UAE Law and Practice Contributed by: Maria Farrukh Khan, Fatima Shah, Heera Sandeep and Essam Abdel Khaleq, United Trademark & Patent Services
9.3 Exhaustion Copyright law in the UAE does not recognise the doctrine of exhaustion (or first sale) for copyrighted works, including software. The law grants the copy - right owner exclusive economic rights, and the mere sale or transfer of a copy does not automatically trans - fer those rights. Instead, the use and distribution of copyrighted works, particularly software, are gov - erned by the terms of a licence agreement between the copyright holder and the user. Even if a customer purchases a copy, the copyright owner retains control over reproduction, distribution and other uses, and the customer’s rights are limited to what the licence permits. Therefore, unlike trade marks, where paral - lel import may be restricted via a local agent or dis - tributor, in copyright, the concept of a local distributor does not exist, and unauthorised resale or sharing, whether digital or physical, is generally prohibited. Judges in the UAE have discretion in ordering reme - dies. Trade mark owners can apply to the court for the injunctive or precautionary relief that is awarded when required to prevent injustice from allowing a party to continue the business related to the dispute, provided the applicant has strong grounds for an infringement claim or a good reason as to why the defendant will dissipate the related assets, etc. Once a precautionary measure is granted, the trade mark owner must file the main lawsuit within 20 days; otherwise, the order may be cancelled at the defend - ant’s request. The defendant may file an appeal against a preliminary injunction, where the defendant may challenge the plaintiff’s standing, if: • the seized products are not mentioned in the plain - tiff’s trade mark registration certificate; • the trade mark on the seized goods is different from the shape of the mark on the plaintiff’s trade mark registration certificate; 10. Remedies 10.1 Injunctive Remedies • the plaintiff has not provided sufficient security to compensate the defendant for damages if it turns out that s/he is not entitled to his/her claim;
• there are substantial defects in the POA of the plaintiff’s lawyer; • the plaintiff also holds a trade mark registration certificate for the mark on his or her goods; or • there is prior consent from the trade mark owner allowing the defendant to use the trade mark. The foregoing cases apply to both copyright and other IP rights. The copyright owner may obtain urgent interim injunc - tive relief from the judge of summary proceedings, including suspension of publication, manufacture, performance or communication of the infringing work, seizure of infringing copies and reproduction materi - als, attachment of revenues generated from infringe - ment and suspension of customs clearance of infring - ing goods for up to 20 days. The judge has broad discretion to grant, limit, modify or revoke such measures and may require the appli - cant to provide security. Injunctive relief is granted where the claimant establishes prima facie owner - ship of a protected work, prima facie infringement, and urgency or risk of continued harm; the law does not expressly require proof of irreparable harm, bal - ance of hardships or public interest as in common law jurisdictions. A defendant may oppose a preliminary injunction by showing lack of infringement, applicabil - ity of statutory exceptions, public domain status, valid authorisation or licence, absence of urgency, delay, disproportionality, abuse of process or procedural defects. 10.2 Monetary Remedies The following monetary remedies are available to trade mark and/or copyright owners: • the trade mark owner may file a lawsuit with the civil court to claim compensation in accordance with the damages incurred; and • recovery of the costs of the suit – ie, costs incurred during litigation. The judges have the discretion to decide whether to grant these remedies, as well as the amount to be ordered. While determining this, the court will keep in mind the following factors:
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