United Arab Emirates: Brand Protection At The UAE Border: Insights And Strategies From The Front Line

Can rights holders record trademark and brand-related IP information with Customs and, if so, how?

The UAE is a federation comprising seven Emirates, each equipped with its own customs authority and local regulations, in addition to the federal customs authority. This implies the presence of a total of eight customs authorities within a single nation. While this may initially appear to be a significant number, there exists a considerable level of cooperation and coordination among these authorities, particularly at the federal level.

At the local level, the customs recordal system has been implemented by five Emirates: Abu Dhabi, Ajman, Dubai, Ras al­ Khaimah and Sharjah. Dubai Customs took the lead in introducing the customs recordal system, followed by the other Emirates. It established the IP rights department in 2005, providing brand owners with the opportunity to record their marks after securing registration with the UAE Ministry of Economy.

Recording trademarks in all Emirates requires:

• a copy of a valid registration certificate of the trademark;
• a duly legalised and translated copy of the power of attorney (required only if the recordals are filed by the brand owner's local legal representative); and
• the application

An electronic presentation of the authentic products, including an information guide to assist Customs in identifying counterfeits and distinguishing them from genuine products, is recommended but not mandatory.

The recordal remains valid for the entire protection term of the recorded trademark and is renewable for successive periods.

Are copyright registrations also registerable with Customs?

No, only trademarks can be recorded with Customs.

Can brand owners send customs officials a product information guide or any additional materials to assist them in identifying genuine products?

Yes, this is highly recommended and welcomed by the authority. Any format is appreciated provided that it is informative, visual and detailed. It is advisable that such materials contain identification features of the product and UAE-specific information regarding known transportation means, routes and entities. Brand owners can also organise and provide training workshops for customs officials to enhance their ability to distinguish between genuine and counterfeit products, as well as their understanding of product-specific issues. Since customs officials rotate quite frequently, we recommend regular collaboration between brand owners and Customs relating to identification training and IP legal practices.

What is the typical process for confiscation or further investigation in the event that customs officials identify potentially counterfeit goods?

Once brand owners have recorded their trademarks with Customs, Customs can implement an ex officio border system. With the help of a risk profile system, Customs can investigate consignments at its discretion to ensure that they conform with the declared information and identify suspected counterfeit shipments.

Upon identifying a suspicious shipment, Customs will detain the shipment and issue a notification to the entity registered on the customs recordal application.

Subsequently, the brand owner (or its local legal representative) should collaborate with Customs to obtain more information on the detained products and decide whether to file an official complaint against the owner of the shipment. In the absence of communication from the brand owner within the stipulated period, Customs is likely to release the detained goods, unless other non-IP-related infringement is identified.

Maintaining a robust relationship with Customs is paramount for brand owners, regardless of their intention to pursue legal action against a reported detention. It is advisable for brand owners to promptly inform Customs whether the detained goods are counterfeit to facilitate the efficient handling of trademark infringement cases.

How will brand owners typically be contacted when suspicious or counterfeit goods are identified?

As noted, Customs will getin touch via available means with the registered contact on the recordal to flag and send a notice of detention. Brand owners should be able to quickly interact with Customs to obtain the information necessary to make a decision regarding detention. Responsiveness and efficiency in communication are key when working on reported customs detentions.

Are there any time-sensitive considerations that brand owners should be aware of when dealing with customs-related IP enforcement?

The deadlines for responding to notifications are:

• three working days for Ajman, Dubai, Ras Al-Khaimah and Sharjah; and
• eight working days for Abu Dhabi.

Customs sometimes demonstrates flexibility and understanding if additional time is required. In such instances, Customs has the discretion to assess the circumstances and potentially extend the deadline.

What are the potential costs involved in working with customs officials to protect a brand's intellectual property?

The official fee for recording a trademark with Customs is Dh200 (approximately $55). Filing a complaint with Customs following a customs notification varies from Emirate to Emirate but typically costs around Dh2,050 (approximately $562).

Most customs departments in the UAE collaborate with recycling companies to destroy seized goods. However, brand owners are responsible for bearing these costs, which depend on the type and quantity of the seized products.

What proactive strategies can brand owners employ to enhance their partnership with customs officials?

Cooperation between customs authorities and brand owners is essential to enhance the effectiveness of customs recordal and procedures against counterfeits. This collaboration can take various forms, including:

• conducting training workshops for customs personnel at least once a year;
• conducting regular visits to key customs posts for training sessions;
• attending events arranged by Customs, if invited;
• ensuring that documents submitted to Customs are completed accurately and concisely;
• responding promptly to customs notifications to build trust, garner support and encourage further notifications;
• engaging in discussions on key procedural points and offering suggestions to enhance the role of Customs and streamline procedures;
• advocating for the introduction of a customs recordal system if one is not already in place; and
• emphasising the crucial role of customs officers in combatting counterfeits and fostering their cooperation by promptly addressing their inquiries.

Brand owners should carefully consider small consignments, rather than dismissing them due to cost concerns, as this could otherwise lead to Customs withholding future notifications due to perceived non-responsiveness. A zero-tolerance approach is highly respected by Customs.

This article was first published by World Trademark Review in February 2024.