraph 7.3 goes on to explain, as I just have, that issues for disclosure do "not extend to every issue which is disputed in the statements of case by denial or non-admission.
[47] This explanation demonstrates that, in many cases, the issues for disclosure need not be numerous. They will almost never be legal issues, and they will not include factual issues that are already capable of being fairly resolved from the documents available on initial disclosure."

He also referred to Sir Geoffrey's conclusion in paras [55] and [56]@

"[55] The Disclosure Pilot is intended to operate proportionately for all kinds of case in the Business and Property Courts from the smallest to the largest. Compliance with it need not be costly or time-consuming
[56] The important point for parties to understand is that the identification of issues for disclosure is a quite different exercise from the creation of a list of issues for determination at trial. The issues for disclosure are those which require extended disclosure of documents (i e further disclosure beyond what has been provided on initial disclosure) to enable them to be fairly and proportionately tried. The parties need to start by considering what categories of documents likely to be in the parties' possession are relevant to the contested issues before the court."

The learned dsputy master directed himself at para [35] of his own judgment to consider in relation to each issue whether:

"a) it is a key issue in dispute which will need to be determined by the court with some reference to contemporaneous documents in order for there to be a fair resolution of the preliminary issues, the formulation set out in paragraph 7.3 of the Practice Direction;
b) the Model of Disclosure proposed is appropriate in order to fairly dispose of the preliminary issues, as set out in paragraph 6.3 of the Practice Direction;
c) the proposed order for Extended Disclosure is reasonable and proportionate having regard to the matters in paragraph 6.4 of the Practice Direction."

 Deputy Master Francis made an order for Extended Disclosure:-

"a) in relation to items 3 and 4 under the Model C requests as they are set out in section 1A of PRS's DRD;
b) in relation to items 5 and 6 under the Model C requests as they are set out in section 1A of PRS's DRD, but excluding the requests for usage reports and app data;
c) in relation to item 9 under the Model C request as it is set out in section 1A of PRS's DRD, but excluding the requests for internal documents."
However, he dismissed the application for an order for Extended Disclosure under Model D in relation to item 7.  He explained the reasons for his decision in paras [32] to [50] of his judgment.

I have published this article in NIPC Gulf for two reasons.  The first is that it concerns intellectual property litigation involving the national airline of a GCC member state.  The second is that similar disputes could arise in Abu Dhabi, Dubai and Qatar itself because all of those regions have English speaking common law states.  The procedural rules of all of those courts provide for disclosure including specific disclosure.  PD Part 51U may apply only to certain Business and Property Courtts in England but disputes over the disclosure of documents give rise to similar issues and are resolved in similar ways.

Anyone wishing to discuss this article or any of the issues mentioned in it may call me during normal British business hours on +44 (0)20 7404 5252 or send me a message through this form.  

Wednesday, 7 July 2021

DIFC Trade Secrecy Law

Jane Lambert
 







In November 2019 the Dubai International Financial Centre ("DIFC") enacted a new intellectual property law (see DIFC Intellectual Property Law (Law No 4 of 2019)). I described its structure in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019 and discussed its provisions relating to patents and utility certificates, industrial drawings and designscopyrights and neighbouring rights and trade marks and trade names in subsequent articles. In this article, I discuss the provisions relating to trade secrets (arts 52 to 55). There was already an action for breach of confidence under the Law of Obligations which I discussed in DIFC Law of Confidence on 27 Jan 2011.

According to the table to para 3 of Sched. 1 of the Intellectual Property Law, the term "Trade Secret" includes the following:
"all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, programs, devices, formulas, designs, prototypes, methods, techniques, processes, procedures, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialised physically, electronically, graphically, photographically, or in writing
Art 52 of the Law provides that a Trade Secret can be protected when it meets each of the following criteria:
"(a) the information involved constitutes a Trade Secret, or part thereof; 
(b) the information derives actual or potential economic value from not being generally known to other persons who may obtain economic value from its disclosure or use; and 
(c) the person lawfully in control of the information has taken reasonable measures to keep the information a secret."

 This is not dissimilar to art 2 (1) of  Directive (EU) 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ 15.6.2016 L 157/1) ("the Trade Secrets Directive"):

"(1) ‘trade secret’ means information which meets all of the following requirements: 
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; 
(b) it has commercial value because it is secret; 
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

As in the Trade Secrets Directive, the owner is deemed to be the person lawfully in control of the Trade Secret and he or she is defined as "a  person lawfully in control of the Trade Secret is every person having the right of its disclosure, use and storage" (see art 53 (1) (a) and art 53 (2)).  Such person has "the right to licence (sic), transfer, s4 hare, or assign lawful control of the Trade Secret to any person in return for a consideration or otherwise" under art 53 (1) (b) and also "to prevent any person from misappropriation of the Trade Secret, and shall have the right to claim compensation for any damage caused due to misappropriation thereof by any person" under art 53 (3).

Art 54 provides that the following acts shall constitute misappropriation of a Trade Secret and prohibited under the Law: 

"(a) the acquisition of a Trade Secret by Improper Means; 

(b) the disclosure or use of a Trade Secret by a person who used Improper Means to acquire knowledge of the Trade Secret; 

(c) the acquisition, disclosure or use of a Trade Secret by a person who at the relevant time knows, or ought to have known, that the knowledge of the Trade Secret was: 

(i) derived from or through a person who had utilised Improper Means to acquire it; 

(ii) acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or 

(iii) derived from or through a person who owed a duty, towards the person lawfully in control of the Trade Secret, to maintain its secrecy or limit its use. 

(d) the disclosure or use of a Trade Secret by a person who knows, or ought to have known, that it was a Trade Secret and that knowledge of it had been acquired by accident or by mistake."

"Improper Means" is defined in the above-mentioned table to include "fraud, forgery, theft, bribery, misrepresentation, breach or inducement of a breach of a legal or contractual duty to maintain secrecy, or espionage through electronic or other means."   

The following acts, however, are permitted by art 55:

"(a) the discovery, acquisition or use of information from public sources, or known and available information; 

(b) the discovery, acquisition or use of information as a result of scientific research, innovation, invention, development, modification and improvement exerted by persons independent of the person lawfully in control of the Trade Secret; 

(c) the discovery of information pursuant to a licence, transfer, sharing, or assignment of the information; or 

(d) the discovery of information through reverse engineering."

This is an important branch of the law because every invention starts life as a trade secret and there are some technologies that can only be protected by trade secrecy law.  In the next few days, I shall write a short article with some practical tips on how inventors, entrepreneurs and others can safeguard secret technical or commercial information.  It will be angled for a British audience but it should apply equally to the DIFC.

In the meantime, anyone who wishes to discuss this article or trade secrecy and confidentiality generally may call me during UK office hours on +44 (0)20 7404 5252 or send me a message through my contact form. 

Wednesday, 10 February 2021

DIFC Space Courts

Author European Space Agency Licence CC BY-SA 3.0 IGO 


Jane Lambert

Just a few days before a probe from the United Arab Emirates was due to enter Mars orbit, the Dubai International Financial Centre Courts and the Dubai Future Foundation announced a Courts of the Future initiative known as Courts of Space (see Courts of Space launches into orbit in support of global space economy press release 1 Feb 2021 04:49 PM).

The initiative has three main objectives:
  • An international working group from the public and private sectors  will consider the types of dispute that might arise from space research and travel;
  • The working group will compile or procure the compilation of a Space Disputes Guide; and
  • Training judges in the resolution of space disputes.
I discussed the Courts of the Future, The Courts of the Future Forum Charter and the draft Part 40,000 of the DIFC Court Rules in Dubai's Courts of the Future Initiative on 18 Nov 2017.

The international space working group will find that the UN General Assembly proposed the Outer Space Treaty (Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies) as long ago as 16 Dec 1966.  There is a UN Office for Outer Space Affairs with responsibility for Space Law.

A number of countries including the United Kingdom have enacted legislation in accordance with the Outer Space Treaty.  The Outer Space Act 1986 provided for the licensing of space activities and the registration of space objects.  More recently, the Space Industry Act 2018 was passed to enable British businesses to increase their share of a global market estimated to be worth between £155 and £190 billion in 2018. I discussed the topic in Commercial Exploitation of Space: Space Industry Act 2018 on 10 April 2018 in NIPC Law.  The House of Commons last discussed the space industry in its debate on the UK Space Industry on 4 Feb 2021 (see Hansard 4 Feb 2021).

Considerable revenues are already generated from such activities as remote sensing, telecommunications, tourism and weather forecasting.  The absence of gravity and an atmosphere is an opportunity for low orbit manufacturing which opens the possibly of new products and processes that will require legal protection.  Confereneces on IP in space have been held in Luxembourg and the USA which I discussed in Forthcoming Conference in Luxembourg on Innovation, Space Technologies, and Patents on 30 July 2018 in NIPC News and The Role of Intellectual Property in Space Commerce on 18 July 2019 in NIPC Cornwall.

I am following the space industry not out of sheer intellectual cutisoity but because there are opportunities for businesses of all sizes throughout the workd including the Gulf and that these businesses will require advice and representation in respect of their research, development and marketing of new products and manufacturing processes.  Anyone wishing to discuss this article or any of the topics mentioned in it should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

Sunday, 20 September 2020

The New DIFC Intellectual Property Law - Trade Marks and Trade Names

Author Mostafameraji Licence CC BY-SA 4.0  Source Wikipedia Tourism in Dubai


 














Jane Lambert

Last November the Dubai International Financial Centre ("DIFC") enacted a new intellectual property law (see DIFC Intellectual Property Law (Law No 4 of 2019)).  I described its structure in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019 and discussed its provisions relating to patents and utility certificatesindustrial drawings and designs and copyrights and neighbouring rights in subsequent articles.  In this article, I discuss the provisions relating to trade marks (arts 43 to 49) and trade names (arts 50 and 51).   There was already an action for passing off under the Law of Obligations which I discussed in The DIFC Law of Passing Off on 7 April 2011.

What is a Trade Mark?
The table in paragraph 3 of Schedule 1 to the IP Law defines a trade mark as:
"any signs or combination of signs or names, words, signatures, letters, numbers, Drawings, Symbols, addresses, Hallmarks, stamps, pictures, vignettes, notices, packages, colour or combination of colours, or any other mark or combination of marks having a distinctive form and used or intended to be used to distinguish goods, products or services. Sound and smell can be considered as trade marks."

That is broadly consistent with art 2 of Federal Law No. 37 of 1992 on Trademarks (as amended by Law No. 19 of 2000 and Law No. 8 of 2002).

Registration
The DIFC Intellectual Property Law makes no provision for registering trade marks in the DIFC.  Instead, art 43 of the Law provides that a trade mark registered under the Federal trade mark law is recognized for the purposes of the DIFC IP Law and is valid and enforceable in the DIFC.  "Federal trade mark law" is defined in the table in paragraph 3 of Schedule 1 as "UAE Law No. 37 of 1992 as amended by UAE Law No. 8 of 2002 and its implementing regulations, any other future amendment or Federal Law with respect to trade marks."  I have already discussed that statute including registration in UAE Trade Mark Law on 20 May 2013.  According to the WIPO, the UAE is not yet a party to either the Madrid Agreement or Protocol.  It appears from Saba Al Sultani and Rob Deans that trade mark law has been harmonized among the Gulf Cooperation Council states but there is not yet a unitary GCC trade mark on the lines of the GCC patent or EU trade mark (see Al Sutani and Read GCC Trademark Law Coming Soon Sept 2014 WIPO Magazine).

Prohibited Marks
The following marks will not be recognized in the DIFC unless they are registered under Federal trade mark law:
"(a) a mark which is not distinctive; 
(b) a mark consisting of a generic name used in relation to goods, products or services; 
(c) a mark that contains one or more familiar drawings or common pictures of goods; 
(d) a mark that is contrary to the public order or morality of the UAE; 
(e) a mark containing the insignia of the UAE, any governmental body in the UAE, flags and other symbols pertaining to the UAE (or any emirate thereof), Arab or international organisations (or any agencies thereof), or any foreign country except with the authorisation of those parties, as well as any imitation of such insignia, flags or symbols; 
(f) a symbol of the Red Crescent or the Red Cross, or any other similar symbol or mark which is an imitation thereof; 
(g) a mark which is identical or similar to a symbol of a purely religious nature; 
(h) a geographical name, where the use thereof may cause confusion as to the origin or source of the goods or services; 
(i) a name, surname, photograph or emblem of a third party, unless his, or his legal successors’, prior consent has been obtained. 
(j) a mark containing a title of honour, where the person applying for registration cannot prove that he is lawfully entitled to its use; 
(k) a mark which may mislead the public or which is identical or confusingly similar to a mark or marks of another party, even though not registered, or which contains false information as to the origin or the source of products or services, or about their other characteristics, as well as a mark containing an imaginary, imitated or forged trade name; 
(l) a mark owned by a person with whom it is illegal to deal with under Federal Law or Dubai Law. 
(m) a mark which, if used for certain classes of products or services, would diminish the value of other products or services distinguished by such mark; 
(n) a mark containing the word or expression: "Patent", "Patented", "registered", "registered Design", "copyright" or "Imitation is forgery" or similar words and expressions; 
(o) a mark containing national and foreign decorations, coins and paper currency; or 
(p) a mark that constitutes a translation or imitation of a well-known mark or the main part thereof or other previously registered mark, where the registration would confuse consumers as to the identity or origin of the goods or services that are distinguished by the mark or similar goods or services" (art 44).

The Commissioner of Intellectual Property ("the Commissioner") may levy a $5,000 fine upon anyone using a mark that falls within sub-paragraphs (d) to (p) pursuant to art 48 (1) and art 59 (see my Introduction to, and Overview of, the New DIFC Intellectual Property Law of 11 Dec 2019).

Well Known Marks
Art 45 (1) of the DIFC Intellectual Property Law protects well-known trade marks of international reputation ("well-known marks") that surpass their country of its origin and acquires fam in a relevant sector among consumers in the UAE. The decision as to whether a mark is or is not a "well-known mark"appears to be one for the court.   In making that decision, art 45 (2) enables the following factors can be taken into account{

"(a) the degree of public knowledge or recognition in a relevant sector; 

(b) the duration, extent and geographical area of use; 

(c) the duration, extent and geographical area of any promotion of the goods or services to which the trademark applies; 

(d) the duration and geographical area of any registrations, or any applications for registrations, to the extent that they reflect use or recognition of the trademark; 

(e) the record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark was recognised as well known by competent authorities; or 

(f) the commercial value associated with the trademark."

Nobody may use a mark that is identical or confusingly similar to a well-known trade mark in the DIFC (art 45 (3)).  Transgressors of this rule can be fined US$15,000 by the Commissioner.  

Owners of well known marks also have the following rights of action under art 45 (4) and (5):

  • the right to prevent any party from using in the DIFC identical or confusingly similar marks, to distinguish goods or services that are not identical to those in respect of which, the well-known trade mark is registered, if: 
    • the use of the mark indicates a possible connection between goods or services and the owner of the well-known trademark; and 
    • the interests of the owner of the well-known trade mark are likely to be damaged by such use; and
  • the right, to prevent another person’s commercial use of a mark or trade name in the DIFC, if such use began after a well-known trade mark has become well-known and the use of the mark or trade name causes dilution of the distinctive quality of the well-known trade mark.
The Commissioner can fine anyone using a trade mark in a way that may cause dilution to a well-known trade mark US$15,000.

Trade Mark Owner's Rights of Action
Art 46 confers upon the proprietor of a trade mark that is registered in the United Arab Emirates the exclusive right to exclude others from the import, export, use, sale, offer for sale, advertising, transit, distribution or use in any manner of goods or services distinguished by an identical or confusingly similar trade mark 

Defences
Art 49 provides that the following acts shall not infringe a trade mark or well-known mark:

"(a) to indicate the intended purpose of the goods or a service related thereto, provided that such use is necessary and in good faith;
(b) in news reporting, news commentary or parody; or
(c) by another person in comparative commercial advertising or promotion to identify competing goods or services, provided that such use is in good faith and in accordance to honest practices in commerce."

Should a defendant allege that the trade mark in suit is invalid or should be cancelled for other reasons, art 48 (2) requires him or hee to must issue proceedings in a court with jurisdiction to cancel the registration and satisfy the DIFC court that there are clear and solid grounds for such proceedings.  If he or she does so, the infringement proceedings in the DIFC will be stayed until the court of competent jurisdiction has ruled on the cancellation claim.  If the defendant does not do so, the infringement proceedings in the DIFC will continue.

Punishable Infringements
The following infringements are punishable with the following fines:

  • US$30,000 for "counterfeiting or imitating" a registered trade mark, or a well-known trade mark, with the intent or effect of misleading the public (art 48 (1) (b));
  • US$25,000 for unlawfully using a registered trade mark or a well-known trade mark without the proprietor's consent (art 48 (1) (c));
  • US25,000 for unlawfully using a trade mark that is confusingly similar to a registered trade mark with the intent to, or effect of, causing confusion and misleading the public (art 45 (1) (d))'
  • US$25,000 for knowingly selling, offering for sale or possessing with purpose of selling goods or services bearing a trade mark, or well-known trade mark, that is counterfeited, imitated or unlawfully used (art 48 (1) (e),

Licensing
Art 47 (1) permits the owner of a trade make by a written instrument, grant a licence to any person to use the trade mark for all or part of the goods or services in respect of which the trade mark is registered.   The owner of the trade mark may also use the mark contemporaneously with the licensee unless otherwise agreed in writing (art 47 (2).  Such a licence is known as a sole licence as opposed to exclusive licences which can be used by the licensee to the exclusion of the licensor and all other persons and non-exclusive licences that can be used by the licensor and any number of licensees.   

A licensee may not assign its rights to any other party, or grant a sub-licence in respect thereof, unless expressly allowed by the terms of the licence agreement (art 47 (3)).

Unless the licence agreement provides otherwise, a licensee is entitled to call on the owner of the trade mark to take infringement proceedings in respect of any matter which affects the licensee’s interests by virtue of art 47 (5) If the owner refuses to act in accordance with a request by the licensee, or fails to do so within two (2) months of being called upon to do so, the licensee may bring such proceedings in his or her own name, as if he or she were the registered owner of the trade mark.

Any act of a licensee in contravention of a licence agreement shall constitute trade mark infringement pursuant to art 47 (4) and may be punished by the Commissioner with a US$30,000 finr.

Trade Names
A trade name is defined in the table to paragraph 3 of Schedule 1 "as every name used in trade to designate particular business and registered with the competent authority."  Art 50 requires of persons registered, incorporated, licenced or permitted to operate in the DIFC to comply with the provisions of the Operating Law (DIFC Law No 7 of 2018) in relation to trade names, and to display such names conspicuously displayed on the façade of their business premises in the DIFC. Failure to display the name in accordance with the law attracts a fine of US$5,000.   Art 51 enables the Commissioner to resolve any conflict between a trade name registered in the DIFC and a trade mark, or a well-known Trademark, which is likely to damage the interests of a person, cause confusion or mislead the public.   Failure to comply with an order of the Commissioner to change a trade name in conflict with a trade mark may be punished with a fine of US$10,000.

False Claims
Art 48 (1) (f) prohibits falsely representing that a mark is registered as a trade mark, or as a well-known trade mark, or making any statement with the intent or the effect of leading others to such a conclusion.  The Commissioner can impose a US$5,000 fine for such misconduct.

Comment
Because DIFC law differs from English and EU trade mark law in a number of important respects, particular care should be taken in drafting a trade mark licence or assignment or a franchising, distribution or other agreement to be governed by DIFC law or likely to affect the DIFC.   Should it be necessary to enforce a trade mark or resist enforcement proceedings in the DIFC courts, members of the bar of England and Wales in good standing can obtain quickly and easily the right to appear before those tribunals. Actions to cancel UAE trade marks will have to be undertaken by Emirati lawyers.

Anyone wishing to discuss this artiucle or DIFC law generally should call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my comtact form;