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.

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.

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: http://www.tamimi.com/en/magazine/law-update/section-7/march-6/qatar-2022.html#sthash.6hBavwwc.dpuf"

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.

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:

• Austria
• China
• Finland
• France
• Germany
• Italy
• South Korea
• Switzerland, and
• the UK.

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 Facebook, Linkedin, twitter or Xing.

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.

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 Court, Commercial Court, Personal Status Court, Criminal Court, Labour 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.

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.

Registration
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.

Infringement
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.