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Friday, June 1, 2018

Protection and enforcement of Intellectual property rights are becoming essential aspects in driving growth, innovation and investment in the Middle East and North Africa. IP enforcement procedures and the possible measures vary significantly from one country to the other and trademark owners are able to benefit from a wide range of enforcement options. Generally speaking, careful consideration should be given to the nature of the dispute before adopting a particular enforcement strategy whereby it is not always necessary to embark on litigation when tackling an infringement of trademark rights.

In counterfeiting cases, for instance, trademark owners have the option to pursue alternative enforcement measures by resorting to administrative bodies, some which are listed below. It is also possible to record trademarks at Customs authorities in various countries in the MENA and even file complaints directly with the Customs to have imported shipments of fake goods seized and destroyed without the need to obtain a court judgment. Optimum results are achieved by awaiting the best measures that each country has to offer.

Administrative Enforcement Measures

United Arab Emirates - Departments of Economic Development:

The United Arab Emirates is formed of seven Emirates each of which has its own autonomous Department of Economic Development. Although the specific procedures followed by the said departments in the different Emirates may vary, all departments allow right holders to file complaints against counterfeiters and infringers which usually leads to raiding their premises and seizing the illicit goods. Some departments, such as the Dubai Department of Economic Development, allow brand owners to record their trademarks using an online portal. Pursuant to such a recordal, the department proactively monitors the market, reports traders offering suspect counterfeit products and carries out raids and seizures. It is also possible to provide the department with leads on specific targets. This system has proved extremely effective and is definitely something that rights holders should consider as part of their anti-counterfeiting strategy for the UAE. The complaint with the Department of Economic Development is unlikely to succeed though without the support of a trademark registration certificate.

Saudi Arabia – Anti Commercial Fraud Department:

The most effective enforcement agency in Saudi Arabia is the Anti-Commercial Fraud Department at the Ministry of Economy and Industry. A successful action by the Department usually results in the seizure and destruction of the infringing products, a fine levied on the infringer and a signed undertakings from the infringer not to repeat the offence. Filing a complaint with the Department achieves fast results, is simpler to put together and is considerably less expensive than seeking civil or criminal enforcement. The complaint with the Anti-Commercial Fraud Department is unlikely to succeed without the support of a trademark registration certificate. The certificates should clearly depict an appropriate representation of the mark and a relevant description of the goods. The Department may decline to act if these are not tied closely to the infringing conduct.

Customs Recordal and Complaints

Border measures are always a key tool in the fight against counterfeiting and piracy and are critical for successful intellectual property enforcement. In the scope of the continuous efforts to create competent border enforcement measures and to provide effective protection, the Customs in Algeria, Morocco, Sudan, UAE, Tunisia, Turkey and Cyprus have established trademark recordation systems for registered trademarks.

Pursuant to these recordation systems, the owner of a trademark registration can apply to the Customs of the above-mentioned countries requesting recordation. The application should include certain information as required by the applicable policies, accompanied by the certificate of registration of the mark and a power of attorney. The Customs will then issue a recordation notice which in turn activates a watch program whereby the trademark owner (or its representative) would be notified of suspected shipments of fake goods. Customs authorities in other countries in the region (such as Saudi Arabia, Bahrain and Qatar), and despite not having a formal trademark recordation system in place, can still be approached with information about brand owners and they are very active in sending notifications of suspected shipments.

In certain jurisdictions, such as the UAE, brand owners can file direct complaints with Customs authorities where the said authorities would issue administrative decisions to have fake goods seized and either destroyed or re-export without the need to have judicial intervention.

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