Procedure
UAE
General infringement proceedings
Types of infringement proceedings:
Preliminary injunction proceedings. In the UAE, the proprietor of a trade mark right can seek a preliminary injunction (PI) ('precautionary measure order', 'attachment order' or 'preliminary seizure'. The request can be sought before the Court of Urgent Matters at the Civil Court holding jurisdiction to prevent imminent or current infringements.
According to the statutory rights for trade mark owners, the proprietor of a trade mark right may petition the Judge of Urgent Matters to order any of the following interim measures in their written request:
- Mandate a comprehensive description of the infringement, including the goods and any materials, apparatuses, and equipment used or potentially used in the infringement
- Impose seizure of the goods, materials, apparatuses, and equipment involved in the infringement
- Prevent the distribution and export of the infringing goods, including those recently cleared through customs
- Secure any evidence pertinent to the infringement case.
The petition must be supported by sufficient evidence demonstrating that the trade mark right has been infringed or that an infringement is imminent. The Judge of Urgent Matters retains a discretion to request a financial or bank guarantee from the applicant, the sum of which will be specified by the judge and must be ample and reasonable to safeguard the interests of the adverse party should the applicant's petition be unfounded.
Main proceedings: In the context of main proceedings, the trade mark owner has the option to apply for a precautionary measure order, either prior to or simultaneously with the initiation of the main proceedings or during the proceedings. If the precautionary measure order, ie PI, is requested before the filing of the main civil case, the law requires the petitioner to file a main lawsuit within a specific time frame (20 days following either the date on which the order for the provisional measure was issued, or the date on which any grievance lodged by the defendant against the provisional measure was rejected by decision). Failure to file the main claim will result in the injunction or precautionary measure as ordered by the court being revoked.
Procedure and appeals
- Warning letter. Sending a warning letter to the defendant is not a prerequisite in the UAE. There are no statutory rules which require a legal notice or cease and desist letter to be sent before initiating a trade mark infringement lawsuit. However, it is common practice to send a legal notice or cease and desist letter as a preliminary step to try to resolve the matter amicably and prior to incurring litigation costs.
- First instance. Trade mark disputes are heard by the competent civil court (the Federal or Local Court of First Instance as the case may be), where they are often handled by the civil or commercial circuit sat in the civil court. The court of first instance usually delegates the dispute to a technical expert for an opinion on the merits/certain issues.
- Court of Appeal. A first instance decision may be appealed to the Court of Appeal within 30 days following the date the decision is issued. Claims with a value less than AED50,000 (ie less than USD13,500), are not appealable to the Court of Appeal, and therefore, claimants are usually advised to claim a higher amount as compensation in trade mark disputes.
The appellate court’s decision may – under certain circumstances (such as where there are jurisdictional errors, substantial procedural breaches or if the compensation claimed exceeds AED500,000 or USD136,000) – be appealed on points of law to the Court of Law, ie Court of Cassation (the Supreme Court), within 30 days following the date the appellate court's decision is issued.
Means of proof and burden of proof
- In main proceedings (civil or commercial proceedings), the means of proof include mainly documents (written or electronic) and expert opinion (including from court-appointed experts or advisory experts chosen by the parties). In rare circumstances, other means of proof are used such as oral witnesses, confessions, inspections, testimonies and evidence taken on oath.
- In preliminary injunction (precautionary measure) proceedings, the means of proof include mainly documents (written or electronic), inspections (carried out by either the judge or court-appointed expert), expert opinion, witness evidence and testimonies.
- A general principle for the burden of proof is that the claimant must prove and substantiate their rights and claim, while the defendant must refute the claim. For instance, the claimant bears the burden of proving the infringement and its damages whereas the defendant must prove either that no infringement of the claimant's trade mark rights occurred, or that the trade mark use was legally authorised.
- In main proceedings, the court requires definitive proof pertaining to all relevant facts and will not entertain any allegations or arguments unless the claimant establishes a genuine and present interest in the matter. In precautionary measure proceedings, a potential interest is sufficient provided that the aim is to prevent a forthcoming threat or to confirm a right at risk of becoming unprovable during the dispute.
(No) discovery
Unlike in many western or common law jurisdictions, the legal system in the UAE is generally a civil law system, which does not mandate disclosure or discovery of documents. The exceptions are the DIFC and ADGM 'free zone' courts (which follow a common law system), although trade mark disputes in these courts are uncommon.
While lawyers in proceedings can use the court to seek information from the opposing party under the Evidence Law, they are not independently required to disclose any unfavourable information they may hold to the other side. However, the experts appointed by the court usually raise requests, and demand evidence and documents, and sometimes acts as a tool to facilitate discovery. Lack of co-operation with such experts’ request can result in a negative outcome in the expert opinion, which ultimately affects the outcome of the decision.
Time to judgment
- A preliminary injunction will be granted within ten days. In cases of special urgency, this timeframe may be shortened based on the specific circumstances of the case. Further, the Judge of Urgent Matters has the authority to enact a provisional measure without initially informing the opposing party. Nevertheless, once such a provisional measure is granted, the opposing party must be informed and is entitled to challenge it by filing a grievance within a 15-day period.
- For main proceedings, a judgment can usually be expected within ten to 16 months after filing of the statement of claims, although this timeline can be extended based on case complexity and court schedules. The appeal process before the Court of Appeal can span from six to 12 months, whereas decisions before the Court of Cassation/Supreme Court generally take between four to eight months. However, the duration of proceedings still varies from case to case based on the workload of the competent court, the complexity of the case, and - most importantly - the appointment of experts and their conduct.
Claiming legal costs and securities
Under UAE law, courts are required to incorporate an award of legal court costs and paid expenses into their judgments, with the clear stipulation that the party found at fault in the dispute is obligated to cover these costs. This includes situations where there are multiple parties at fault, allowing the court the flexibility to allocate costs among them either equally or in proportion to their share of the fault. Where both the claim and defendant have partially lost their claims, the court has several options: it can mandate that each party pays the other's costs, divide the costs equally between them, or instruct only one party to bear the entire cost.
The legal costs include the entirety of costs accrued during the court process, including court fees, notification expenses, and appointed expert fees. When it comes to advocacy or attorney fees, UAE law specifies that these are not to be reimbursed to the successful party at actual cost, with courts often setting a very minimal cap on these fees that does not exceed AED2,000.
There have been some successful attempts to partially recover the actual advocacy, or attorney, fees in trade mark or IP disputes. For instance, brand owners have been able to seek recovery of a substantial part of those fees through making a separate claim for compensation for damages related to the actual loss resulting from the enforcement of their IP rights. This means that the claimant can argue that the fees paid to its lawyer constitute expenses incurred to safeguard and enforce its IP rights within the UAE. UAE courts have, in several cases in the past few years, granted such amounts under the category of 'financial damages' rather than 'legal costs or advocacy fees', provided that the claimant presents sufficient evidence, such as an expert report, to substantiate the expenditure for enforcement purposes. The UAE courts retain exclusive discretion in accepting such claims, evidenced by varying judgments where some courts have awarded these damages, while others have not.
Court official fees: The calculation of court official fees varies depending on the monetary value of the lawsuit, with the prevailing principle that court fees are usually awarded to the winning party. The regulatory landscape for court fees is not uniform across the UAE, with each emirate establishing its own laws and regulations in this domain. For instance, in Dubai, the Court of First Instance assesses fees at 6% of the claim amount, subject to caps that vary based on the claim size:
- AED20,000 for claims under AED500,000
- AED30,000 for claims between AED500,000 and AED1 million
- AED40,000 for claims exceeding AED1 million.
Appeals to the Court of Appeal incur fees of 50% of the amount paid at first instance, in addition to a deposit of AED3,000. The Court of Cassation imposes a fixed fee of AED2,000, with an AED1,000 fee for requests to stay execution. There are also specific fees required as insurance when appealing decisions.
Expert's fees. The fees for court-appointed experts are variable and must usually be paid by the claimant within a week following the court's directive. These fees can range from AED10,000 for simple cases up to AED90,000 for complex cases. However, these expenses are recoverable since the court frequently mandates that the losing party compensates the successful party for the expert fees, in addition to the sum awarded by the court.