Currently, due to the circumstances surrounding COVID-19, many trademark owners experience sales decreases, and it is getting more important than ever not to fall prey to counterfeiters. For a small coin, owners can effectively enroll their brands with the customs. Here is what you need to know:
In order to create competent border enforcement measures and provide strong protection in the country, the UAE customs of the Emirates (Abu Dhabi, Dubai, Sharjah, Ajman & Ras Al-Khaimah) have established a trademark recordation system that helps officials target and confiscate shipments of infringing goods.
The owners of registered trademarks, or their legal representative, can record marks at each custom department, which will issue a recordation notice that remains valid until the trademark registration expires, and can be renewed together with the trademark. It is worth noting that the recordation at UAE customs only covers goods and not services.
One of the underlying assumptions regarding the registration system (other than providing a central registry containing information for recorded trademarks) is that it allows customs officials to adopt an ex officio border system. This system is considered different from the border system, in which a judicial authority orders customs to hold the infringing shipment after identifying counterfeit goods. A key advantage of the ex officio system is that it allows customs officials to take proactive steps, thus avoiding all the delays inherently involved in seeking judicial actions. Customs officials are always on the lookout for infringing goods and can act quickly to confiscate them.
The importer's responsibility is to communicate with the relevant authorities and pay the fees for destroying these goods. Destruction fees are determined based on the type and quantity of the products, and the municipalities are often skilled in such matters.
Requirements for recording a trademark at the customs departments in the United Arab Emirates
A notarized and legalized Power of Attorney by the UAE consulate in the name of the registrant as shown in the certificate of registration
A certified copy of the trademark registration certificate will be submitted with the application, which can be obtained from the Trademark Office. One copy is required for each customs department
An electronic copy of the mark used on the products
For Abu Dhabi customs only: A letter from the owner authorizing the agent to record the mark with Abu Dhabi Customs that should be addressed to the respective institution.
Inspectors are conducting regular market visits and examinations on behalf of brand owners and are able to list a particular brand only if they manage to identify numerous infringers.
The recordation can be finalized within two weeks after submission if all files are complete. On the other hand, the Dubai Economic Department (DED) has also established another protection system called the IP Gateway. This system aims to protect IP rights and allow business owners to open cases related to their trademarks and agencies through the mobile application and website in a few minutes. Its availability in five languages (Arabic, English, French, Italian and Japanese) helps users worldwide make their services available without being in Dubai or visiting any DED premises.
IP Gateway provides:
Registration and protection of trademarks & agencies files
Opening trademark or agency cases
Paying service fees
Studying and reviewing evidence
Getting inspection reports related to the cases
With inspectors conducting regular market visits and examinations on behalf of brand owners, the Dubai DED is the most active law enforcement agency concerning anti-counterfeiting actions in the United Arab Emirates. Moreover, inspectors will be able to list a particular brand only if there are many infringers identified, and the amount of AED2,010 should be paid to open a file.
The requirements to record the trademark before the DED and open a general file is a copy of the UAE's trademark registration certificate. The results for the administrative actions are confiscation and destruction of the goods with a fine imposed against infringers, and the main advantage is that they are quick and efficient. This new strategy will help protect the recorded trademarks without added confusion or any official fees. We suggest that all trademark owners consider such measures to monitor the market against counterfeits effectively.
Finally, trademark registration is an essential asset for a global and online economy. Owning a registered trademark can increase a company's value to potential investors or purchasers and enable it to take advantage of protections offered by customs and border patrol agencies.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.