UAE Law and Practice Contributed by: Maria Farrukh Khan, Fatima Shah, Heera Sandeep and Essam Abdel Khaleq, United Trademark & Patent Services
7.8 Effect of Trade Mark and Copyright Office Decisions For trade marks, Ministry decisions may result in: • seizure of infringing goods, materials, tools, equip - ment and proceeds; and • prevention of entry to commercial channels and of export (including imported goods after customs clearance). The civil courts are not bound by trade mark or copy - right office decisions. The owner can file a civil court lawsuit for compensation. Copyright office decisions (Ministry of Economy, Grievance Committee) do not automatically bind civil courts. Summary judge orders provide immediate relief; full disputes (including damages) are resolved in the civil courts. 7.9 Counterfeiting and Bootlegging Trade mark counterfeiting refers to fraudulent imita - tion of a trusted brand and using a trade mark without permission. Criminal complaints (police/public prosecutor) can be made in case of: • counterfeiting/forging a trade mark; • knowingly using a forged/counterfeit mark; • possession of counterfeiting tools; • importing/exporting counterfeit goods; and • selling counterfeit goods. Importers must declare all goods, including alcohol, to customs; failure to do so is considered indicative of smuggling, attracting penalties and confiscation. Food requires health certificates, and alcohol requires special licences. Copyright counterfeiting/bootlegging refers to unau - thorised commercial/public use of protected work, or unauthorised recording/exploitation of live perfor - mances. Remedies include urgent orders (suspend publication, seize copies, attach revenues), customs blocking, confiscation, destruction and closure of the establishment involved. Liability includes civil com -
21). Co-authors, employees and employers may hold economic rights (Articles 26–30), limiting unilateral enforcement. 7.5 Lawsuit Procedure Trade mark infringement and cancellation actions are filed with the Ministry of Economy. No legal notice is required. A mark must be registered in the UAE. A foreign trade mark owner may bring infringement claims in the UAE. Infringement actions are filed before the Civil Court of First Instance. In urgent measures, a summary judge may order seizure, suspension of publication suspen - sion or attachment of revenues. Criminal proceedings are also available, with penalties including fines and/or imprisonment. Foreign owners may file claims in UAE courts if infringement occurs locally, but without UAE copyright registration, proving ownership is much harder. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants No declaratory judgment proceedings are available. IP rights are protected by the registration certificate. The infringer cannot contest ownership but can initiate invalidation action within a specified timeframe. The infringer can also submit counterstatements/defenc - es; the court reviews the evidence. 7.7 Small Claims For trade marks, before litigation, an administrative complaint is filed with the Ministry of Economy regard - less of claim size. Complaints may initially be filed with the Ministry of Economy to address copyright viola - tions. Under a recent measure, online infringements can also be reported to the Telecommunications and Digital Government Regulatory Authority (TDRA) via InstaBlock, which may block infringing websites in the UAE. Although there are no separate copyright tribunals, a summary judge may, in urgent cases, order suspen - sion, seizure or the cessation of infringing activities. Substantive claims are heard before the Civil Court.
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