The Dubai International Financial Centre (DIFC) authorities have enacted new Intellectual Property (IP) legislation aimed at promoting innovation and improving the protection and implementation of intellectual property rights. The new Law Number 4 of 2019 (the DIFC IP Law) is enacted by the His Highness Sheik Muhammad Bin Rashid Al Maktoum, the Vice-President and the Prime Minister of the UAE, and the Dubai Ruler, on November 21, 2019.
The DIFC Intellectual Property Law regulates and governs all intellectual property rights from patents, utility certificates, industrial designs, copyrights, trademarks, trade names, and trade secrets. The law has been drafted according to international best practices, taking into account the applicable UAE federal laws governing various intellectual property rights, and also according to international treaties to which the UAE is a party. The opportunity was taken in this context to announce some of the international concepts that were formerly lacking in the federal intellectual property law of the United Arab Emirates and the necessity of which became the subject of the discussion among stakeholders on intellectual property.
The DIFC Intellectual Property Law does not create a separate DIFC register for Intellectual Property rights, but rather provides for the recognition of IP rights registered in the UAE, including the recognition of registered patents, utility certificates, industrial designs, copyrights, trademarks, trade names, and trade secrets. This is a relevant aspect of DIFC IP Law, that it has not placed any overburden on IP owners to register rights in DIFC.
The DIFC Intellectual Property Law aims to supplement the federal intellectual property laws already in existence in the UAE and integrate the enforcement of intellectual property rights within the DIFC. The law shelters all aspects of intellectual property rights enforcement and introduces enforcement networks for all IP circuits. The general goal of the legislation is to strengthen the protection of intellectual property rights holders within the DIFC and in general in the United Arab Emirates and to generate a safe atmosphere for inspiration and invention within the free zone. The law further explains the specific enforcement channels granted to different intellectual property rights and specifies how they differ, thereby providing greater legal certainty and predictability.
Reflecting the goal of promoting innovation, the new law helpfully elucidates the legal situation regarding the ownership of copyrights and employee-generated inventions. The DIFC Intellectual Property Act assumes that an employer owns the copyright to the works created by an employee in the course of his or her employment or uses the employer’s know-how and resources. This is in contrast to the position under the Federal Copyright Law of the United Arab Emirates, where title to the copyright is not assumed by the employer and the possibility of attributing title to the copyright is not assumed. with future works is also limited.
Similarly, the DIFC Intellectual Property Law also offers for the ownership rights of employers over patents that are the subject of inventions created during the employee’s work. In the case of an invention created outside the scope of employment but related to the business of an employer and created using the know-how and resources of the employer, the invention will remain with the employer. In this case, however, the employer should be aware that the worker may be “fairly compensated” for the invention, taking into account the wage of the employee, the economic value of the invention, and the cost of advantage that the employer can derive from the invention.
The new law creates a new position of Intellectual Property Commissioner (Intellectual Property Commissioner) who will be in charge of law enforcement as well as dispute resolution and fines for infringement of intellectual property rights. The Intellectual Property Commissioner will be appointed for a renewable period of three (3) years.
The Intellectual Property Commissioner has jurisdiction over the enforcement and implementation of the DIFC Intellectual Property Law and all laws relating to organizational penalties. The decisions of the Intellectual Property Commissioner may be challenged in the courts of the DIFC. The DIFC courts are also responsible for issuing orders and can provide compensation for violations of DIFC intellectual property laws.
The new law levies substantial fines ranging from AED 20,000 to AED 150,000 for the infringement of intellectual property rights. For instance, anyone attempting to use a well-known trademark without the consent of the registered owner will be fined AED 55,000. The manufacture, sale, import, or export of products or processes covered by a patent or utility certificate, or products obtained using protected processes, will be fine of AED 130,000.
Where the patent may be a method for producing a product, only if the registered owner of the patent will show a considerable probability that a product has been factory-made by the alleged infringing party through such method, the burden of proof in infringement cases has been upturned to fall on the infringing party who should prove that the merchandise was not factory-made using the patented method.
The DIFC Intellectual Property Law is a very positive addition to the DIFC Commercial Code and IP Regulations, whether in front of the IP Commissioner or the DIFC Court, regarding the remedies commonly available to intellectual property owners. In addition to the introduction of some best-practice concepts and solutions to the broader perspective of intellectual property in the United Arab Emirates, administrative remedies before the Intellectual Property Commissioner and against infringement of intellectual property rights before the DIFC Courts are expected to be a breakthrough for the protection of intellectual property in the UAE and the broader Middle East area. If you have any legal queries about intellectual property law reach out to Intellectual property lawyers in Dubai.