Monday, 26 October 2015

Arab Center for Dispute Resolution: New Kid on the UDRP Block

Every agreement to register a generic top level domain name, that is to say one ending with the suffix ".com", ".org" or ".info", contains a clause requiring the applicant to agree to submit any dispute with a trade mark owner over the domain name to a form of alternative dispute resolution known as "a mandatory administrative proceeding".  This is a form of adjudication by a one or three member tribunal appointed by an approved administrative-dispute-resolution service provider. Those service providers are appointed by the Internet Corporation for Assigned Names and Numbers ("ICANN"), a California company which manages the international domain name system ("DNS") in accordance with a memorandum of understanding with the US Department of Commerce dated 25 Nov 1998.

ICANN has appointed five administrative-dispute-resolution service providers, the latest being the Arab Center for Domain Name Dispute Resolution ("ACDR") which was approved on the 18 May 2013. The others are the Asian Domain Name Dispute Resolution Centre, the Czech Arbitration Court of Arbitration Arbitration Center for Internet Disputes, the National Arbitration Forum and the World Intellectual Property Organization ("WIPO").   ICANN has published the process by which it considers applications for approval as an administrative-dispute-resolution service provider on its website in Information Concerning Approval Process for Dispute-Resolution Service Providers.

The function of an administrative-dispute-resolution service provider is to receive complaints by those who object to the registration of a domain name and allocate them to neutrals known as "administrative panels" to determine whether the complaint is well founded.  If the panel finds that the complaint is well founded he or she can order the company that registered the domain name ("the registrar") to cancel the registration or transfer it to the complainant. The registrar is required by its contract with ICANN to wait 10 business days to see whether the transfer is challenged in the courts in which the registrar or the domain name holder is domiciled.  If it is not challenged the registrar is contractually bound to carry out the panel's order.

The memorandum of understanding sets out a number of principles by which the DNS was to be managed one of which was competition.  Art II C.2 provides:
"This Agreement promotes the management of the DNS in a manner that will permit market mechanisms to support competition and consumer choice in the technical management of the DNS. This competition will lower costs, promote innovation, and enhance user choice and satisfaction."
That include competition between registrars for applications for the registration of domain names and competition between administrative-dispute-resolution service providers in the resolution of domain name disputes.  As all administrative-dispute-resolution service providers have to decide domain name disputes in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy and its Rules for Uniform Domain Name Dispute Resolution Policy, the only scope for competition lies in fees and service.

As the fees charged by the ACDR are comparable with WIPO's and those of other service providers the ACDR must compete on service.  The choice of service provider lies with the complainant who will consider such factors as language, convenience and confidence in the panel.  The ACDR is located in Amman and its offices are described in its application to ICANN for approval as a service provider describes them as "spacious" and "state of the art".  Its staff are said to be "educated in English or French, or both, next to Arabic". Its panel of neutrals are drawn from across the world as well as the Middle East and includes several members of other service providers' panels.

Those factors would might be expected to appeal to complainants in Jordan and other Middle East North African countries but perhaps not so much to those outside the region unless they have trade marks in Arabic. According to the WIPO over 88% of all its disputes since 1999 have been conducted in English followed by Spanish and French accounting for 4.1% and 2.5% respectively. No cases have been conducted in Arabic though there have been 83 cases in Turkish and one in Hebrew. Whereas 663 complaints have been filed from the USA, 267 from France, 220 from Germany and 189 from the UK so far this year there have been only 3 from Qatar and 6 from the United Arab Emirates. It is perhaps not surprising the no decisions have been published by the ACDR so far.

However, that may change with the registration of an increasing number of domain names in Arabic script, more registration agreements in the Arabic language and the economic development of the region generally. The Asian Domain Name Dispute Resolution Centre appears to have developed a market in resolving disputes in Mandarin and that may be a model for the ACDR.

Should anyone wish to discuss this article or domain name disputes in general, he or she should call me on +44 (0)20 7404 5252 during office hours or use my contact form.

Saturday, 19 September 2015

Pursuing Expatriates in England and Wales

Oxford Combined Court Centre
Author Kaishu Tai
Source Wikipedia
Creative Commons Licence

According to such web forums as the Consumer Action Group, Getoutofdebtfree, LegalBeagles and World Law Direct, banks and other financial institutions in Dubai have been chasing returning expatriates in this country for unpaid bank loans, credit card balances and other debts that they are alleged to have incurred in the Emirates. Much of the advice that is posted to those forums is helpful but some of it is not. One or two posts are downright dangerous. Here are some tips for handling such claims.

1.  Foreign debts can be pursued here

As a general rule the courts in England and Wales will enforce foreign debts and other causes of action. Those courts will apply the law of the place where the debt or other cause of action occurred.  Thus, if you have borrowed money from a Dubai bank or credit card company the court will construe and enforce the loan or credit card agreement in accordance with UAE and Dubai law rather than that of England and Wales. There are a number of exceptions. For example, the English courts will rarely entertain a claim where the parties have agreed to resolve their dispute in the courts of some other country or by arbitration. However, that would not prevent the English courts from enforcing a foreign judgment or arbitration award.

2.  Foreign Limitations Periods 

Every legal system sets a time limit for bringing a claim. That is known as "the limitation period." In England and Wales the limitation period for most other claims is 6 years.  In the United Arab Emirates it is much longer.  Art 473 of the Civil Code provides:
"A right shall not expire by the passage of time but no claim shall be heard if denied after the lapse of fifteen years without lawful excuse, but having regard to any special provisions relating thereto."
For many years the English courts applied the English limitation period even if the law of the place where the contract was made provided a different limitation period but our law was changed by the  Foreign Limitation Periods Act 1984. S.1 (1) of that Act provides:
"Subject to the following provisions of this Act, where in any action or proceedings in a court in England and Wales the law of any other country falls (in accordance with rules of private international law applicable by any such court) to be taken into account in the determination of any matter—
(a)  the law of that other country relating to limitation shall apply in respect of that matter for the purposes of the action or proceedings subject to section 1A; and
(b) except where that matter falls within subsection (2) below, the law of England and Wales relating to limitation shall not so apply."
However, that section is subject to s.2 (1) and (2)  of the Act:
"(1)   In any case in which the application of section 1 above would to any extent conflict (whether under subsection (2) below or otherwise) with public policy, that section shall not apply to the extent that its application would so conflict.
(2)   the application of section 1 above in relation to any action or proceedings shall conflict with public policy to the extent that its application would cause undue hardship to a person who is, or might be made, a party to the action or proceedings."
There have been cases where very short foreign limitation periods have been overridden on the ground that they are contrary to public policy in that they cause undue hardship to the claimant but I have found no case where an exceedingly long limitation period has been overridden by an English court. However, it is at least arguable that s.2 (1) and (2) were inserted to enable the English courts to consider lengthy limitation periods like that of the UAE and to override them if need be. I am aware of at least one recent case where an application for summary judgment by a foreign creditor was dismissed on that ground.

Try to settle quickly

Because costs can mount up quickly for all parties the sooner you settle your dispute the better.  The longer you leave it the more expensive settlement will become because you will have to take account of your own and probably the other side's costs.

Practice Direction - Pre-Action Conduct and Protocols

Paragraph 3 of the Practice Direction - Pre-Action Conduct and Protocols provides:
"Before commencing proceedings, the court will expect the parties to have exchanged sufficient information to—
(a)  understand each other’s position;
(b)  make decisions about how to proceed;
(c)  try to settle the issues without proceedings;
(d)  consider a form of Alternative Dispute Resolution (ADR) to assist with settlement;
(e) support the efficient management of those proceedings; and
(f) reduce the costs of resolving the dispute."
The first step is for the creditor's solicitors to write a letter before claim. It is imperative to acknowledge that letter at once. It is unlikely to be a try on even if it is the first communication you have received from the other side in many years. You then have a very short time in which to seek legal advice in order to answer the letter before claim in full.

Getting the Right Legal Advice

Claims by foreign creditors to enforce foreign contracts involve difficult points of foreign as well as English law and not every law firm or barrister has experience of this kind of litigation. Consumer advice services and websites are even less likely to have all the answers. Ask your legal advisor whether he or she has experience of the sort of claim that you are facing and how such previous claims were resolved. Specialist legal advice does not come cheap but it is a lot less expensive than litigation which is likely to result from bad advice or no advice at all. Remember that there are lots of deals that can be done to reduce or spread the cost of legal advice.

Be prepared for Hard Bargaining

The other side are likely to be represented by law firms with years of experience of this kind of litigation and they can be expected to drive a very hard bargain. There is nothing personal in this. They are just doing their job. The best way to deal with them is to follow the Practice Direction and seek and follow the best advice that is available to you.

Further Information

If you want to discuss this article or any related matter, call me on 020 7404 5252 during office hours or use my contact form.

Monday, 17 August 2015

After the oil runs dry - protecting inventions from GCC countries overseas

Beam pump in the West Kern Oil Museum in Tait, California, USA
Photo Konrad Summers
Creative Commons Licence
Source Wikipedia

Over the last few years the governments of the Gulf states have invested heavily in education and research to diversify their economies and lessen their dependence on oil and gas.  Saudi Arabia founded what is now the King Abdulaziz City for Science and Technology in 1977. Dubai established its International Academic City in 2007. The Qatar Foundation has set up Education City in Doha. Such investment appears to have led to good academic research but there have not yet been many applications for patents. Of the 205,268 applications for patents through the Patent Cooperation Treaty ("PCT") in 2013, Saudi Arabia accounted for 187, the United Arab Emirates 57, Oman 3 and Bahrain 2 (see page 41 of WIPO Facts and Figures 2014 ). As for applications to the Gulf Co-operation Council ("GCC") and national patent offices, there were 2,991 to the GCC 1,426 to the United Arab Emirates, 931 to Saudi Arabia, 332 to Qatar and 170 to Bahrain.

Patents are important because they confer a monopoly of a new invention. Art 28 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") requires member states of the World Trade Organization to provide that:
"A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process."
Such monopolies are granted to stimulate research and development.  By restricting the exploitation of a new invention to patent owners, inventors and their investors have an opportunity to recoup their expenditure and perhaps earn a little extra.

In order to maximize a new invention patents should be sought not just for the country in which the invention was invented but also for the countries where the invention or its products are likely to be sold and those in which they could be manufactured.  Two international agreements facilitate patenting of new inventions:
Art 4 of Paris gives applicants for patents up to 12 months priority from the date upon which they make their first application. The PCT facilitates simultaneous applications for patents in a number of countries from a single filing.

The first step for an inventor is to apply for a patent for his or her own country.  Before taking that step the inventor will probably wish to satisfy himself or herself that there is a market for the invention, that he or she can secure investment for it and similar matters. He or she may well be asked for particulars of the invention. if the inventor agrees to such a request he or she should make such disclosure only in confidence. The law of the Dubai International Financial Centre recognizes a duty of confidence (see DIFC Law of Confidence 27 Jan 2011). Inventors who wish to take advantage of such law should make sure that their confidentiality or non-disclosure agreements require the confidante to submit to the courts of the DIFC and provide for the agreement to be construed and enforced in accordance with DIFC law. We can advise you on the law of confidence of the DIFC and draft such agreements for you.

PCT applications proceed in two phases: 
  • an international phase where searches and examinations are carried out for novelty, inventiveness and utility on behalf of all parties to the PCT; and 
  • a national phase where individual offices determine whether an application complies with their national law. 
The reason for those two phases is that the basic requirements of patentability such as novelty, inventiveness and utility are shared by all countries but there are important differences from state to state in other requirements. For instance, art 52 (2) (c) of the European Patent Convention excludes programs for computers from the definition of "invention".  However, that paragraph is subject to art 52 (3) which provides:
"Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
That provision has been incorporated into the laws of each of the parties to the Convention including the UK. Art 52 (2) (c) and (3) and their corresponding provisions in national law have been considered many times by the courts of the contracting states and the Boards of Appeal (internal tribunals) of the EPO over the years. It appears that an invention  can be patented even if it is implemented by a computer program so long as it is something more than a program. Thus, a patent can be granted for a digitally controlled machine tool even if it consists of a known components so long as the tool is novel, inventive and useful but not for the program that actuates the processor that controls the tool.

Because of such considerations, applications for patents should be drawn up by attorneys with experience of the PCT. Attorneys from firms with offices outside the GCC may offer an advantage in that regard and there are several UK firms with offices in the Gulf. We should be glad to effect introductions to such firms if so requested. The same firms will can offer sure footed support to GCC inventors in national and regional patent offices during the national phase.  Occasionally disputes over patentabiluty arise that have to be resolved in the Boards of Appeal or other courts and tribunals. We can represent GCC inventors in hearings before EPO Boards of Appeal, hearing officers representing the Comptroller in the UK Intellectual Property Office and the courts of England and Wales.

Patent enforcement can be expensive particularly in common law jurisdictions such as the UK. We advise GCC inventors to consider taking out IP insurance from the time they file their applications. We can introduce inventors to specialist brokers if need be.  Disputes over whether a patent has been infringed are resolved by the courts of the country in which the infringement takes place. If a GCC inventor's patent has been infringed in the UK we can offer advice and representation in the Patents Court and the Intellectual Property Enterprise Court of England and Wales. A number of European countries including the UK have agreed to establish a Unified Patent Court to resolve disputes over unitary and other European patents (see the Agreement on a Unified Patent Court of 19 Feb 2013). When that court opens we can advise and represent inventors before that court also. For further advice on our services see Jane Lambert IP Services from Barristers 6 April 2013 4 to 5 IP.

Should anyone wish to discuss this article or patent law or the law of confidence on general, he or she should call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.

Monday, 15 June 2015

An IP Case from the DIFC at Last: Capital Healthcare Partners Ltd v Ali Akbar Hashemi

On 27 April 2011 I discussed the Dubai International Financial Centre's Law of Confidence. It is set out in art 37 of the DIFC Law of Obligations (DIFC Law No. 5 of 2005):
"37. Breach of confidence 
(1)  Subject to Article 37(4), a person has a duty not to misuse specific information which he has received from another (a "confidant"), directly or via an intermediary, and which can reasonably be regarded as confidential, where he knows or ought to know that the information is confidential.
(2) If a person breaches his duty as defined in Article 37(1), he is liable to the confidant.
(3) Unless non-confidentiality is otherwise expanded by agreement, information is not confidential if:
(a) it is in the public domain;
(b) it is trivial or useless; or
(c) it is in the public interest that the information should not be confidential. 
(4) Misuse of information includes, but is not limited to, its disclosure.
(5) A person may disclose confidential information where -
(a) the confidant has consented, expressly or by implication, to its disclosure;
(b) its disclosure is required by law;
(c) its disclosure is required in the interests of the confidant;
(d) it is no longer confidential; or
(e) it is disclosed to a person who has a legitimate interest in receiving it. 
(6) It is no defence that the defendant did not know that he was misusing the confidential information."
In CFI 045/2012 TVM Capital Healthcare Partners Limited v Ali Akbar Hashemi 22 May 2014 Justice Roger Giles QC held that the defendant Aki Akbar Hashemi owed the claimant a duty of confidence under a confidentiality agreement dated 24 Nov 2011 and art 37 (1) to use certain PowerPoint presentations that had been given to him in confidence for the sole purpose of evaluating a new healthcare investment on behalf of an undisclosed principal and that he had breached that obligation by disclosing the information to other investors. The judge awarded the claimants damages of AED 250,000 on the basis that that would have been the fee charged by the claimant for relaxing the obligation of confidence. In reaching his decision the learned judge relied on Mr Justice Brightman in Wrotham Park Estate Co Ltd v Parkside Homes Ltd [1974] 1 WLR 798 as it had been applied and extended in subsequent cases.

The defendant appealed against the finding of liability on the ground that the judge should have found that the case was res judicata and thus an abuse of the process of the court, that there was no evidence upon which the award of damages could have been founded and that the claimant should not have been awarded all its costs having regard to the fact that it had claimed US$29 million but had actually recovered only a small fraction of that sum. The appeal came on before Sir John Chadwick, Sir David Steel and HE Justice Omar Al in CA 006/2014 TVM Capital Healthcare Partners Ltd v Ali Akbar Hashemi 27 Jan 2015,

The Court rejected the res judicata and res judicata point on three grounds.  First, not all the parties to the present appeal had been before the court in the proceedings relied upon. These were in any case criminal proceedings rather than a claim for breach of confidence, Secondly, the defendants had been charged with an offence that covered some but not all the claims in the instant appeal. Thirdly, issue estoppel had not been pleaded in the court below.

As to damages, the judge had not erred in his approach and while the figure might have been higher than the appeal judges would have awarded there was no basis on which to interfere with the judge's decision.

The Court did disallow some of the claimants' costs but these were more than offset by his contribution to the costs of the appeal.

The interesting point from this case is that the DIFC courts seem to protect trade secrets by contract but also under the law of obligations as a statutory duty. Also, there seems to be no difference in the basis upon which damages under contract and the law of obligations. Justice Giles gave a very thorough judgment on the point which was not substantially challenged.  Although the DIFC Courts probably reached the same conclusion as would have been reached by an English court the route by which they arrived at it was different.

Should anyone require amplification or clarification of this case, or the DIFC law of confidence generally he or she should call me during office hours on +44 (0)20 7474 5252 or use my contact form.

Saturday, 16 May 2015

Saudi Arabia: More IP Information in English

On 22 May 2011 I wrote Saudi Arabia: Overview of Intellectual Property Law. I supplemented that article with Information in English on Saudi Patent Law on 26 July 2014. In my first article I wrote:
"There is no intellectual property office as such. Patents, industrial designs, chip topographies and plant varieties are registered by the The King Abdulaziz City for Science and Technology ("KACST") which is also the Saudi Arabian national science agency, national laboratory and internet authority for the .sa country code top level domain."
KACST has now devoted a section of its website to patents, designs, semiconductor topographies and plant breeders' rights.

KACST now publishes the Saudi Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs (Royal Decree No. (M/27) dated 17/7/2004) and the Implementing Regulations of theLaw of Patents, Layout Designs ofIntegrated Circuits, Plant Varieties,and Industrial Designs in English. This legislation is supplemented by FAQ on patents, industrial designs, plant varieties and integrated circuits. There are links to the Paris Convention and TRIPS, flowcharts of the patent and design application processes and statistics.

Should anyone wish to discuss this article or Saudi intellectual property law in general, call me on +44 7404 5252 during office hours or use my contact form.

Thursday, 5 February 2015

"Get yourself a good robust agreement"

Arab states
Source Wikipedia

Yesterday I attended a members' networking event at the Arab British Chamber of Commerce in Upper Grosvenor Street. There were 5 minute speeches by 11 businesses whose activities included training under-performing employees, software development, personal security in Southern Iraq, locating art and antiquities on public display, medical insurance broking, accountancy, wellness, money transfer, banking and facilitating business and investment in Saudi Arabia. All good stuff and I personally wish all those companies and business owners the very best of luck.

Before the speeches we heard an interesting presentation by Mr Abdelsalam El-Idrissi, Director of Trade Services of the Arab British Chamber of Commerce, on the history of the Chamber, the economic importance of the Arab world, the Chamber's services and some solid advice on doing business in the Middle East and North Africa ("MENA") in which I learnt a lot of things that were new to me. One of those things was that the Chamber had been created pursuant to decree No:K1175/D52/G of the League of Arab States in 1975 with the mandate of promoting, facilitating and encouraging bilateral trade so the Chamber must be approaching its 40th anniversary. Another was the volume and value of the trade that we do with the MENA region which Mr El-Idrissi demonstrated was more profitable to us than our trade with Brazil, China and India combined.

Mr El-Idrissi concluded his talk with the following top tips for businesses that wish to sell to the region:
  • "Know your product
  • Do some desk research
  • Identify your market
  • Visit the market
  • Appoint a good agent
  • Understand the 40/51 rule
  • Draft a robust agreement
  • Agree payment terms
  • Export documentation"
There was a question and answer session at the end of his talk. I got up and asked Mr El-Idrissi "What should be the proper law of the 'robust agreement'? Should it be local law? Could it be English law or the law of the Dubai International Financial Centre ("DIFC") or Qatar Financial Centre ("QFC") where the laws are in English and they have English speaking judges applying the common law?" Mr El-Idrissi turned the question back on me. "You're a lawyer" he said. "Maybe you should be telling us." He then added that Sharia law is very fair and suggested that we should use that.

I have no doubt that Mr El-Idrissi is right to say that Sharia law is fair and it does have the advantage of being the source of law for the states in which British companies wish to do business. The problem for us is that we don't know very much about it and what little we do know tends to be on the penal sanctions and that scares us (see, for example, the BBC report What is Sharia and how is it applied? 14 May 2014).

As the question was turned back on me this is my advice. Try to persuade your customer, supplier, licensee, joint venturer, agent or other trading partner to accept an agreement in English which is widely spoken in the MENA region. Many business owners and professionals in the region speak the language well having lived in, or travelled to, the UK, the USA or Commonwealth.  English law is also well known and the English courts are well regarded throughout the world. Try to persuade your trading partner and his or her advisers of the advantages to them of choosing English law as the proper law and England as the jurisdiction for the resolution of disputes. If they are not persuaded of those advantages then the DIFC or QFC courts would be acceptable alternatives. If your partner would prefer not to use those legal systems then there is always arbitration in the region.

If you cannot do business on the basis that the agreement is in English and governed by English law then make sure that you are properly advised by a local lawyer who speaks English well and understand our legal and commercial systems as well as his own. I am sure that Mr El-Idrissi and his staff can find you such a lawyer but if they can't I can suggest some names. Over the years I have met a lot of lawyers (particularly in IP) and my former pupil, Alex Khan, has practised in Dubai. Between us we can come up with some reliable practitioners. Call them, talk to them about their education, training, specialization and experience and use your judgment just as you would if you were choosing a lawyer here. Finally, I have a suggestion to Mr El-Idrissi for another event for the Arab British Chamber of Commerce, namely an in-depth workshop on Sharia law for business people. I for one would certainly attend it as a delegate.

Should anyone wish to discuss this article or related matters, call me on +44 (0)20 7404 5252 during normal British office hours or use my contact form.