Customs matters in the UAE are not administered at a federal
level, and each emirate is responsible for the administration of
its own customs procedures. Dubai has the most significant ports,
airports and free trade zones in the UAE, and is easily the most
developed and pro-active emirate with regard to formal customs
procedures for fighting the infringement of Intellectual Property
Rights.
The UAE has adopted the Common Customs Law of the GCC States, which
prohibits the admission, transit or exit of prohibited or
infringing goods except with the approval of the customs
authorities. It also prohibits the admission into free zones of
goods found to infringe IPRs. When read in conjunction with the
UAE's intellectual property laws, these provisions provide the
basis for Dubai Customs to act against IPR infringing goods that
are imported, in-transit, or exiting the UAE via Dubai, or held in
free zones within Dubai.
In 2006, Dubai Customs set-up a specialist IPR unit, and
established procedures for the submission of complaints against
goods suspected of infringing IPRs.
There are two main scenarios in which a complaint to Dubai Customs
regarding suspected IPR infringing goods may arise:
- Dubai Customs discovers suspected IPR infringing goods in the course of its regular inspections, and notifies the IPR owner.
- The IPR owner discovers a suspect shipment or suspect goods, and notifies Dubai Customs.
In practical terms, it can be difficult for an IPR owner to
provide information about suspect goods due to arrive at a UAE port
or being processed in a Dubai free zone. In the absence of such
information, it can be difficult for Dubai Customs to find suspect
goods due to the quantity of consignments that pass through its
control. Despite this, the regular inspections by Dubai Customs,
along with market investigations on behalf of IPR owners, do often
provide a basis for further action.
In either scenario, whether arising out of a notification to the
IPR owner by Dubai Customs or out of a notification to Dubai
Customs by the IPR owner, the IPR owner will need to file a formal
complaint with Dubai Customs if it wishes to have the matter
formally considered.
If the IPR owner has not already formally recorded its IPR with
Dubai Customs, it will first be necessary to address this step.
(See box for requirements.)
For a complaint that has arisen out of notification by Dubai
Customs to the IPR owner, an official fee (currently AED 2,010) is
payable. Where a complaint has arisen out of notification by the
IPR owner to Dubai Customs, the same official fee is payable, along
with a security bond (currently AED 5,000). An identification must
also be filed. The security bond amount is partially reimbursed if
the complaint is upheld, but retained entirely by Dubai Customs if
the complaint is not upheld.
Dubai Customs acts very promptly in accepting complaints relating
to clear cases of counterfeiting where the suspect goods bears the
IPR owner's trade mark exactly as registered in the UAE. Where
suspect goods bear a confusingly similar (but not
'identical') trade mark, Dubai Customs has traditionally
been more reluctant to accept complaints. Despite this, all cases
are considered on a case by case basis, and there are recent
instances of Dubai Customs accepting complaints relating to
confusingly similar trade marks that are not identical to the IPR
owner's UAE registered trade mark.
The typical process following the filing of a complaint is that
Dubai Customs takes a sample of the suspect goods from the shipping
consignment or from the free zone location where it has been
discovered (eg. a factory, warehouse, retail outlet, etc.) and
submits the sample to an official laboratory for testing to
determine whether or not it is genuine. For this purpose, the IPR
owner is required to provide Dubai Customs with samples of genuine
goods that correspond to the suspect goods.
In some instances, it may not be possible for the IPR owner to
provide genuine goods that correspond to the suspect goods. For
example, the corresponding genuine product may no longer be in
production, or the suspect goods may bear the IPR owner's trade
mark without actually replicating any actual genuine product. In
such cases, Dubai Customs may, at its own discretion, accept a
formal letter from the trade mark owner explaining the situation,
allowing for Dubai Customs to conclude that the suspect goods
infringe the IPR owner's rights.
If the official laboratory confirms that suspect goods are not
genuine, Dubai Customs will confiscate them. This will typically
lead to destruction of the IPR infringing goods, although if
destruction of the infringing goods may have a significant
detrimental environmental impact (eg. batteries or cigarettes),
Dubai Customs may consider ordering re-export of the goods to the
port of origin.
If the IPR owner has been unable to provide a genuine sample that
corresponds to the suspect goods, the official laboratory will be
reluctant to conclude that the suspect goods infringe the IPR
owner's rights. In the absence of formal confirmation of
infringement by the official laboratory, Dubai Customs is reluctant
to order the destruction of the suspect goods.
In such cases, it is necessary for the IPR owner to manage the
complaint, and to seek to convince Dubai Customs of the appropriate
outcome.
Action via Dubai Customs provides a further tool for IPR owners to
battle against IPR infringement. Although there are some practical
aspects that may cause difficulties or may mean that outcomes are
not always those desired by an IPR owner, the system is generally
effective and arguably the most developed in the region –
which is important given the significance of the ports and free
zones in Dubai. Supporting Dubai Customs' efforts, by recording
IPRs with Dubai Customs, by being involved in Dubai Customs'
training workshops, and by responding with interest when approached
by Dubai Customs regarding suspect goods, are some basic ways in
which IPR owners can raise the profile of their IPRs with Dubai
Customs and thus improve the likelihood that Dubai Customs will
have those IPRs in mind when carrying out their inspections.
The requirements for recordal of a trade mark with Dubai Customs
are:
- A certified copy of the valid UAE trademark certificate or copyright registration certificate;
- Material showing the IPR as used (for trade marks, typically digital photos of products showing the trade mark in situ; for copyright works, material illustrating the nature of the copyright work);
- A suitably notarized and legalized Power of Attorney (if the recordal request is not filed by the trade mark owner directly); and
- The official fee (currently AED 200 per IPR).
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.
