In a recent case, Dubai Customs demonstrated its willingness to report counterfeit products, accept official complaints on behalf of IP owners, rule on case merits and destroy counterfeit goods.

In late December 2009, Al Tamimi & Company filed a case with Dubai Customs alleging infringement of Toyota Motor Corporation's TOYOTA trade mark by unauthorised use of the trade mark on hundreds of pieces of spare parts. Officials working at the Intellectual Property Rights ("IPR") Division of Dubai Customs had discovered the suspicious goods, and provided Toyota with an opportunity to examine samples and verify the nature of the goods. Toyota determined the goods were counterfeit, and called on Al Tamimi & Company to pursue an official complaint. Al Tamimi sought permanent seizure of the goods and prompt destruction of the same.

The IPR Division promptly transferred the case to the Legal Unit of Dubai Customs. The merits of the complaint were expediently examined, and the complaint was found admissible. On 28th January 2010, a decision was issued ordering confiscation and destruction of the counterfeit products. This decision was obviously issued based on Dubai Customs' legal discretion to receive, hold and rule in anti-counterfeiting cases as indicated in the following provisions:

  • Article 142 of the GCC Unified Customs Law;
  • UAE Trademarks Law (Federal law number 36/1922 and amendments); an
  • UAE Anti-Forgery Law (Federal law number 4/1979 and amendments).

Afterwards, Al Tamimi & Company closely followed the matter to ensure compliance with the formalities relating to destruction, and managed to obtain the required approval from the local authorities in Dubai. Specifically, before any counterfeit goods are destroyed in Dubai, Dubai Municipality must issue a permit for the destruction. The permit does not get processed unless the counterfeit goods are personally inspected by a competent official from the Municipality. In this case, due to Al Tamimi's close follow-up, the destruction permit was issued on 21st February 2010, allowing Dubai Customs officials to supervise the destruction. Without any hesitation, Dubai Customs proceeded with executing the decision, and once logistical aspects were resolved hundreds of pieces of counterfeit spare parts were destroyed at the Dubai Waste Site on 24th February 2010.

With a systematic approach and good handling of such cases, Dubai Customs demonstrated its unique competency in the region to develop a sustainable anti-counterfeiting practice and capability to finalise the cases in short period of time. In the past, there were some cases before Dubai Customs that remained pending for years prior to issuing and implementing the destruction formalities. This precedent, however, demonstrates that the officials of Dubai Customs are capable and willing to accelerate anti-counterfeiting cases pursued by IP owners.

The particular case illustrated in this article was resolved within a couple of months from the time of filing the complaint before the IPR Division until the actual destruction of the counterfeit goods. This very promising precedent should encourage trademark owners to pursue their rights before the IPR Division of Dubai Customs. This has been proven to be a timely, effective, and cost-effective method for the enforcement of IP rights in the UAE.

As Dubai has become a regional hub for international commerce, advanced IP enforcement procedures should encourage trademark owners to coordinate with Dubai Customs and record their trademarks with the IPR Division. The officers of said department will manage and put all the available efforts to notify trade mark owners of any suspected consignments that go through Dubai's various ports and airports. The recording formalities are very simple and economical, and trade mark rights can be recorded with the IPR Division in one day after paying a small official fee. If trade mark rights are recorded with Dubai Customs in this manner, renewal is only required when the corresponding trade mark registrations are renewed. In other words, trade mark owners can take advantage of this service, record their trademarks with Dubai Customs, and be informed of any suspected products that may cross the borders that fall under Dubai Customs' authority, including Dubai International Airport's various terminals, Jebel Ali Port, etc.

Although this official recording will not ensure complete surveillance and absolute alert of all suspected consignments, it will definitely assist the officials of Dubai Customs to cooperate with trade mark owners and their legal representatives. This will reduce the trafficking of counterfeits through the borders that fall within Dubai Customs' jurisdiction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.