The Enforcement Gap refers to the difference between legal theory on anti-counterfeiting; that is how the laws purport to prevent such illegal activities and the practical outcomes. This is the sixth contribution in a series of articles which examines the Enforcement Gap. Our other markets explored are the Enforcement Gap in Thailand, Russia, China, Philippines, Indonesia, Cambodia, Vietnam and Hong Kong.
The United Arab Emirates (UAE) is a federation of seven Emirates (Abu Dhabi, Dubai, Sharjah, Ras Al Khaimah, Ajman, Umm Al Quwain and Al Fujairah). The enforcement of trade mark rights is practiced mainly at a local level and handled by the respective local authorities in each Emirate. This is contrary to the registration of trade marks that is granted and protected at a federal level. These local enforcement authorities are divided into three types: Administrative, Criminal and Civil. The diversity of enforcement options can be viewed as an advantage to clients, especially when looking to the legal provisions governing such enforcement, but this view is not entirely accurate due to the gaps between law and practice in this area.
In this article, we are highlighting gaps which affect overall enforcement strategies and reduce targeted outcomes of the enforcement actions. These gaps can be witnessed in actions taken before the following authorities:
Generally, it is possible to file a complaint with the Police based on the alleged infringement conduct of a third party. The Police will investigate, conduct raids, and make arrests if they feel it is appropriate, and pass the results of their investigations and actions to the Public Prosecutor. After further investigation, the Public Prosecutor may refer the case to the Criminal Court. Trade mark infringers are generally fined and imprisoned.
One of the gaps in criminal enforcement is the long duration until a final judgement is issued by the competent court. The whole process may take between 12 to 18 months and maybe more in complex cases. This is likely to be an issue if the rights holder is expecting swift results. In such cases, we usually recommend enforcement through administrative authorities.
Criminal proceedings will involve an investigation by the Forensic Laboratory (FL) to produce a report verifying the status of the confiscated products. It should be noted that there is a shortage of IP Experts at the FL, and to cover this shortage the FL will rely on experts in other fields that do not have any experience in IP. In addition, the FL will request the rights holder to provide a matching genuine product for comparison and verification purposes, and this is likely to be an issue if the rights holder does not manufacture the matching genuine product. This may negatively impact FL reports if they have no matching genuine sample to compare.
Police authorities do not provide storage facilities for confiscated products. Instead, the rights holder should arrange for and bear the storage costs of the confiscated products accordingly. This is highly likely to be a significant issue given the length of criminal proceedings.
There are no official fees for commencing an enforcement action before the Police/public prosecution. However, there are other fees to be incurred in addition to legal fees, including transport fees and storage fees, which could become exorbitant if the proceedings stretched for one or two years.
Civil cases are commenced by filing a memorandum setting out the case to the Court. A supplementary application may be filed at the same time as the main application. It is the closest equivalent to an application for an injunction. There will be a number of hearings, in which further memoranda will be filed, and eventually the Court will give judgment. The Court can, at any time, decide to appoint an expert to look into any or all the issues in the case. Generally, it will rely heavily on the conclusions in the expert’s report.
Court IP Knowledge
The IP knowledge in the courts could be an issue in the UAE, especially before the Court of First Instance. It should be highlighted to the rights holder that civil litigation may not achieve the targeted results at the court of first instance, and the rights holder is likely to go through further appeals. In the majority of IP related cases the courts of cassation would rectify judgements of the lower courts. Rights holders should therefore need to be aware that such appeals are often necessary, which add to cost and timescale.
Execution of Judgements
Another gap to be flagged is the execution of final judgements, which can be an issue if the defendant is not willing to comply with the court judgement and intends to delay the enforcement procedures.
The gaps highlighted above do not prevent IP enforcement but rather they stretch enforcement timelines and costs.