The Board of Directors of the Dubai International Financial Centre (DIFC) Authority recently issued the DIFC Intellectual Property Regulations (IP Regulations). The IP Regulations took effect on 5 July 2021 and were issued pursuant to the DIFC Intellectual Property Law, DIFC Law No. of 2019 (IP Law).
In 2019, the IP Law was issued to augment the DIFC’s commitment to providing the required regulatory framework to protect the creativity and innovation of businesses operating in the DIFC and to ensure international best market practice. The IP Law came into force on 21 November 2019.
The IP Law contains a number of key provisions. By way of background, some of the most noteworthy include:
- Recognition of patents, utility certificates, industrial drawings, industrial designs, work protected by copyright and trademarks that are registered in the United Arab Emirates (UAE) and recognized by the federal laws of the UAE. This means that rights registered under the UAE federal laws will automatically be enforceable in the DIFC as the IP Law does not create a separate registry for IP rights in the DIFC.
- The introduction of a clear framework in relation to the ownership of copyright in employment relationships. The IP Law provides that, unless the parties agree otherwise in writing, if an employee creates a work within the scope of employment pursuant to an employment contract or the employee uses the experience, information, instruments or material of an employer in creating such work, the copyright in the work will be owned by the employer.
- The IP Law also introduces the concept of “well-known” trademarks. The IP Law states that, although not registered as a trademark in the UAE, a well-known trademark of international reputation that surpasses the country of its origin and acquires fame in a relevant sector among consumers in the UAE will enjoy protection under the IP Law.
- Expressly stating that a registered trademark or a well-known trademark is not infringed by a third party in the DIFC in certain situations. These include:
(i) to indicate the intended purpose of the goods or a service related to such trademarks, provided that such use is necessary and in good faith
(ii) in news reporting, news commentary or parody, or
(iii) by another person in comparative commercial advertising or promotion to identify competing goods or services, provided that such use is in good faith and in accordance with honest practices.
The IP Regulations now provide helpful clarification in relation to some of the procedural matters relating to intellectual property in the DIFC. These include:
- Setting out in more detail the powers and responsibilities of the DIFC Commissioner of Intellectual Property (Commissioner), which include reviewing infringement complaints and carrying out inspections and investigations in connection with violations of the IP Law.
- Listing the process and requirements for filing intellectual property infringement complaints, inspections and investigations.
- The establishment of a register of experts that the Commissioner may utilize in order to appoint an expert to assist in any investigations or complaints under the IP Law.
- Permitting the Commissioner to cooperate with federal and local authorities in the UAE for the protection of intellectual property rights across each of their respective jurisdictions in the UAE.
- Setting out the fees applicable for any complaints, inspections or applications made under the IP Law or the IP Regulations.