Monday, 19 March 2012

Why has no IP case come before the DIFC Courts?

In the 6 years of their existence the DIFC (Dubai International Financial Centre) courts have never actually had an intellectual property case. That is not because intellectual property falls outside their jurisdiction.  Arts 37 and 38 of the Centre's Law of Obligations (Law No 5 of 2005) codify the common law rules of confidence and passing off (see "The DIFC Law of Confidence" of 27 Jan 2011 and "The DIFC Law of Passing Off" 7 April 2011).

One possible reason why there have been no intellectual property cases in the DIFC courts is that patents and designs are about goods rather than services   There have been a few IP cases involving financial institutions in the UK such as HFC Bank plc v Midland Bank plc [2000] FSR 176 and  Cantor Fitzgerald International v Tradition (UK) Ltd  (2001) 24(9) IPD 24057, [2001] EWCA Civ 942 but they have been about branding and computer software. Another possible reason is that piracy and counterfeiting are dealt with by customs or other autoritties in the UAE.

There may be more scope for intellectual property litigation as a result of the DIFC Court of Appeal's decisions in Corinth Pipeworks SA v Barclays Bank Plc and Al Khorafi and Others v Bank Sarasin-Alpen (ME) Limited and Another and Law No 16 of 2011.   These cases were about torts that occurred outside the DIFC where the defendant was a "Centre Establishment".  If a business established or carrying on business within the DIFC infringes an intellectual property right anywhere in the UAE it should be possible to sue it in the Centre.  If the parties to a licence or other agreement relating to intellectual property rights can be sure of an English speaking common law forum (as they now can thanks to Law No 16 of 2011) they may well be tempted to choose DIFC law and the DIFC courts in their choice of law and jurisdiction clauses.

Part 25 of the  Rules of the DIFC Courts provide all the interim remedies that are available under the Civil Procedure Rules including search orders and freezing injunctions. The forms and procedure are very similar to those of the Chancery Division in England.

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