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.