Delving into Dubai

For Mariam Sabet, senior associate, Al Tamimi & Company (UAE), the most notable IP development is the Intellectual Property Law Dubai International Financial Centre (DIFC) Law No.4 of 2019, which came into effect in November 2019. In July 2021, the DIFC issued IP Regulations to facilitate the administration and enforcement of the DIFC IP Law, including the procedure for filing IP infringement complaints and investigating IP law violations.

She explained that the law’s enactment has positioned the DIFC as the only financial free zone in the region with separate legislation regulating IP. It covers the full spectrum of IP rights: patents, utility certificates, industrial designs and drawings, copyright, trademarks, trade names, and trade secrets.

A particularly important aspect is the focus on creating effective enforcement measures. This is possible through a new administrative body, the Office of the Commissioner of Intellectual Property, which is responsible for administering the law and its non-judicial enforcement and can impose administrative fines against infringers.

“The establishment of the Office facilitates the enforcement of the IP rights within the DIFC jurisdiction, since IP infringements usually require quick and immediate action,” Ms. Sabet said.

For Ms. Sabet, the DIFC IP Law could have far-reaching consequences; she hopes that its focus on enforcement and the introduction of hefty penalties will impact the UAE’s federal laws on enforcing IP rights, as well as the laws of neighboring countries.

As for further developments in the region, Ms. Sabet would like to see a greater focus on enforcement through swift remedies, such as injunctions, as well as overall improved civil remedies for IP infringement.

The implementation of adequate guidelines for courts to consider when determining damages would be a good place to start, she said. Currently, there are no statutory rules to regulate the assessment of compensatory and punitive damages.

She noted that the damages awarded by courts in the region are “nominal” and do not reflect the actual losses suffered by the rights owner. This “results in rights owners refraining from taking any actions,” according to Ms. Sabet.

Although the current legal framework presents criminal sanctions as the appropriate remedies for counterfeiting and piracy, it has a one-dimensional impact because it results in infringers being punished while the rights owners remain uncompensated.

Ms. Sabet commented: “There are obvious merits toward criminalizing IP infringements, but the UAE legal framework lacks the understanding that civil remedies are considerably more effective as remedies for infringements of IP rights. With appropriate civil remedies, right owners are adequately compensated for the losses incurred as a result of the infringing activities.”

Ms. Sabet added that since this would require massive legislative overhaul, she does not expect action in the near future.

In other news, trademark practitioners in the UAE will be entering 2022 with another exciting change: the UAE will officially become a member of the Madrid Protocol on December 28, 2021. As noted by Ms. Sabet, for the jurisdiction, this represents a major milestone for centralizing the filing and management of trademarks.

Inquiring into India

In India, the abolition of the Intellectual Property Appellate Board (IPAB), which historically heard cancellation petitions and appeals related to trademarks and patents, is a major and unexpected development for practitioners and rights owners.

On April 4, 2021, the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021 dissolved the IPAB and transferred matters which would traditionally have been heard by the IPAB to the High Courts. Subsequently, the Delhi High Court created its IP Division.

Shwetasree Majumder, managing partner, Fidus Law Chambers (India), explained that the IPAB was originally intended to ease the backlog of the High Courts, but it had not been smooth sailing.

“The IPAB was infamous for its struggles with lack of resources, gaps in appointments, space constraints, irregular circuit bench hearings, delays in passing orders due to a lack of secretarial staff, and nomadic physical premises,” Ms. Majumder said. “These issues significantly impacted the IPAB’s efficiency.”

In view of this, she sees the Tribunals Reforms Ordinance as a welcome change for India’s IP landscape.

Ms. Majumder hopes that the new IP Division will follow in the footsteps of another specialized forum of the High Courts: the Commercial Division. This was constituted following the Commercial Courts Act 2015, and the Commercial Division has had the standing to hear IP proceedings. Within this forum, India’s IP jurisprudence has flourished, Ms. Majumder said—through progressive procedural provisions, shortened timelines, and tighter control of proceedings via case management hearings.

“Therefore, the IP Division is expected to be at least as efficient as the Commercial Division—more so, if it is able to hear IP disputes exclusively,” she predicted. The precise nature of the type of cases the IP Division will hear has yet to be announced; the caseload will likely be a mixture of commercial matters, with the bulk of them being IP matters, she said.

One benefit expected to arise from the creation of the IP Division is the consistency of decisions, according to Ms. Majumder. In the past, when there has been a cancellation petition at the IPAB running in parallel to an infringement suit at the High Court, the findings have been inconsistent in some instances.

The Delhi High Court has released some draft rules for its IP Division, and stakeholders are now in the process of submitting their feedback. However, the matter of transferring cases from the IPAB to the IP Division has yet to be addressed. Other pending concerns include the inevitable increase in the backlog of matters to be heard at the Delhi High Court. Additionally, the judiciary will need to be trained in how to handle technical matters, such as patents and plant varieties.

“I expect substantial resources to be employed in this area in terms of onboarding technical experts and organizing training programs for judges,” Ms. Majumder said. This training should include the development of best practices for judges hearing cross-jurisdictional disputes, to improve uniformity when determining questions of jurisdiction and governing law.

With the transition ongoing, Ms. Majumder hopes a seamless integration will occur and that progressive procedures and bolstered infrastructure will reduce the backlog.

She looks forward to India’s other High Courts following the example of the Delhi High Court and introducing their own IP divisions.

Moving into Mexico

Marking a key development in Mexico, the Federal Law for the Protection of Industrial Property entered into force in November 2020. The legislation was structured to align Mexico’s national IP laws with those of the standards prescribed by the United States–Mexico–Canada Agreement (USMCA), the trade agreement replacing the North American Free Trade Agreement (NAFTA).

The new federal law abrogated and replaced the Mexican Industrial Property Law, and it introduced several changes to Mexico’s legal framework relating to trademarks, patents, and IP litigation generally.

Laura Collada, managing partner, Dumont Bergman Bider & Co. (Mexico), highlighted some changes: the term of protection for trademarks commences on the date that the trademark is granted, whereas, under the previous law, the term started on the date that the application was filed. There are also modifications to the definitions of bad faith and famous trademarks, as well as changes to the procedures and timelines surrounding trademark oppositions.

While trademark owners may need more assistance to best navigate the new law, she said its passage ushers in an exciting opportunity for practitioners who can expect changes in both legal practice and the outcome of proceedings.

“We are working with the new legal frameworks, looking forward to establishing new criteria and precedents that are accepted by the Mexican Industrial Property Institute (IMPI),” Ms. Collada explained.

The introduction of the new federal law followed amendments to the Mexican Industrial Property Law, which took effect in August 2018. Central to this was the change regarding trademarks’ proof of use, which Ms. Collada hails as an important addition to Mexico’s legal framework.

Under the 2018 legislation, owners of trademarks registered as of August 20, 2018, are required to file a Declaration of Use at IMPI on the third year after the grant of the trademark. Therefore, this applies to the owners of trademarks which were registered for three years as of August 20, 2021.

The Declaration of Use should confirm that the goods or services covered by the trademark have been used in the Mexican market; if proof of this use is not shown, the registration of that trademark will automatically lapse. After this initial three-year period, Declarations of Use should be filed every decade.

Although the Mexican Industrial Property Law is no longer in effect, the requirements introduced in respect to proof of use were retained in the new legislation.

Given that Mexico has recently had an overhaul of its IP legislation—modernizing it to comply with treaties such as the USMCA—Ms. Collada does not envisage any further changes to Mexico’s IP landscape in the imminent future. However, she looks forward to seeing how the new law is reflected and developed in practice.

For a government official’s view of developments in Dubai, attend the Capsule Keynote: Regional Updates (today, November 19, 10:15 am–10:45 am EST).

Interviewer: Mariam Sabet, senior associate, Al Tamimi & Company (UAE)

Capsule Keynote Speaker: Tarek Hajjiri, senior vice president–Legal Affairs & commissioner of IP, Dubai International Financial Centre (UAE)

To hear more from a panel of practitioners on developments in Dubai, Egypt, India, and Mexico, go to Carpe Diem: New Laws that Impact the IP Ecosystem (today, November 19, 11:00 am–12:00 pm EST).

Moderator: Mariam Sabet, senior associate, Al Tamimi & Company (UAE)

Speakers:

• Laura Collada, managing partner, Dumont Bergman Bider & Co. (Mexico)
• Mohamed Khodeir, founder and managing partner–head of Corporate Practices, Khodeir & Partners (Egypt)
• Shwetasree Majumder, managing partner, Fidus Law Chambers (India)

Video courtesy of Adobe Stock / Alex Traveler