IP Litigation in the DIFC Courts

Author  Jens Cederskjold  Licence CC BY 3.0  Source Wikimedia Commons

 

Jane Lambert

The Dubai International Financial Centre ("DIFC") is a 110-hectare section of Dubai with its own common law legal system administered by English-speaking judges. Its legislation is based on the laws of England and Wales and other common law countries.  On 21 Nov 2019, the Ruler of Dubai enacted the DIFC Intellectual Property Law 2019, which I discussed in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019.  

One of the most interesting provisions of that enactment is the establishment of a Commissioner of Intellectual Property with power to resolve most intellectual property disputes quickly and cheaply.  I discussed the Commissioner's functions and responsibilities in DIFC IP Law Update on 24 Jan 2025.  However, there are likely to be cases that can best be decided by a judge.  These might include actions with complex facts or difficult points of law, claims that require an inquiry into damages or an account of profits or circumstances where justice might be defeated unless an interim injunction can be obtained quickly.  As the Innovation Hub and the AI Campus grow and develop, disputes are likely to arise that require the sort of robust judicial response that is available in London and Singapore.    

The DIFC Courts consist of a Court of First Instance, a Court of Appeal and a Small Claims Tribunal. The Court of First Instance is divided into 4 specialist Divisions, namely a Civil and Commercial Division, a Technology and Construction Division, an Arbitration Division and a Digital Economy Court.  Art 22 (2)  of DIFC Court Law 2004 enables the Court of First Instance to "order an injunction restraining a person from engaging in conduct or requiring a person to do an act or thing or other order the Court considers appropriate."  Art 36 (1) (a) of The Law of Damages and Remedies 2005 empowers the court to grant interim injunctions,

The Rules of the Dubai International Financial Centre Courts 2014 resemble the Civil Procedure Rules ("CPR") and contain many similar provisions, but they differ in several ways.  There is no equivalent to CPR Part 63 in the DIFC Court Rules, and the Courts' practice directions do not supplement Parts of the DIFC Court Rules.  Another important difference between IP litigation in the UK and in the DIFC Courts is that the DIFC Intellectual Property Law 2019 does not permit the DIFC Courts to revoke or declare invalid Gulf Co-operation Council or Emirati patents or other registered rights.  It is not yet clear whether the DIFC Courts would reach a similar decision to that of the Court of Justice of the European Union in Case C‑339/22, BSH Hausgeräte GmbH v Electrolux AB EU: C:2025:108, [2025] EUECJ C-339/22, [2025] WLR(D) 306, ECLI:EU: C:2025:108, 25 Feb 2025 where the Court believes such a patent or other IP right to be invalid.

The procedure for obtaining interim injunctions in the DIFC Courts is similar to that of England and Wales.   Applications are launched by an application notice supported by evidence in one or more witness statements, a statement of case verified by a statement of truth or the application notice itself.  A distinction is drawn in the timetable for exchanging evidence between applications that can be heard in less than 2 hours ("ordinary applications") and those that are likely to require more than 2 hours ("heavy applications").  Both appear to be treated as equivalent to "applications by order" in England and Wales.   As in those countries, an applicant for an interim injunction must undertake to the court to pay such damages as the court considers that the applicant should bear.  The court may order an applicant to give security for his or her undertaking.

The DIFC Courts Rules provide for freezing injunctions and search orders to be ordered in appropriate circumstances. The evidence supporting applications for such orders should be made by affidavit rather than in witness statements.   An independent legal representative with experience in executing similar search orders should supervise any search that may be ordered.  Such legal representative should report to the court on the execution of the order after such execution has been carried out.

There is no specialist intellectual property list in Dubai.  The Digital Economy Court probably comes closest. I mentioned that Division and its jurisdiction in DIFC IP Law Update 2025 on 25 Jan 2025. HE Justice Michael Black KC, one of my contemporaries at the Manchester Bar, has charge of that list.

Anyone wishing to discuss this topic should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page at any time.

DIFC Small Claims Tribunal

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Jane Lambert

The Dubai International Financial Centre ("DIFC") has its own legislation modelled on United Kingdom statutes or codifications of principles of English common law. Those laws are administered by special English speaking courts known as the DIFC Courts. I discussed the jurisdiction in DIFC Courts 7 Jan 2011 JD Supra.

The DIFC courts consist of a Court of Appeal, Court of First Instance and a Small Claims Tribunal ("SCT"). The jurisdiction of the SCT has been extended by the DIFC Courts Rules of Court Order No. 1 of 2015 In Respect of the Jurisdiction of the Small Claims Tribunal of the DIFC Courts. Part 53.2 of the Rules of the DIFC Courts ("RDC") provides that:

"The SCT will hear and determine claims within the jurisdiction of the DIFC Courts:

(1) where the amount of the claim or the value of the subject matter of the claim does not exceed AED 500,000 or;
(2) where the claim relates to the employment or former employment of a party; and
all parties elect in writing that it be heard by the SCT (there is no value limit for the SCT’s elective jurisdiction in the context of employment claims); or
(3) which do not fall within the provisions of sub-paragraphs (1) or (2) above, but in respect of which:

(a) the amount of the claim or the value of the subject matter of the claim does not exceed AED 1,000,000; and
(b) all parties to the claim elect in writing that it be heard by the SCT, and such election is made in the underlying contract (if any) or subsequent to execution of that contract; or

(4) such other claims as may be ordered or directed by the Chief Justice to be heard by the SCT from time to time."

Although it is called a small claims court, the SCT's financial limits are quite high. There are approximately AED 4.71 to the pound at current rates of exchange so AED 500,000 equates to £106,180.50 and AED 1 million to £212,383.89.

The procedure is set out in Part 53 of the RDC which appears to have been modelled on Part 27 of the English Civil Procedure Rules. There is also a useful guide to the procedure entitled Small Claims Tribunal. Unless the judge orders otherwise neither party can be legally represented and recoverable costs are limited to such part of the issue fees as the court considers reasonable unless a party has acted unreasonably.

Most cases before the SMT are resolved very quickly. A defendant has only 7 days in which to file a defence and a consultation in which the court seeks to resolve the dispute without a trial is ordered to take place as soon as possible thereafter. Many cases are settled at the consultation which enables the SCT to resolve most disputes within a month of the issue of the claim form. The SCT has power to grant any final order that could have been granted by the Court of First Instance including a final injunction. Judgments of the SCT can be found on the DIFC Courts website,

Should anyone wish to discuss this article or the DIFC courts generally, he or she should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

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.

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, Linkedin, twitter or Xing..

Qatar Financial Centre

Like Dubai, Qatar has established a financial centre with its own legal system which is called the Qatar Financial Centre ("QFC"). The Centre has its own constitution, primary and secondary legislation and institutions including a Civil and Commercial Court that is distinct and separate from, and independent of, all other Qatari courts.

The QFC Constitution

The CFC is established by Law No. 7 of 2005 ("the QFC Law") which was signed by the Emir of Qatar on 9 March 2005 and came into force on 1 May of that year. Art 2 (1) of the QFC Law provides for a business and financial centre to be located initially in Doha. It is possible under art 2 (3) for businesses located elsewhere in Qatar to be treated as though they were operating in the Centre provided that they undertake to relocate to the Centre. Art 3 (1) provides for the QFC to be governed by a QFC Authority consisting of a Board chaired by the Minister of Economics and Finance of Qatar and up to 9 other members appointed by the Council of Ministers. The Board's duties include laying down general policies and plans for the centre (para 5.1 of Sched 1 to the QFC Law) and proposing legislation to the Minister (para 5.2). Art 8 establishes a regulatory authority, regulatory tribunal and Civil and Commercial Court. The Minister has power under art 9 to enact primary legislation known as "regulations" for the QFC within the scope of Schedule 2 which includes intellectual property (para 10 of Sched 2).

Legislation

So far the Minister has made regulations for arbitration, companies, contracts, data protection, employment, financial services, immigration, partnerships, tax and trusts. Some of those regulations provide for the QFC Authority to make secondary legislation known as "Rules". Art 21 (1) of the Data Protection Regulations 2005. for example, enables the QFC Authority to make rules in respect of any matter relating to the processing of personal data and data controllers. Accordingly, the Authority has made the Data Protection Rules which cover the processing of sensitive data, transfers of data out of the QFC, notification and claims to the Regulatory Authority for relief for alleged breaches of the Data Protection Regulations.

The Civil and Commercial Court

Para 1 of Sched 6 of the QFC Law provides for the Civil and Commercial Court to be governed by a Chairman and a number of other legally qualified members none of whom may be members of the Board. None of those members may sit on the Board, regulatory authority or any other QFC institution. Para 8 of that Schedule provides for the Court to have original and appellate jurisdiction for which purpose it sits in First and Appellate Circuits.

Judiciary

The President of the QFC Civil and Commercial Court is Lord Woolf . the former Master of the Rolls. Other judges include Lord Cullen, Lord Scott, Sir Philip Otton, Sir Peter Gibson and Barbara Dohmann QC. There are also judges form other jurisdictions and academia.

Case Law

Judgments of the Court are published on the QFC website. Particularly interesting is the recent decision of the Court in Re Al Mal Bank LLC, Omara and Another v Al Mal Bank LLC where it considers its jurisdiction to make freezing orders in a company insolvency in the absence of a rule book.

Further Information

Any member of the Bar of England and Wales or of any other jurisdiction may appear before the QFC Court. There is already a set of chambers in Qatar though none of its members claims expertise in intellectual property. Should anybody wish to discuss this article further he or she can get in touch through my contact form.