IP Provisions of a Free Trade Agreement between the Gulf Cooperation Council and the UK

By Commander Leroy Chiao - NASA website, Public Domain,
https://commons.wikimedia.org/w/index.php?curid=397518

 

Jane Lambert

Negotiations for a free trade agreement between the British government and the Gulf Cooperation Council have been underway since 2022.  According to the Minister of State for Trade Policy and Economic Stability, negotiations have covered services, investment and digital technologies as well as trade in goods (see Free Trade Agreement with the Gulf Cooperation Council (GCC): Update on Continuous Negotiations Statement made on 18 December 2024 Statement UIN HCWS333).

In June 2022, shortly before the negotiations began, the Department for International Trade published UK-Gulf Cooperation Council Free Trade Agreement UK’s Strategic Approach.  Although it was the work of the previous government, that publication has never been revoked, superseded or amended.  It is therefore reasonable to suppose that it reflects the present administration's thinking.

Chapter 3 sets out the government's objectives, which include:

"Intellectual property 

• Protect the UK’s existing IP standards. 
• Ensure rights holders receive protection and fair remuneration for the use of their works abroad, whilst ensuring reasonable and fair access for consumers. 
• Achieve an effective balance between rewarding research and innovation, whilst refecting wider public interests such as ensuring access to medicines. 
• Secure adequate protection for brands and design intensive goods, whilst keeping the market open to fair competition. 
• Promote the accessible, transparent, effective, and effcient enforcement of IP rights, including for online IP infringement, and facilitate cross-border collaboration on IP matters.
• Promote cooperation on an approach on geographical indications which ensures consumers are not misled about the origins of goods, while ensuring they have access to a range of products. 
• Promote provisions which take account of emerging opportunities and challenges in the digital age.
• Ensure consistency with the UK’s existing international obligations, including the European Patent Convention, to which the UK is party to."

An inkling of the provisions that could be agreed is indicated by art 5.1 of the Free Trade Agreement between the European Free Trade Association and the Gulf Cooperation Council Member States:

"ARTICLE 5.1 

Protection of Intellectual Property Rights 

1. For the purpose of this Chapter, "intellectual property" comprises copyright, including copyright in computer programmes and compilations of data, as well as neighbouring rights, trademarks for goods and services, geographical indications, industrial designs, patents, plant varieties, topographies of integrated circuits, as well as undisclosed information within the meaning of Article 39 of the WTO Agreement onTrade-Related Aspects of Intellectual Property Rights (hereinafter referred to as “theTRIPS Agreement”). 

2. The Parties shall ensure adequate, effective and non-discriminatory protection of intellectual property rights, including effective means of enforcing such rights against infringement thereof, in accordance with the provisions of this Chapter. 

3. Each Party shall accord to the nationals of the other Parties treatment no less favorable than that it accords to its own nationals with regard to the protection of intellectual property rights. Exemptions from such obligation must be in accordance with exceptions provided for under Articles 3 and 5 of the TRIPS Agreement. 

4. The Parties shall grant to each other’s nationals treatment no less favourable than that accorded to nationals of any other country. Exemptions from this obligation must be in accordance with the provisions of the TRIPS Agreement, in particular Articles 4 and 5 thereof.

 5. The Parties agree, upon request of any Party to review this Chapter in the Joint Committee in order to avoid or remedy trade distortions and to improve the level of protection. If problems in the area of intellectual property protection affecting trading conditions were to occur, urgent consultations shall take place in the Joint Committee at the request of a Party, with a view to reaching mutually satisfactory solutions. 

6. The Parties shall not later than two years after the entry into force of this Agreement conclude negotiations on an Annex containing further provisions on the protection and enforcement of intellectual property rights. "

As I argued in DIFC IP Law Update 2025 on 24 Jan 2025, the DIFC Intellectual Property Law (DIFC Law No. 4 of 2019) appears to provide a high level of protection for intellectual property owners who fall within the jurisdiction of the DIFC courts.  They have the option of complaining to the Commissioner of Intellectual Property under art 59 (3) (a) of the IP Law and art 2 of The DIFC Intellectual Property Regulations or bringing an infringement action in the Court of First Instance. Where it is not possible to persuade a local licensee or other contracting party to accept English law and the jurisdiction of the English courts, a DIFC choice of law and jurisdiction clause would be the next best thing.

Anybody wishing to discuss this topic may call me on +44 (0)20 7404 5252 or send me a message through my contact form.

DIFC IP Law Update 2025

Dubai Creek

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

 

Jane Lambert

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

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

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

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

In that article, I observed that:

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

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

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

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

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

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

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

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

under Rule 58 (7).

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

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