UAE Law and Practice Contributed by: Maria Farrukh Khan, Fatima Shah, Heera Sandeep and Essam Abdel Khaleq, United Trademark & Patent Services
infringement and of the infringer. Filing within three years of infringement is again needed. Claims arising from copyright-related contracts (such as licensing agreements or assignments) have a long - er limitation period. Concerning moral rights, there is no prescription. Courts may consider a delay when assessing liability/compensation. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Registered owners of trade marks can seek: • permanent injunction; • precautionary attachment and destruction of infringing goods; • import/export restrictions; • damages; and • litigation costs. Claims are stronger when the mark is registered. Infringement types include: • unauthorised use diminishing a mark’s value; • deceptively similar marks causing consumer confu - sion about origin; and • copying well-known marks (even for unrelated goods/services), thereby creating an unauthorised perception of connection. Likelihood of confusion is judged considering visual, phonetic and conceptual similarities, and similarities of goods/services and channels of trade. Remedies (civil, criminal and administrative) in case of copyright infringement include injunctions, seizure/ destruction, compensation (moral/economic damag - es), fines, imprisonment, confiscation and customs suspension. These apply equally to registered/unreg - istered works (protection is automatic upon creation). Infringement (unauthorised exploitation) encompass - es reproduction, distribution, public communication, online availability, performance fixation/exploitation and interference with technological protections. Ele - ments to prove include existence/ownership of the
work, unauthorised third-party use, infringement in the UAE and damage (for compensation). Though not specifically classified as direct/contribu - tory infringement, the law recognises both direct infringement and secondary facilitation. Article 40 of the Trademark Law criminalises the circumvention of electronic copyright management systems (equiva - lent to rights management information per the WIPO Copyright Treaty). 7.3 Factors in Determining Infringement For trade marks, the factors considered in determining whether use constitutes infringement are as follows: • whether the sign is identical or confusingly similar to a registered mark; • whether goods/services are identical/similar to those for which the mark is registered (or even dis - similar in case of well-known marks); and • the likelihood of consumer confusion about origin. For copyright, the factors considered in determining infringement (established under the Copyright Law) are as follows: • violation of economic/moral rights (copying, distrib - uting, performing, making available online); • whether use is beyond permitted exceptions (per - sonal, educational, quotation); • unauthorised modifications, derivatives or com - mercial exploitation; and • harm (in the context of compensation). 7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no prerequisites to filing a lawsuit. Legal notice is common but not necessary, and there is no mediation requirement. Concerning restrictions, trade mark owners are vul - nerable to counteraction in case of baseless/ground - less threats. Copyright owners cannot prevent Article 22 exceptions (personal copies, educational, quota - tions, family performances, library/archive copying). Abusive enforcement or anti-competitive threats are challengeable under civil/competition law. Compul - sory licences may permit use without consent (Article
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