September 2015

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Owners may seek criminal prosecution through the criminal court, to which they can join a civil claim.  Customs border measures are another method.  Finally, there is the option of administrative action through in-market raids carried out by Department of Economic Development (“DED”) inspectors.

Administrative actions are carried out in the UAE through the DED in Dubai, Sharjah and Abu Dhabi, or coordinated through the Ministry of Economy in the other Emirates.  The actions are usually launched by brand owners against outlets that sell counterfeit goods.

The Dubai DED is currently the most active law enforcement agency in the UAE with respect to anti-counterfeiting actions and has its own inspectors who conduct regular market visits and undertake inspections on behalf of brand owners.

Generally speaking, in order to enable the concerned inspectors at the Dubai DED to list a particular brand on their ‘watch list’ while conducting their regular inspections in the market, a certain infringer must be identified and official fees of AED2,010 must be paid to record a trademark and open a file.  This is usually called an Open File and will be valid for six months only.

For the purpose of facilitating the process of trademark protection and to enable all brand owners to protect their trademarks through administrative procedures effectively, the Dubai DED has recently issued a decision which allows brand owners to record their brand free of charge and for an unlimited time, so long as the trademark registration certificate in the UAE is still valid.  This decision is a great benefit to brand owners, as counterfeit goods bearing their registered brand will be under watch by the Dubai DED inspectors with no additional charges.  Nonetheless, the official fees are still required to address a complaint against a particular infringer.

Requirements to record the trademark before the DED and to open a general file include a copy of the UAE trademark registration certificate and an explanatory document.

The remedies for administrative actions are usually confiscation and destruction of the goods with a fine imposed against the infringers.  The advantage of administrative complaints is that they are quite efficient and quick, compared to court actions.

This new strategy of interacting with brand owners will assist to protect recorded brands effectively without added complexities or fees.  We urge all brand owners to consider such initiatives and take further steps to effectively monitor the market against counterfeits.

For assistance with any Intellectual Property queries in the Middle East, please contact Omar Obeidat at o.obeidat@tamimi.com or Munir Suboh at m.sobuh@tamimi.com.