Protecting Intellectual Property in UAE: A Guide to Addressing IP Infringement Litigation

Intellectual Property (IP) constitutes a significant portion of the world's intangible assets, which have surpassed tangible assets in importance in today's world.

With the growing significance of IP, infringement has also risen substantially. Such infringing and pirated products account for about 2.5 per cent of world trade, valued at 464 billion in 2021.

In the UAE, there are four main types of IP rights: Trademarks, Copyrights, Patents and Trade Secrets. The penalties for their infringement are outlined under the respective Federal Laws governing these rights.

If your IP rights have been infringed, certain preliminary steps may be taken before proceeding to litigation. These are as follows:

* Evidence Gathering: It is crucial to gather evidence of the infringing act. Collect screenshots, product samples, or any other documents that clearly depict unauthorised use of your IP.

* Cease and Desist Letters: Once the evidence has been collected, a cease-and-desist letter must be sent to the infringer, prohibiting them from using your IP further and ordering them to destroy any and all infringing products.

* Alternative Dispute Resolution: If, after sending the cease-and-desist letter, the infringer continues the infringing activity, the last resort before pursuing litigation is to consider Alternative Dispute Resolution (ADR) mechanisms, including negotiation, mediation, or arbitration. Multiple ADR institutions across the globe specialise in IP ADR, including the WIPO Arbitration and Mediation Centre.

If the infringing activity continues even after the above steps have been taken, the final resort to enforce your IP rights would be to file a civil lawsuit against the infringing party.

There are a few common defences used in IP lawsuits to counteract infringement claims. It is important to be aware of these defences before pursuing litigation:

* Non-Infringement: The most common defence is that there has not been any infringing activity. Therefore, it is essential to collect as much evidence as possible of any instances of infringement you have noticed.

* Invalidity: The infringers may argue that your IP is invalid. Thus, it is imperative that your IP be registered in the prescribed manner and that you have all documentation supporting your registration, including the registration certificate and evidence of prior use.

* Fair Use: This is one of the trickiest defences to navigate. Many infringers may claim that their use of your IP falls under the exceptions granted under the Fair Use Doctrine, which allows for IP-protected material to be used for commentaries, parodies, criticisms, and some other non-commercial purposes.

* First Sale Doctrine: The First Sale Doctrine states that your IP rights are exhausted after the first sale, meaning you are not entitled to any profits made from any subsequent sales. However, there are some exceptions to this rule as well.
With this knowledge, you can proceed to litigation. Litigation is a lengthy and expensive process. The question that arises is: What are the possible outcomes of IP litigation?

* Injunctions: If the court finds that the defendant has indeed committed an infringing act, it could issue an injunction requiring them to cease all infringing activity.

* Damages: The court could further award you damages to compensate for the detriment caused by the infringing activity. Such damages often include the profits made by the infringer/defendant through such activities. The amount of damages is outlined in the Federal Laws.

For example, Article 49 of the Federal Decree-Law No. (36) of 2021 on Trademarks states that infringers may face a penalty of a fine ranging from Dh100,000 to Dh1,000,000 and/or imprisonment.

* Destruction of Infringing Material: The court may order that all infringing products be destroyed immediately to prevent any further use or sale.

* Dismissal: If the court finds that there has been no infringing activity on the part of the defendant, it may dismiss the case. However, there is the possibility to appeal to the Court of Appeals and further to the Court of Cassation.

IP rights play a pivotal role in fostering innovation and development, which is why it is imperative for an IP owner to take all necessary steps to register and protect their IP.

The UAE's legal framework provides robust protection for copyrights, trademarks, and patents, with severe penalties for infringement, including fines of up to Dh1 million and imprisonment.

In the case of infringement, it is extremely important to consult an experienced IP attorney to help build and argue your case.

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