Friday, 13 December 2013

Arab-British Chamber of Commerce International Intellectual Property Conference "Combating Transnational Intellectual Property Crime"

Yesterday I was one of the speakers at the Intellectual Property Conference on "Combating Transnational Intellectual Property Crime" which was held at The Langham Hotel in London. The conference was chaired by The Rt. Hon. Baroness Symons of Vernham Dean who had been Minister for the Middle East, Minister for International Trade and Minister for Defence Procurement, and the Prime Minister’s envoy to the Gulf in the last Labour Government in the United Kingdom.  She is now Chair of the Arab-British Chamber of Commerce.

Lady Symons introduced Dr Muhammed bin Abdul-Kareem Al-Issa and Dr Bassam Al-Talhouni, the Ministers of Justice of Saudi Arabia and Jordan, and Lord McNally, Minister of State for Justice in England and Wales.  All three ministers fulminated against counterfeiting and piracy (though none of them actually defined those terms) and outlined some of the measures that they had taken in their respective jurisdictions to suppress those activities. The Minister from Jordan was the most specific and he was able to report a fall in reported instances which Lady Symons noted.  Lord McNally spoke about cyber security. Each of those ministers was presented with a "certificate of appreciation" after their presentations. Lord McNally remarked that he felt like the Tin Man in the Wizard of Oz  as he and Lady Symons solemnly displayed the certificate for the cameras.

The next session "Strategic Dialogue on Changing Public Perceptions on Counterfeiting and Intellectual Property Theft" was chaired by Miss. Cherie Booth QC of Matrix Chambers and Omnia Strategy LLP who is perhaps better known as Mrs. Tony Blair. Miss Booth hinted at the temptations in a typical household to download pirated music and buy fake handbags. She spoke of the cost of intellectual property infringement globally and the need to change public behaviour in the way that speed cameras had forced motorists to drive more slowly.

Miss Booth introduced two speakers from Saudi Arabia, Sheikh Nasser Bin Ibrahium Al Mohammed, Head of Judicial Inspection and Member of the Supreme Judicial Council, and Sheikh Ibrahim Bin Abdel Aziz Al Ghossn, President of the National Committee of Lawyers.  Sheikh Al Mohammed gave the most moderate presentation up to that point observing that developing countries can be expected to do only so much in enforcing intellectual property rights and that more should be done by developed countries. He also castigated greedy rights holders as well as greedy infringers. Interestingly he seemed to suggest that an owner of any kind of property who failed to take care of it had only himself to blame and that the need to eat was a partial defence or at least a strong mitigating factor in Saudi law. Even though he is president of a body which presumably includes defendants as well as claimants' lawyers, Sheikh Al Ghossn was implacable in his condemnation of pirates and counterfeiters.  He argued that IP infringement was not just a wrong or even a crime but a sin in Islam.

Perhaps the most interesting speaker of the whole conference was Mr Adil El Maliki who is Director General of OMPIC (Office Marocain de la Propriété Industrielle et Commerciale) the Moroccan intellectual property office. He outlined the comprehensive intellectual property legislation that Morocco had enacted and the treaties to which it had acceded.  He quoted statistics to show that Moroccans were applying for more patents and trade marks which he attributed to those measures.

The last speaker of this session was Mr Robert Bond of Speechly Birham who had been very kind to us when I set up NIPC in 1997 and he was at Hobson Audley. He urged co-operation between rights owners, individuals and businesses in safeguarding intellectual property rights. Public awareness of the importance of intellectual property had to be raised - even in law firms. In that regard he told an alarming story about how an internee was about to post details of a confidential meeting onto Facebook before someone twigged what she was up to and intervened.

There was time for three questions. A barrister who was clearly interested in theology asked Sheikh Al Ghossn exactly what sort of sin was constituted by infringement. Being a Quaker and not a Muslim I must confess that I did not quite understand either the question or answer. I pointed out that IP rights confer monopolies which are not necessarily a good thing. "And your question?" interjected Miss. Booth. "My question is how does Saudi and Moroccan law deal with abuses of such monopolies which can arise either because the rights should never have been granted in the first place or they are used to suppress legitimate competition?" It was clear from the very brief reply that I had not put my question with sufficient clarity.

The last session was "Coordinating Law Enforcement, Government and Business Institutions Actions against Counterfeiters."  Viscount Younger of Leckie, Parliamentary Under Secretary of State for Intellectual Property, summarized comprehensively the measures that had been taken by trading standards officers, the police and the IPO to suppress IP crime. He also announced that he would call a conference on IP enforcement in London shortly,  Before the session I had a brief chat with Lord Younger about St Andrews, where we were both students, and my objection and that of the Intellectual Property Bar Association, Sir Robin Jacob and other leading academics, the IP Federation and just about everybody to criminalizing registered design infringement which I set out in more detail in  my article on the Intellectual Property Bill in my NIPC law blog of the 28 May 2013.

There was a short and in parts amusing presentation from Mr Majed bin Mohammed bin Garoub who is Secretary General of the Union of Lawyers in the GCC Countries about enforcement in those countries. He explained that he acts for a lot of claimants and he is so diligent in pursuing infringers that he has a name for it.

Our chair, Mr Mike Pullen of DLA Piper, developed Lord McNally's observations on cyber security and data protection. Although an expert on competition law with experience of some leading cases he said very little on the subject which was a pity because he would have had a lot to say on the abuse of dominant positions, contracts in restraint of trade and concerted practices.

David Meldrum, a partner of D Young & Co, spoke of the research and development work that was taking place in such places as the free zones of Dubai like Internet City and the Qatar Science and Technology Park.  Inventors and creatives in those places would require a lot of advice on protecting their intellectual assets which is why his firm had opened an office in Dubai.

Eventually it was my turn and to my great horror no slides appeared.  Inwardly panicking I said the first thing that came into my head which was a weak joke that nobody was likely to counterfeit my CHF71 Swatch watch. I think I made that quip because someone had speculated that there were probably a lot of fake Rolexes in the room. For the next 10 minutes I ad libbed and I hope that I said something sensible in  that time. The presentation that I had intended to give is above.

I was more comfortable dealing with questions. Through my experience of running inventors' clubs and IP clinics and having participated briefly in one of the sessions on the implementation of Sir Richard Lambert's review on business and university co-operation I was able to field a question on ownership of graduate students and academics' inventions.  Pertinently Mr Mohammed bin Garoub pointed out that not all academic work leads to patentable inventions.  I also answered a question on remedies against states pointing out that in addition to the dispute settlement procedures under the WTO agreement nationals of countries that were party to bilateral investment treaties might have the option of claiming compensation at the International Centre for the Settlement of Investment Disputes (see "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection"  27 July 2013 NIPC Law and "The UAE's Bilateral Investment Treaties" 28 July 2013).

We then broke for lunch during which time I met some remarkable people including Irina Bragin who supplies lovely handbags made out of carpets and one of the first ladies to be called to the Saudi Arabia bar. Having written recently about the topic in "Saudi Women can now practise Law" 14 Oct 2013 I was delighted to meet her. I told her how good it was to see her country's athletes at the London Olympics and how womankind around the world (and no doubt most men) will rejoice when our Saudi sisters are allowed to drive.

It was a very good meeting and I thank the Arab-British Chamber of Commerce for the invitation to speak. Should anybody wish to discuss this article, my slides or any other topic he or she can contact me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. He or she can also send me a tweet, write on my wall or contact me through G+, Linkedin or Xing.

Sunday, 1 December 2013

Arab-British Chamber of Commerce International Intellectual Property Rights Conference

The Arab-British Chamber of Commerce will hold a conference at the Langham Hotel in 1 Portland Place, London W1B 1JA on international intellectual property rights between 09:30 and 15:00 on 12 Dec 2913.

The keynote speaker will be Dr Muhammad bin Abdul-Kareem Al-Issa, the Minister of Justice of Saudi Arabia.  I shall be one of the other speakers and will give a very short talk on TRIPS.  

Discussions will focus on
  • Strategic Dialogue on Changing Public Perceptions on Counterfeiting and Intellectual Property Theft, and
  • Coordinating Law Enforcement, Government and Business Institutions Actions against Counterfeiters. 
There will be a networking lunch and a memorandum of understanding to establish the Saudi-British Arbitration Centre to promote commercial arbitration as an effective alternative to litigation will be signed.

If you want to attend this event you can register through thins link.  I look forward to meeting some of my readers there,

Monday, 14 October 2013

Saudi Women can now practise Law

One of the most welcome developments from the region for some time has been the licences tom practise law granted to four women by the Saudi Ministry of Justice (see Jonathan Ames "Saudi Arabia grants first woman full lawyer practice rights" 8 Oct 2013 The Lawyer).  My heartiest congratulations to all of them and my best wishes for the future.

As Jonathan Ames points out in his article this development will make it much easier for Western firms to set up joint ventures with local law firms.  One firm that already has an alliance with a Saudi law firm is Simmons & Simmons.  Their local ally is Hammad & Al-Mehdar of Jeddah which already employs Ms. Arwa Al-Hujaili as a trainee lawyer.

Saturday, 28 September 2013

Dubai Music Week 24 - 29 Sep 2013

MIDEM (Marché International du Disque et de l'Edition Musicale) is holding the first music industry trade show for the Middle East and North Africa in Dubai between the 24 and 29 Sept 2013, The event includes conferences, concerts and an exhibition.  According to the event website, it is taking place in Dubai because of the diversity of its population and its importance as a business hub and centre of tourism.

The event has been reported by the BBC which asks in its clip "US music stars attend Dubai music industry conference" 28 Sept 2013 whether new Arabic language bands can really make money with "file-sharing and piracy prevalent in the region."  Apparently the answer is yes and artists and their managers are developing business models that take advantage of those technologies.

A lesson for the rest of the world perhaps.

Sunday, 15 September 2013

Saudi Arabia Trade Mark Law

In my Overview of Saudi IP law of 22 May 2011 I noted that Saudi Arabia does not have an intellectual property as such and that responsibility for protecting brands, technology and works of art and literature is shared by the Ministry of Commerce and Indutry, The King Abdulaziz City for Science and Technology and the Ministry of Culture respectively.

The Ministry of Commerce and Industry is in Riyadh. There is a Trade Marks section which can be contacted at +(966 1) 206 9449.  The Ministry has now translated into English some of the relevant legislation. WIPO has published statistics for patent, designs and trade mark grants and applications up to 2011.

Monday, 19 August 2013

Ambush Marketing and the World Cup 2022

Ambush marketing has been defined as "a marketing strategy that consists in a company hitching a ride on the back of the sponsor of a sports event whose programme of sponsorship is particularly ill conceived and/or poorly executed" (see Jean-Michel Marmayou "Major Sports Events: How to Prevent Ambush Marketing" African Sports Law and Business Bulletin, 1/2013). A good example of ambush marketing was the distribution of clothing by a Dutch brewery in the 2006 and 2010 World Cups ostensibly in the colours of the Dutch national team that just happened to be the same as those of the brewery (see Jon Kelly "How ambush marketing ambushed sport" 17 June 2009 BBC News Magazine). The brewery which had not sponsored the event got free TV advertising in the Netherlands much to the consternation of another brewery that had sponsored the event.

The mischief of ambush marketing, so it is said, is that it discourages sponsorship and thus increases the expense and risk of hosting the event.  At least that is the justification for the draconian legislation proposed by the Scottish government in its Consultation on Draft Glasgow Commonwealth Games (Trading and Advertising) (Scotland) Regulations 2013
"Games sponsors provide a vital source of funding for the Commonwealth Games, without which Scotland would not be able to host the Games."
My answer to that is that if it is true then maybe we should re-think the way sporting competitions are organized and consider less expensive ways of staging them (see my article "Olympics Association Right and London Olympics Association Right" 31 July 2012 NIPClaw in respect of the notorious London Olympic Games and Paralympic Games Act 2006 and the far more strident criticism of Brian Perlanda in
"The Anti-Competitive Olympic Games" 1 July 2012 54 Orange County Lawyer, No 7, 32).

Nevertheless, we are where we are and the host city contract by which the Qatari Local Organizing Committee and each municipality hosting a match will contain clauses that would inhibit ambush marketing. That may well require special legislation in Qatar along the lines of the legislation for the London Olympics and Glasgow Commonwealth Games. In his article "Qatar! 2022!" in Al-Tamini's Law Update for March 2011 Stephen Jiew wrote:
"It remains to be seen whether Qatar will be enacting legislation specific to the FIFA World Cup to combat ambush marketing as did South Africa as hosts in 2010. If past enforcement efforts are anything to go by, the following could be key features of the event organiser’s program in the combat ahead with ambush marketers:
  • Charge a special purpose vehicle with the authority to investigate and sue ambush marketers and infringers.
  • Embark on an education campaign on the basics of intellectual property and ambush marketing including advertisements in consumer and trade publications targeting the public, retailers, potential sponsors, suppliers, licensees and athlete agents.
  • Publicise legal actions filed alleging IP infringements.
  • Conduct market surveillance of unlicensed merchandise and infringements.
  • Put in place strict regulations at the official venues regulating the rules of entry such that non sponsor merchandise is banned.- See more at:"
The problem of ambush marketing and the response of host governments will be one of the many topics that we shall discuss at a conference on IP and sports that we plan to hold in London early in the new year. Though the immediate emphasis will be on Brazil as it is holding the World Cup next year and the Olympics in 2016 there will be lots to interest Qataris and others from the Gulf and indeed wider Middle East North Africa Area. If anyone wants to be involved in this project give me a ring on +44 (0)20 7404 5252 or contact me through Facebook, Linkedin, twitter or Xing, or fill in my contact page.

Sunday, 28 July 2013

The UAE's Bilateral Investment Treaties

A bilateral investment treaty ("BIT") is an agreement between two governments on the terms by which the nationals of each contracting party may invest in the territory of the other.   A typical BIT will oblige each government to accept investments from the nationals of the other, to treat such investments no less favourably than those of its own nationals or those of the investors of any other country, not to expropriate such investments without adequate compensation and to submit any dispute with an investor to arbitration through the International Centre for the Settlement of Investment Disputes ("ICSID").

BITs have existed for over 40 years but their potency first emerged in a claim by the US waste disposal company Metalclad Insulation Corporation ("Metalclad") against the Mexican government for compensation for the the refusal by the local and state authorities of permission to use a landfill site that Metalclad had acquired near the small town of Guadalcázar, San Luis Potosi for the disposal of toxic waste. Metalclad claimed that the refusal of planning permission amounted to "expropriation" of the landfill site and in their award of 30 Aug 2013 the arbitrators held that the company was right. They ordered the Mexican government to pay Metalclad US$16,685,000. Mexico challenged the award in the courts of British Columbia which was the province in which the arbitrators had sat and won a modest reduction of the damages but the result was seen as a victory for a medium size company against a sovereign government.

Since Metalclad there has been a spate of claims by private companies against states under BITs and some of these relate to intellectual property.   Legislation by the governments of Uruguay and Australia to discourage smoking by requiring cigarette companies to package cigarettes with graphic warnings in the case of Uruguay and plain packaging in the case of Australia have been challenged by the tobacco giant Philip Morris under Uruguay's BIT with Switzerland and Australia's with Hong Kong for expropriation of the multinational's trade marks in those countries. In the claim against Uruguay the arbitrators have recently decided that they have jurisdiction to entertain the claim (see their decision of 2 July 2013 to that effect).   In the claim against Australia the case is proceeding in the Permanent Court of Arbitration in the Hague. Both sides have instructed counsel, the claimants members of the English Bar and the Australians barristers from Australia (see the notice on the PCA's website and Philip Morris's press release of 21 Nov 2011.

The latest claim for compensation in respect of intellectual property is Eli Lilly & Co's for C$500 million against the Canadian government for the invalidation by the Canadian courts of two of its Canadian pharmaceutical patents.   Eli Lilly complains that the Canadian courts have developed a doctrine on utility called the "promise doctrine" which exists nowhere else in the world and results in the invalidation of patents that would be allowed elsewhere.  In Eli Lilly's submission such invalidation amounts to expropriation of its patents without adequate compensation and it has served a notice of intent to claim dated 13 June 2013.  I have written a short article on the claim in "Biting Back: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for Failing to provide Adequate IP Protection" 27 July 2013 as well as a more detailed article that has been accepted for publication in the EIPR.

In my article for the EIPR I have argued that if the invalidation of Eli Lilly's patents and indeed the refusal of planning permission for the use of Metlclad's landfill site amounts to "expropriation" then so too would the failure by a government to provide adequate intellectual property protection.   In this regard, it is worth remembering that the United Arab Emirates has 24 BITs including agreements with the following brand owing and design and technology exporting states:

It is of course worth remembering that BITs can work both ways.   The UAE has BITs with newly industrializing countries such as Bangladesh, Malaysia, Turkey and Vietnam where the Emirati interest is likely to be similar to those of investors from developed states. Similarly, Emiratis have substantial investments in stocks and real estate in London and other European capitals to which these BITs apply.

Should anyone wish to discuss this article, BITs in general or a particular issue call me on +44 (0)20 7404 5252 during office hours London time or fill out my contact form.   You can also follow me on FacebookLinkedin, twitter or Xing.

Sunday, 30 June 2013

Saudi Arabia accedes to the Patent Law Treaty and PCT

On 3 May 2013 Saudi Arabia acceded to the Patent Law Treaty and the Patent Co-operation Treaty with effect from 3 August 2013.  The Patent Law Treaty harmonizes the procedures and formalities for patent applications.  The Patent Co-operation Treaty enables applications for patents for several countries or groups of countries to be made simultaneously.

The only other intellectual property conventions to which Saudi Arabia had previously been party (other than the WIPO Convention and TRIPS) were Paris and Berne.  The Saudi government had notified its accession to those treaties on 11 Dec 2003 and they came into effect on 11 March 204.

For a short overview of Saudi intellectual property law see my article of 22 May 2011.  If you require specific information on intellectual property or technology law anywhere in the Middle East North Africa region or representation members of my chambers will be glad to advise you where we can or refer you to our connections in the region where appropriate.   Call us on +44 (0)20 7404 5252 or complete our contact form.

Saturday, 8 June 2013

Dubai Courts

I have written extensively about the DIFC Courts in this blog ever since I uploaded my article on the DIFC Courts to the JD Supra site on 7 Jan 2011. These are the English speaking common law courts with judges who have held high judicial office in the UK and other Commonwealth countries which administer the commercial and property laws of the Dubai International Financial Centre. Although the jurisdiction of those courts has recently been extended by the ruler's decree of 31 Oct 2011 which I noted in "DIFC Courts Spread their Wings" 7 Dec 2011, it is important to remember that they are not the courts of the United Arab Emirates or even of the Emirate of Dubai.  Dubai, each of the other Emirates and the Federal Government have their own court systems which are quite different.

The Dubai Courts now have an English language website with a schematic diagram on the organization of those courts and information on their work and services many of which are accessible online. The history of those courts is introduced in almost poetic terms:
"The judiciary in Dubai has a beautiful story mixed with fragrance of Arab history that reminds us the stories of earlier judges, such as, Justice Ayyadh Ben Moussa Ben Ayyadh, Justice Abdul Aziz Al Jorjani, Juge Abdel Rahman Bin Qudaamah Al Maqhdussy, whom whenever you mention them you would feel a whiff of breeze carrying aroma of history wherein chastity, piety, Godliness and Personal Affairs knowledge originating from the folds of the Book that has been wore out throughout the ages but did not fade its knowledge, jurisprudence, verses and wisdom."
Though the court system traces its origins to those judges it has developed considerably since the 1970s with the establishment of separate courts of first instance, appeal and cassation. The First Instance Court has general jurisdiction but sits in specialist divisions known respectively as the Civil CourtCommercial CourtPersonal Status CourtCriminal CourtLabour Court and Real Estate Court. Appeals from the First Instance Court lie to the Appeals Court and from there to the Court of Cassation. Many of the services of those courts are available online and may be operated through the website.

There appears to be considerable co-operation between the Dubai courts and those of the DIFC as is clear from the DIFC Courts' Activities and Business Plan for 2013 to 2015.

Our chambers will shortly have permanent representation in Dubai through a resident member. In the meantime, I can respond to any enquiries about this article or the DIDC courts generally. You can contact me in London on +44 (0)20 7404 5252 during office hours or through my contact form You can also follow me on Facebook,Linkedin, twitter or Xing.

Monday, 20 May 2013

UAE Trade Mark Law

Obligation under TRIPS to protect Trade Marks
As a party to the World Trade Organization, the United Arab Emirates is bound by Annex 1C to the Agreement Establishing the World Trade Organization which is better known as TRIPS (Trade-Related Aspects of Intellectual Property Rights).

Art 15 (1) of TRIPS requires member states to provide that:
"Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks."
Art 16 (1) further provides:
"The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use."
Other provisions of the treaty set out the conditions for registration, enforcement and licensing and assignment.

UAE Trade Mark Legislation
The UAE's obligations under TRIPS are implemented by Federal Law No. 37 of 1992 on Trademarks as amended by Law No. 19 of 2000 and Law No. 8 of 2002 (see Jane Lambert "The Legal Order of the United Arab Emirates" 12 Nov 2011).  It therefore applies throughout the Emirates including Dubai and its free zones including the Dubai International Financial Centre which also has its own private law of passing off (see Jane Lambert "The DIFC Law of Passing Off" 7 April 2011).

The Register
Art 5 of the Law establishes a trade mark registry in the Ministry of Economy and Commerce:
"wherein shall be recorded all the trade marks, names, addresses and type of activities of their owners, the descriptions of their goods, products or services and any conveyance, assignment, transfer of ownership, mortgage or licence for use concerning such marks or any other changes."
Registrable Marks
Art 2 provides that
"anything having a distinctive form such as names, words, signatures, letters, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, advertisements, packs or any other mark or group of marks if used or intended to be used either to distinguish goods, products or services whatever their source or to indicate that the goods or products belong to the trade mark's owner due to its manufacturing, selection or trading or to indicate the rendering of a service"
shall be considered a trade mark.   Art 3 excepts from registration signs having the following characteristics:
"1. The mark having no property or distinctive character or that made of data being only the name given by tradition to familiar goods, products, services or the ordinary drawings and pictures of goods and products.
2. Any mark breaching the public morals or violating the public order.
3. Public emblems, flags and other logos, of the State, the Arab or international organizations or an institution thereof or any foreign country except by its authorization as well as any imitation of such emblems, flags or logos.
4. Logos of the Red Crescent or Red Cross and such other similar symbols and the marks being an imitation thereof.
5. Marks that are identical or similar to symbols having a purely religious character.
6. Geographical names if their use would create confusion with regard to the origin or source of goods, products and services.
7. The name, title, picture or logo of a third party unless he or his heirs approve its use beforehand.
8. Particulars of honorary degrees to which a registration applicant does not prove his legal entitlement.
9. Marks that may mislead the public or include mistreatments on the origin or source of products or services or their other properties as well the marks that include a fictitious, imitated or forged trade name.
10. Marks owned by natural persons or legal entities with whom it is prohibited to deal.
11. The mark whose registration for some categories of products or services results in undervaluing other products or services distinguished by such mark.
12. Marks including the following words or expressions :
Concession, Concessionaire, Registered, Registered Drawing, Copyright, Imitation is Considered Forgery or such similar words and expressions.
13. The national and foreign medals, coins and bank notes.
14. The marks deemed as just a translation for a renown mark or another mark already registered, if the registration would confuse the consumers, with regard to products distinguished by the mark or similar products."
These are what we would call in Europe "absolute grounds of refusal.".   Art 4 also excludes:

"1. The trademarks having an international goodwill beyond the boundaries of the mother country, may not be registered unless authorized by the owner or by his official attorney.
2. It is the public's awareness about the trademark that determines its goodwill.
3. A trademark with a goodwill, may not be registered to distinguish products or services that are not similar or compliant with those distinguished by the trademark if:
a. The use of the trademark indicated a link between the goods and services to be distinguished and the goods or services of the original trademark owner.
b. The use led to a potential prejudice to the owner of the original trademark owner."

Art 10 further provides:

"Subject to the provisions of Art. 26 hereof, no trade mark identical or similar to an already registered mark may be registered for the same categories of products or services, or different goods or services, if the use of the requested trademark would generate an impression that such goods or services are linked to the goods or services of the owner of the registered mark or prejudicing his interests.
Should one or more persons apply simultaneously for the registration of the same mark or close or similar marks for one category of products or services, the Ministry shall suspend the registration of all applications until an attested waiver is submitted by the opponents in favour of one of them or a final judgment is awarded in favour of one of them."

Finally, art 26 excludes from registration a trade mark that is struck off for years 3 years fron the date of striking off.

As is the case everywhere, trade marks are registered in the UAE for specified goods or services in accordance with Executive Regulations (art 7). Applications for registration are examined within 30 days of filing (art 11 (1)).

If an application is refused the applicant has 30 days to appeal to a committee consisting of representatives of the Minister of Economy and Commerce and two from the Chamber of Commerce ("the Committee") and from there to the Court under art 12 (2).

If an application is accepted it is published in the Ministry's Trade Marks Bulletin and in two Arabic language daily newspapers. Those who object to the application have 30 days in which to give notice of their objection.  Such notice is then sent to the applicant who is invited to reply.  The Ministry considers the parties submissions under art 15 and decides whether to entertain the opposition or to allow the application to proceed to grant and, if so, on what terms. Any party dissatisfied with the Ministry's decision may appeal to the Committee and thence to the court

If a mark is registered registration takes effect from the date of filing (art 16). The same article provides that the registered proprietor is given a certificate containing the following particulars:
"1. Registration number of the mark.
2. Date of submission of application and date of registration.
3. Trade name or name, nationality and domicile of the mark owner.
4. Duplicate of the mark.
5. Description of the products, goods or services for which the mark is designated and their category.
6. Number and date of the international priority right and name of the State Member in Paris Convention for the Protection of the Industrial Property, where the priority right application has been lodged."

Effect of Registration
Art 17 (2) provides that
" The owner of a registered trademark may prevent others from using a similar or identical trademark, to distinguish products or services that are identical, similar or correlated for which the mark has been registered, in such a way that confuses the consumers."
Once a trade mark has been used continuously for 5 years of the date of registration without any challenge as  to validity title to the mark may not be disputed (art 17 (1)).

A mark may be registered for 10 years and may be renewed indefinitely for further periods of 10 years for so long as it is used.

A trade mark is infringed if the same or similar mark is used for gods that are the same or similar to those for which the mark is registered.  Infringement of a trade mark is both a criminal offence and a breach of statutory duty.  The penalty for trade mark infringement is a fine, prison or both.   Interim and final injunctive relief and damages are available to trade mark owners against infringers. Infringing goods may be seized before the commencement of civil or criminal proceedings.

Further Information
Our chambers is developing a presence in the United Arab Emirates and has recently recruited a resident tenant. If you require advice on any aspect of intellectual property or technology law including licensing and franchising or representation before the DIFC Courts or any arbitration, contact Stephen Broom on +44 (0)20 7404 5252 or fill out our contact form.

Sunday, 14 April 2013

Angels in Dubai

According to its website, Envestors Dubai is the only active business angel network in the region. Angel investment is not entirely new to the Middle East and North Africa or even to the Gulf Co-operation Council region. I wrote a short piece about Angels Den in Qatar on 26 Sept 2011.

For those who are still unfamiliar with the concept I defined a business angel on the Inventors Club website as "a wealthy individual who wishes to invest in a new business." Typically, he or she may well have already built up and sold a business and will therefore have acquired skills, knowledge and experience that can be shared with the new business. Some angels invest as individuals and others as members of syndicates.   In the UK an investment can fall anywhere between £10,000 and 750,000.  I wrote a little primer on angel investment for my former chambers website in "On the Side of the Angels" on 8 July 2011.

Envestors Dubai appears to be the trading name of Envestors MENA Ltd. which is a member of the Braveheart Investment Group plc of Perth in Scotland.  Braveheart was formed in 1997 and manages around £120 million.  It offers equity, loan and mezzanine funding to SME as well as advice on corporate finance and investment readiness. For more information on that country and Envestors see "Envestors to operate YABA" in my IP Yorkshire blog (13 April 2013).

Envestors Dubai claims to have met and advised over 1,000 companies in the last 3 years, and have selected about 20 to take forward and present to its investors, of which approximately 50% have been funded.   A profile of the company's investors appears on the "Our Network" page of its website, The investment opportunities on offer are on the "Current Deals" page.

Anyone looking to invest and indeed anyone seeking angel investment will require advice on company law, contracts, employment, tax and, of course, intellectual property. I can help with IP and I have written a short article "What Business Angels and VCs need to know about IP" which can be downloaded from the JD Supra website. Parties to a licence, joint venture, shareholders' agreement or other transaction can write their contracts in English, choose to govern them according to DIFC law (which is based on the common law) and to refer any disputes to an English speaking common law court with a judge from the United Kingdom or other common law country by inserting a Dubai International Centre Courts jurisdiction clause (see "DIFC Courts: Choice of Jurisdiction Clauses" 28 Dec 2012).

If you want to talk to me about this article, you can reach me through my contact form or call me on any of the above numbers. You can also follow me on Facebook, Linkedin, twitter or Xing.

Sunday, 7 April 2013

DIFC Courts Code of Best Professional Practice

On 27 March 2013 the Dubai International Financial Centre ("the DIFC") Courts published a Code of Best Legal Professional Practice (the "Code"). According to the Foreword by the Chief Justice, Michael Hwang SC, the Code has no statutory or regulatory underpinning just yet but the provisions relating to litigation will be incorporated into the Code of Professional Conduct for Legal Practitioners (Practice Direction No. 2 of 2009). Moreover, the courts will regard the Code as a benchmark for behaviour and professional standards and any "failure by a DIFC lawyer or a DIFC firm to behave in accordance with the Code is likely to have consequences for that lawyer or firm in the event that such conduct becomes relevant to any case or hearing that comes before the DIFC Courts."

The Code applies to those who appear as advocates before the courts as well as those who conduct legal business in the DIFC and covers non-contentious as well as contention work  The Chief Justice says that the Code is
"based on established professional conduct rules drawn from different jurisdictions. It has been the subject of review by those who practise in the UAE. It has also been the subject of public consultation."
It certain;y seems to have drawn heavily on both the Code of Conduct of the Bar of England and Wales and the SRA Code of Conduct.

Should anyone require wish to discuss this article he or she can call me on +44 (0)20 7404 5252 or get in touch through my contact form. You can also follow me on FacebookLinkedin, twitter or Xing.

Wednesday, 13 March 2013

Enforcing DIFC Judgments in England and Vice-Versa

On 23 Jan 2013 Mr Justice Cooke, the judge in charge of the English Commercial Court, and Mr. Michael Hwang SC, Chief Justice of the DIFC Courts, signed a Memorandum of Guidance as to Enforcement between the DIFC Courts and the Commercial Court, Queen’s Bench Division, England and Wales copies of which are on the English Judiciary and DIFC Courts websites.

The DIFC Courts
Paragraph 5 of the memorandum describes the DIFC Courts as follows:
"The DIFC Courts form part of the legal system of the United Arab Emirates, albeit that this memorandum only states the position as it applies to the DIFC Courts. They deal with civil and commercial disputes which are connected to the Dubai International Financial Centre or in respect of which the parties have agreed that the DIFC Courts should have jurisdiction. The DIFC Courts consist of a Small Claims Tribunal (SCT), a Court of First Instance and a Court of Appeal. They were established by Dubai Laws 9 and 12 of 2004 and operate as a common law court, applying the highest international standards of legal procedure. The Courts’ judiciary is selected from common law jurisdictions around the world and from Dubai and enjoy the highest international renown."
I have already written quite extensively about the DIFC Courts. Readers are referred in particular to my article "DIFC Courts" 7 Jan 2011 on JD Supra and my posts "The Legal Order of the United Arab Emirates" 12 Nov 2011, "DIFC Court: Corinth Pipeworks SA v Barclays Bank Plc" 20 March 2011, "DIFC Courts' Jurisdiction: Corinth Pipeworks Appeal Allowed" 25 Feb 2012, "DIFC Courts Spread Their Wings" 7 Dec 2011 and "DIFC Choice of Jurisdiction Clauses" 28 Dec 2012 in this blog. 

The Commercial Court
Paragraph 4 describes the Commercial Court as
"a specialist court within the Queen’s Bench Division of the High Court of England and Wales. It deals with complex cases arising out of business and financial disputes, both national and international, which fall within its jurisdiction. It was established as a separate court within the Queen’s Bench Division by section 3 of the Administration of Justice Act 1970 (now section 6(1)(b) of the Senior Courts Act 1981), although a specialist Commercial List had operated since 1895 for the hearing of commercial cases, to which specifically designated judges with commercial experience were assigned. The Court is internationally recognised for its experience and expertise in commercial dispute resolution."
Readers who wish to know more about the Commercial Court and its practice are referred to the 9th edition of The Admiralty & Commercial Courts Guide.

Status of the Memorandum
The memorandum is not a treaty or legislation.and it makes clear that there is no treaty between the governments of the United Kingdom and the United Arab Emirates whereby British judgments may be enforced in the UAE or Emirates' judgments in the UK.    The memorandum has no legal effect, it is not binding on the judges of either party, it does not supersede any existing laws, judicial decisions or court rules, it is not intended to be exhaustive or to create or alter any existing legal rights or relations.   Its purpose is simply to set out the parties’ understanding of the procedures for the enforcement of money judgments of one party in the courts of the other.

How to enforce Judgments
In both legal systems, judgments of the other party may be enforced as a debt in accordance with the following principles.   It is important to stress that these principles are not confined to the parties' judgments.   They apply equally to the judgments of any foreign court where there is no treaty for the enforcement of judgments between the UK (or as the case may be UAE) and the foreign jurisdiction.

Where a foreign court of competent jurisdiction has determined that a certain sum is due from one person to another, a legal obligation arises on the debtor to pay that sum.  The judgment must be final and conclusive, though it may be subject to appeal.   A foreign court is considered to have competent jurisdiction where the judgment was against a person:
(a)   who was present within its jurisdiction when the action began;
(b)   started proceedings or counterclaimed in the foreign court;
(c)   submitted to the jurisdiction of the foreign court; or
(d)   agreed to submit to the jurisdiction of the foreign court before proceedings began.
There are, however, some foreign debts that cannot be enforced in this way such as taxes, fines and other penalties.

Procedure for enforcing a DIFC Judgment in England
Paragraph 21 of the memorandum provides that n order to enforce a judgment of the DIFC Courts in the Commercial Court, a party must issue a claim form in the Commercial Court, providing a concise statement of the nature of the claim and claiming the amount of the judgment debt. A certified copy of the judgment should be exhibited to the claim form.  A certified copy of a DIFC Court judgment may be obtained by making a without notice application to the DIFC Courts exhibiting a copy of the judgment which is to be certified. The certified copy will be endorsed by a certificate that it is a true copy, signed by a judge or registrar and sealed with the seal of the DIFC Courts.   In most cases a judgment creditor will be entitled to summary judgment under CPR Part 24 unless the debtor can persuade the court that the judgment was obtained by fraud, it was contrary to public policy; or the proceedings were conducted in a manner which the Commercial Court regards as contrary to the principles of natural justice.

Procedure for Enforcing an English Judgment in the DIFC
The DIFC procedure is very similar to that of the Commercial Court.   The Rules and forms of the DIFC Courts are very similar to the those of the English courts.   In particular, Part 24 of the of the Rules of the DIFC Courts  which provides for immediate judgment is similar to CPR Part 24.

Further Information
On 11 Feb 2013 I was invited to join 4-5 Gray's Inn Square which is one of the leading sets of the English bar with expertise not only in intellectual property but also arbitration and alternative dispute resolution, chancery, commercial, construction. tax and other areas of work that fall within the jurisdiction of the DIFC courts.   This connection should enable me to expand my practice in the Gulf and to facilitate a more comprehensive service to clients in that region.   Should anyone wish to discuss this article or any other legal matter connected with the Gulf he or she should call Stephen Broom on +44 (0)20 7404 5252 or use my contact form.   He or she can also follow me on Facebook, Linkedintwitter or Xing..

Thursday, 21 February 2013

Patent Law in Oman

I have already mentioned the intellectual property law of Oman ("Intellectual Property Law in Oman" 31 Aug 2011), the Intellectual property treaties and conventions to which Oman is party and its intellectual property office ("Gulf Co-operation Council Member States - Treaties and Intellectual Property Authorities" 10 May 2012). As Oman is party to the Gulf Co-operation Council Charter, those seeking patent protection in Oman can apply to the GCC Patent Office for a GCC patent or to the Ministry of Commerce and Industry of Oman for an Oman patent.  I discussed GCC patents in my article "Patents: Gulf Co-operation Council" on 21 Jan 2011.  In this article I shall consider the domestic patent law of Oman.

The sources of this law are the Royal Decree No. 67/2008 relating to Industrial Property Rights and their Enforcement for the Sultanate of Oman ("the Decree") and Regulations No. 105/2008 under the Law on Industrial Property Rights & Their Enforcement for the Sultanate of Oman ("the Regulations"). The Decree came into force on the 17 May 2008 and the Regulations on the 2 Dec 2008. Both the Decree and Regulations provide for utility models, industrial designs, semiconductor topographies, trade marks, geographical indications and unfair competition as well as patents for inventions.

S.96 (1) of the Decree requires the Director of Intellectual Property (referred to as "the Registrar") to keep separate registers for patents, utility models, industrial designs, layout designs, marks, collective marks, certification marks and geographical indications.   Those registers are open to public inspection and  are maintained by the Oman Ministry of Commerce and Industry.

A patent may be granted if the invention is "new, involves an inventive step and is industrially applicable" pursuant to s.3 (1) of the Decree,  S,2 (1) excludes the following from patent protection:
"(a) Discoveries, scientific theories and mathematical methods;
(b) Schemes, rules or methods for doing business, performing purely mental acts or playing games;
(c) Natural substances; this provision shall not apply to the processes of isolating those natural substances from their original environment;
(d) Known substances for which a new use has been discovered; this provision shall not apply to the use itself, where it constitutes an invention under Section 1;
(e) Animals other than micro-organisms, and essentially biological processes for the production of animals and their parts, other than non-biological and microbiological processes;
(f) Inventions, the prevention within the territory of Oman of the commercial exploitation of which is necessary to protect ordre public and morality; such exclusion shall not be made merely because the exploitation of those inventions is prohibited by law."

As for computer programs, s.2 (2) provides that s.3 (1) shall not apply to the following inventions:
"(a) Process inventions which, in whole or in part, consist of steps that are performed by a computer and are directed by a computer program; and
(b) Product inventions consisting of elements of a computer-implemented invention, including in particular:
(i) Machine-readable computer program code stored on a tangible medium such as a floppy disk, computer hard drive or computer memory; and
(ii) a general purpose computer whose novelty over the prior art arises primarily due to its combination with a specific computer program "

S.5 (1) provides:
"The application for a patent shall be filed with the Registrar and shall contain a request, a description, one or more claims, one or more drawings (where required), and an abstract. It shall be subject to the payment of the prescribed application fee."
Art 3 (1) of the Regulations requires applications for a patent to be made on a prescribed form which can be downloaded from the Ministry website together with the tariff of the applicable fees.  If the Registrar is of opinion that the Decree has been complied with he must grant a patent pursuant to s.10 (1).   Otherwise the application must be refused.

Scope of Monopoly
 S.11 (1) of the Decree provides that:

  • a patent shall confer on its owner the right to prevent third parties from exploiting the patented invention in Oman; and
  • the right of the patent owner is defined by the claims.
Patents are granted for 20 years (s.12 (1)) but are subject to compulsory licensing under s.13 and revocation under s.14.   Infringements of those rights are actionable in the courts of Oman under s.66 of the Decree.  Remedies include injunctions (interim as well as perpetual) and compensatory damages.

Further Information
Should anyone wish to discuss this article or any aspect of intellectual property law in Oman, he or she can call me on +44 (0)20 7404 5252 or send a message through my contact form.   I am now practising from 4-5 Gray's Inn Square in London which has considerable expertise in international and intellectual property law. You can also follow me on Facebook, Linkedin, twitter and Xing.