Well-Known Trademarks, Standards & Protection

September 29, 2019

The UAE Federal Law No. (37) of 1992 on Trademarks defines “well-known” trademark as trademarks that pass borders of the origin country of the trademark to other countries. These may not be registered unless upon a request or official authorization from the original owner. To determine that a trademark is well-known, familiarity with such trademark by the concerned audience due to its promotion shall be considered. Well-known trademarks may not be registered to distinguish commodities or products dissimilar or non-identical to those distinguished by such trademarks if: Use of the trademark indicates to a connection between the commodities or services of owner of the original trademark. Use of the trademark would likely cause damage to interest of the original owner. Many brand owners consider their trademarks as well-known, unfortunately, that may be the reason for losing their cases. If you think that your trademark is well-known, some standards should be taken in consideration. These standards will help you determine if your trademark is well-known. These factors are those which the courts take into consideration along with any circumstances under which the courts may be assumed that the trademark is well-known. The courts will consider documents (including expert report) and information submitted to it with respect to factors from which it may deduce that the trademark is well-known, including but not limited to the following: –              Amount of knowledge of the trademark in the applicable sector of consumers and users; –              Period, and geographical areas of registration, use of the trademark; –              Period, and geographical areas of promotion of the trademark (including advertising); –              The value of the trademark. These standards are only guidelines to assist courts to define whether the trademark is well-known. These are not pre-conditions for obtaining that determination. Hence, the determination in each case will depend on the circumstances and proven facts. Courts usually appoint an expert to determine whether the trademark is well-known. In practice, experts follow these standards in their research to determine if the of trademark is well-known. We, at Al Suwaidi & Company, have handled many successful cases on well-known trademarks. With submission of the proper documents to prove that trademarks are well-known, we obtained a final judgment from the Court of Cassation emphasizing our client’s grounds for its trademark to be classified as well-known and entitled to the mentioned protection under Article (4) of UAE Federal Law No. (37) of 1992. It is the advocate’s responsibility to lead the court to such understanding and recognition, and to increase chances of obtaining a judgment in the client’s favor. Well-known trademark protection, in most cases, is from anything which could be considered as infringement or counterfeiting on that trademark, provided that they are likely to cause confusion to the consumers. Well-known trademarks are often protected, regardless of whether they are registered or not, in respect of services or goods which are the same as or close to be the same as those for which they have gained their reputation. In some countries, such well-known trademarks may, under certain circumstances, also be protected from dissimilar goods and services. In litigation, the following laws and agreements, […]

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Parallel Import in light of UAE Commercial Agencies Law

September 11, 2019

Parallel importation is genuine product importation from another country without the permission of the intellectual property owner. Parallel import is based on the idea of consuming the intellectual property rights. When a product is first sold on the market territory, parallel importation is authorized to all residents in that state. Some countries allow it, but others do not. In the UAE, when there is importation of genuine products, the brand owner cannot take any action under the UAE Trademark Law to stop the importation of genuine products to the UAE. There is no such law prevailing to stop this kind of importation. Under the UAE Law, there is no direct term recognized as “Parallel Import”. Parallel import is implied in Article 23 of Federal law No. (18) of 1981 on Regulations of Commercial Agencies, which says: No person may import any commodities, products, manufactures, or any other material subject to any commercial agency registered in the ministry in the name of another person with the aim of trading except through the Agent. The customs department shall not release such imports brought through another person without the consent of the ministry or of the Agent. At the request of the Agent, the customs department and competent authorities, as appropriate, shall seize such imports and deposit them in the warehouse of the importer until the dispute is resolved, save the material trading which is liberalized under a resolution of the cabinet. The ministry shall remove the commercial agencies in connection with such materials from the commercial agencies register. Based on this article, the sole procedure to stop the parallel import is to enter into a Commercial Agency Contract with a Local Agent and to get this contract registered in the Ministry as per the Law requirements. The Ministry of Economy notifies the municipalities, customs department, the Federation of Chambers of Commerce and Industry, and chambers of commerce and industry in the State of names of agents recorded in the commercial agents register of any change, modification cancellation made to such registration within thirty days of the date of such modification or cancellation. So, the legal protection is provided to the agents once the commercial contract is registered on the Commercial Agency Register, but the registration itself doesn’t stand as a sole procedure to obtain the full legal protection. The duty of an agent is to coordinate with competent authorities to make sure that these authorities are duly notified, and keep following up with these authorities, showing them that the agent is extremely interested to get the full legal protection. Furthermore, the Agent is also having the right to prevent the import of products included in the agency contract if the Agent is not the consignee. Exclusive distributors may apply for this legal protection if they register their contracts in the Ministry and such contract matches the Ministry requirements for such protection. Finally, if you are seeking the right legal protection from parallel import, you have to register you agreement in the Ministry of Economy as agent or exclusive distributer, and to make sure that the competent authorities are duly notified with this […]

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Dubai Judiciary’s approach to investors’ request to cancel sale and purchase agreements and compensation for delay in completion of real estate projects

August 5, 2019

The United Arab Emirates (UAE) is one of the fastest-growing countries in the field of construction and real estate development. Among the seven emirates in UAE, the Emirate of Dubai is one of the leading contributors in the speedy growth of construction and real estate development through the issuance of comprehensive real estate legislations as mechanisms to create protection, assurance and security to the developers, both local and foreign investors and all parties involved in the real estate sector. Due to the influx of real estate investment in Dubai, it is inevitable that some property buyers experienced difficulties, such as delay in the completion of projects by real estate developers, which make the investors and buyers in constant concern and lead them to seek judicial protection by filing cancelation of the Sale and Purchase Agreement, request for compensation for delay and claim for refund from the real estate developer. In this regard, the judicial trend in Dubai has three aspects: First: whether the project’s status is effective and the project’s achievement percentage exceeds 70%. Second: Whether the project status is ineffective and the project’s achievement percentage is low. Third: If the status of the project is canceled. In this article, we present the position of the Dubai Court of Cassation on the first aspect which is if the percentage of the project exceeds 70% and the project status is effective. Is the judiciary going to cancel the contract or not? – and clarify this according to the following: Whereas, the Dubai Court of Cassation determined that, pursuant to the principle of good faith set out in Article 246 of the Civil Transactions Law, it is not permissible for any of the contract parties to refrain from fulfilling their obligation or request cancelation of the contract if the other party has fulfilled his corresponding obligation or a large part of their obligation so that what is not implemented is minimal to the extent that it does not justify the other party who has failed to perform his obligation to take such an action because he is  lacking the good faith in using his right. And that the provisions of Article 272 of the Civil Transactions Law – it has been clarified in the memorandum to this law that the judge does not force the debtor to respond to the request to cancel the contract in case the debtor fails to fulfill his obligations, therefore, the judge may grant him specified additional time, thus, the cancelation shall be governed only by the existence of three conditions: First:  the implementation of the contract is still possible; Second:  the creditor requests the cancelation of the contract without its implementation; and Third: the debtor refrains to fulfill his obligations, so the decision to cancel is justified. The delay in implementing the contract which gives the parties the right to request the cancelation of the contract shall be decided by the competent court, which has the power to evaluate and understand the facts of the claim. Dubai Court of Cassation judgment issued on 27-04-2014 appeal no 216 /2013 real estate The above-mentioned judgment by the Dubai […]

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Eligible Sectors for 100% Foreign Ownership in the UAE Now Defined

July 15, 2019

The United Arab Emirates Cabinet passed a landmark decision last year to allow 100% foreign ownership of companies onshore and have recently announced the industry sectors that are eligible. This marks a significant change from the prior law where foreigners must seek a local partner to set up business in the UAE, onshore and where the alternative for 100% foreign ownership in free zones. International companies seeking to establish an onshore presence would have to team up with a UAE national who is required to own 51% shares of the company. With the Foreign Direct Investment Law (Federal Law No.19 of 2018) (the FDI Law) that came into force on 23 September 2018, 100% foreign ownership of UAE onshore companies will now be allowed in eligible sectors. This move is expected to boost the UAE economy, attract foreign direct investment and reaffirm UAE’s position as an international hub for commerce and an optimal environment for doing business. The specific sectors in which 100% foreign ownership shall be allowed include 122 economic activities across 13 sectors such as: Renewable energy Agriculture Information and communications Food services Hospitality Logistics Manufacturing Space Transport Professional, scientific and technical activities Educational activities Healthcare Art and entertainment Construction Through the inclusion of these sectors in the 100% foreign ownership eligibility list, the UAE aims to attract foreign investment into the production of solar panels, green technology, hybrid power plants and power transformers. The UAE also aims to stimulate foreign ownership into transportation and storage which is expected to increase economic activity in supply chain, logistics, cold storage and e-commerce transport. 100% foreign ownership also extends to specific professional, scientific and technical activities across the identified sectors. For example, investors can now own laboratories for research and development in biotechnology. The UAE Cabinet has indicated that the local governments at an emirate level has the discretion to decide on the percentage of foreign ownership for each sector / activity. A negative list has already been released along with the FDI Law’s publication in the Official Gazette last year. The sectors where 100% foreign ownership shall remain restricted include: Oil and gas Banking Utilities Road and air transport Telecoms Medical retail (including pharmacies) We at Al Suwaidi and Company are continuing to monitor any further legal developments in these areas and shall advise our clients as and when further information and details are released regarding foreign ownership and foreign direct investment into the UAE.

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Trademarks – a Brief Guide to Protecting your Business in the UAE Relating to non-use and Licences

July 4, 2019

General rule There is a general rule in most countries worldwide that states one must use their registered Trademark, or it may be subject to a potential cancellation by a competitor. The concept is known as ‘non-use’. In the UAE, use of a trademark is not required for registration or renewal. However, a trademark is vulnerable to revocation by any interested party if there has been no genuine, effective, or continuous use of the mark (except possibly by a bona fide licensee) for a period of 5 consecutive years beginning on the registration date. As a sole exception, this rule is not applicable on world-renowned trademarks as per article 4 of trademarks law. In other words, any application to cancel a world-renowned trademark based on the non-use for continuous 5 years, will be rejected. UAE Federal Law The UAE Federal Law No. (37) of 1992 is an important reference point. The mentioned law is applicable for the seven Emirates of UAE: Abu-Dhabi, Dubai, Sharjah, Ras Al-Khaimah, Ajman, Fujairah and Umm Al-Quwain. Article 22 of this law is the appropriate provision in dealing with non-use. It states the following: “At request of a concerned party, the competent civil court may cancel a registered trademark, if it is proven that such trademark has not been used for five successive years,  unless the trademark owner proves that non-use of such trademark was for reasons beyond his control including, but not limited to, import restrictions and other government conditions imposed on the commodities and services related to such trademark.  For the purposes of this Article, use of the trademark by a person authorized its owner to do so shall be deemed a use of such trademark” Initially, the applicant must demonstrate that the trademark owner has not used the mark as required by Article 22. If the applicant can put forward a robust case, then the burden of proof is on the owner of the mark to prove that there has been continuous use, contrary to the applicant’s claim. Furthermore, as Article 22 implies, if the trademark owner can demonstrate a reason for non-use relating to import restrictions or imposed government conditions which are beyond his control, cancellation can be avoided. Within this law, article 17 states that once a trademark is used continuously within 5 years of the date of registration, its ownership cannot be disputed. There is an exception: if the challenger can show the mark was registered illegitimately. Article 6bis of The Paris Convention for the Protection of Industrial Property states, “no time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith”. Licensed use Turning to the position where a trademark is used by a licensed business operator, in a distribution agreement, for example. In the absence of use by a registered holder during the initial 5 years, there is some ambiguity concerning use by a licensee where the license is not a matter of record. If this is the case, it reduces the likelihood that use by a licensee will constitute genuine use to keep the mark […]

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The Legitimacy of Arbitration as a Means of Dispute Resolution

July 3, 2019

Islam has legitimized the arbitration method in order to simplify the process of litigation. Islamic jurisprudence has given the subject of arbitration utmost attention and organized a well-established rules and regulations. The advantages of arbitration lie in streamlining its procedures, confidentiality of its hearings, and legal basis in particular if those in charge are recognized for their competence, skill, independence, experience, integrity and wisdom, as well as the possibility of implementing its provisions internationally. The definition of arbitration in law is equivalent to  Islamic Shari’a, which is an agreement between concerned parties for the resolution of disputes outside the courts, wherein the parties to a dispute refer it to one or more persons (the “arbitrators” or “arbitral tribunal”), by whose decision (the “award”) they agree to be bound. The legitimacy of arbitration is evidenced by the Holy Qur’aan and Sunnah, and it differs from Fatwa, judiciary, reconciliation and conciliation, and is a separate contract with its specificities, conditions, rules, and principles. Arbitration in Islamic jurisprudence expands in all its financial and social fields, except Hudud (boundaries), Li’aan (“Mutual cursing”– a form of divorce), and penalties. We find the evidence of  legitimacy of arbitration in the Holy Quran, Allah Almighty Says: (If ye fear a breach between them twain, appoint (two) arbiters, one from his family, and the other from hers; if they wish for peace, Allah will cause their reconciliation: For Allah hath full knowledge, and is acquainted with all things)  An-Nisa: Verse 35, and also says: (But no, by the Lord, they can have no (real) Faith, until they make thee judge in all disputes between them, and find in their souls no resistance against Thy decisions, but accept them with the fullest conviction) An-Nisa: Verse 65. In the Prophetic Sunnah, It was narrated from the Messenger of Allah, peace be upon him, that he said: “Whoever arbitrates between two consensual without fairness, the curse of Allah on him.” As for the consensus: the Companions of prophet, agreed on the permissibility and legitimacy of arbitration. The Islamic and Arab countries paid a particular attention in arbitration, they have a special chapter in the Civil and Commercial Procedures Code. Some countries such as United Arab Emirates recognized arbritration as an independent system through Federal Law No. 6 of 2018. Most of the Islamic and Arab countries joined and ratified New York Convention 1958. The International Islamic Fiqh Academy in its ninth session which was held in Abu Dhabi, United Arab Emirates (April 1995), supported arbitration as a legitimate means of dispute settlement and decided that arbitration is an agreement between the two parties to a specific dispute, to mandate a third party to arbitrate between them and settle their differences through a binding verdict that is observant of Islamic Shari’a. Arbitration, thus conceived, is permissible, whether it is amongst individuals or in the field of international conflicts. It has been clarified that Arbitration is not mandatory for the two conflicting parties nor is it for the arbitrator. Either of the parties may decline it as long as the arbitration has not started, and the arbitrator may disassociate himself from the […]

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Legal Due Diligence: Understanding How a Company Fares

July 3, 2019

UAE has established itself as an economic hub in the MENA Region. Investors are presented with numerous options on how to enter the UAE market. Some establish their own companies while others opt to enjoy the market reputation, existing processes, and manpower of established companies in the UAE through mergers or acquisitions. Due diligence investigation is a great tool to analyze the potential pay-off and risks of investments. It enables the decision-makers to have a certain level of understanding of the company to make informed decisions and chart the course of transactions.  While financial due diligence may yield impressive numbers, having a full legal due diligence is equally important to ensure that the buyer is getting a comprehensive understanding of risks and liabilities. What does a legal due diligence investigation usually cover? The scope of most legal due diligence investigation includes the assessment of the following: Company documents such as memorandum/articles of associations, minutes of shareholders and board of directors meetings; share certificates; licenses and permits Human resources record on organizational structure; key personnel contracts, pension schemes, HR policies, and employment issues; Material contracts depending on the industry type including joint ventures and agency agreements; Financials including loan agreements and business plans; Assets including intellectual property and real rights; Administrative and court cases as well as pending Alternative Dispute Resolution matters Various factors will also affect the scope of the due diligence examination. The cooperation of the subject company, the organization of the resources and documents to be examined, as well as the allotted time and budget for the due diligence. It is therefore important that the clients’ concerns and objectives for the merger or acquisition are clearly established at the outset so the due diligence investigation can be focused.  It is also important to engage lawyers who have experience and exposure to the industry of the subject company. Due diligence investigation results can aid in structuring the transactions. It will serve as a guide for the preparation of the transaction documents identifying the warranties and guarantees needed from both sides.  It can also be used to justify the price, offer or any conditions attached to the sale transaction. Even after conclusion of the sale, a due diligence report can serve as a guide for the new management to tackle issues identified, to adapt to or restructure the organization, and as a general guide to the various facets of the company’s operations. If you want to know how a company really fares, a due diligence investigation is a must. *** Al Suwaidi & Company have helped several clients conclude mergers and acquisitions and assisted in management transitions. If you need to explore the conduct of full or partial legal due diligence, Al Suwaidi & Company has a dedicated team of lawyers and paralegals for legal due diligence investigations.

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Carol Gately Speaks at IBN Construction Sector Meeting

January 3, 2019

“Carol Gately Senior Associate was delighted to speak to members of the Construction and Engineering industries at the first IBN Construction Sector Meeting of 2016. Carol is seen here with Tom Riordan IBN Sector Head, introducing Carol to the attendees in the Bonnington Tower Hotel yesterday evening”.

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