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Intellectual Property Right Assignments


Intellectual Property Right Assignments Q&A: United Arab Emirates

Key aspects of intellectual property right assignments

Definition of IP rights

1. Does the definition of "Intellectual Property Rights" in Standard document, Assignment of intellectual property rights: Cross-border: clause 1.1 include any rights that are not recognised in your jurisdiction? If yes, what are those rights?

The common law tort of passing off is not recognised in the UAE, as it has a civil law system. However, it is possible to bring a civil trade mark lawsuit based on unregistered rights in certain circumstances (such as filing a trade mark cancellation action based on unregistered trade mark rights, if the claimant proves that the trade mark has been used in the UAE before registration of the mark by the other party).

In fact, there is no special legislation or unfair competition law in the UAE. However, there are provisions related to unfair competition practices in the Consumer Protection Law, Commercial Transactions Law and Anti-Commercial Fraud Law that generally allow for civil claims. Therefore, an unfair competition claim can be implied under these laws and can be used to some extent in disputes relating to ownership of unregistered trade marks. Criminal liability can also be established under the Anti-Commercial Fraud Law in commercial fraud incidents, such as false advertisements and commercialising counterfeit goods under Federal Law 19 of 2016.

2. Should this definition be amended to include any additional rights that are recognised in your jurisdiction? If yes, what are those rights?

The definition of Intellectual Property Rights in Standard document, Assignment of intellectual property rights: Cross-border: clause 1.1 is widely drafted and includes the rights that are recognised in the UAE, both IP rights and related rights. The authors only advise to explicitly add the term "Trade name" to the definition, as this is the common term used by legal entities for an establishment, company or business name. Also, it is advisable to change the definition of "Business Day" to read "a day other than Friday and Saturday, or public holiday in [COUNTRY]".

Assigning the benefit of licences to use IP rights

3. Subject to any restrictions in the terms of the relevant licence, is it possible to assign the benefit of a licence to use IP rights?

If yes:

• Are there any restrictions on this (such as on the identity of the assignee or the price of the assignment)?

• Does the assignment have to comply with any particular formalities to be valid and enforceable?

• Does the burden of the licence automatically pass to the assignee along with the benefit?

The licensee can assign the benefit of a licence to use IP rights to third parties, provided that this right is explicitly mentioned in the licence and the duration of both the licence and the assignment is no longer than the protection period of the IP rights.

Further, the licence and the assignment of trade marks must not impose any limitations on the licensee or assignee that are not related to the rights conferred by the registration of the trade mark rights, or that are not necessary for the maintenance of such rights.

In an assignment of a licence to use patents and industrial designs, the licensee cannot (other than in an assignment or transfer of the organisation's property or part of it which exploits the licence) assign the licence to third parties unless this right is granted in the licence.

An assignment must be in writing and recorded at the relevant registry to be enforced against third parties. For recordal of an assignment, the deed of assignment must be notarised before a notary public (if signed and executed in the UAE). If it is signed outside the UAE, it must be executed before a notary public and then legalised by the relevant UAE diplomatic channel, such as an embassy or consulate. An assignment of industrial property and trade marks must also be recorded in the IP registries (see Question 22) and published in the Official Gazette in the UAE to be effective against third parties.

For copyright, since recordal/registration is not mandatory, a written agreement is enforceable but must follow the above authentication formalities, that is, notarised and/or legalised through UAE diplomatic channels, if the assignment has to be officially recorded.

IP right owners can include provisions in a licence and assignment of the benefit of a licence to ensure effective control of the quality of the use of the licensed IP rights, and provisions that bind licensees or assignees of the benefit of a licence to not do acts that may prejudice the licensed IP. The burden of the licence does not automatically pass to the assignee along with the benefit. The licence and assignment of the benefit of a licence must assert this and specify whether the burden of the licence will pass to the licensee, and then to an assignee of the benefit of the licence.

Assigning future intellectual property rights

4. Is it possible to assign future IP rights? If yes, does an assignment have to comply with any formalities additional to the existing assignment, or do any additional documents need to be entered into, for that future assignment to be valid and enforceable?

It is possible for the parties (assignor and assignee) to sign an agreement that expressly conveys rights in future IP rights. There is no prohibition on the contractual assignment of future trade marks, patents or industrial designs in the UAE, subject to some limitations and observations in laws that govern legitimate compensation. However, an assignment of IP rights can only be recorded against registered and/or protected rights. It is not possible to record assignments against pending applications or future unregistered rights. Unregistered rights can be registered directly in the name of the assignee if proper assignment deeds are submitted. Further, the recordal of an assignment of IP rights must meet a number of conditions (see Question 22).

The Copyright law 7 of 2002 imposes a restriction and makes the assignment of copyright in five or more copyrighted works prohibited by the Copyright Law

Implied covenants

5. Do any of the laws applicable to IP assignments in your jurisdiction imply covenants relating to title?

The laws applicable to IP assignments in the UAE do not explicitly imply covenants relating to title. However, copyright protection extends to title, and any transfer or assignment of such rights includes title to them. An assignment of such rights will include the title by default unless stipulated otherwise.

Assignment agreements in the UAE usually contain provisions that the assignor transfers to the assignee all of the assignor's rights, title, and interests of whatever kind in a trade mark, with or without the goodwill of the business. There are no restrictions in the applicable laws that prohibit the parties from including such provisions. The assignment in gross doctrine does not explicitly exist in the UAE for trade marks. Generally, the same provisions are included in all assignments of IP rights to ensure a full transfer of rights.

Right to sue for past infringement

6. Is it possible to assign the right to sue for past infringement or misuse of IP rights? If yes, is this right automatically transferred to an assignee on an assignment of the relevant IP rights, or must it be expressly included in the terms of the assignment?

An assignee can sue for past infringement or misuse of IP rights if this right is expressly included in the assignment and the assignment is recorded and published in the Official Gazette (see Question 22). Failure to do so will limit the assignee to suing for infringement that occurs after the date of recordal of the assignment.

7. If it must be expressly included, comment on whether the following clauses are effective to assign the right and, if not, set out below any necessary amendments to make them so:

The following amendments apply:

Standard document, Assignment of intellectual property rights: Cross-border: clause 2(c). While clause 2(c) covers past infringements, the authors recommend adding the following paragraph as clause 2(d):

"The Assignor expressly grants to Assignee all rights to bring any necessary actions, including but not limited to lawsuits, proceedings and claims against any past, present, or future third party infringers before all courts of all kinds, levels, functions and capacities be they civil, criminal including Courts of First Instance, Courts of Appeal, Courts of Cassation, Execution Court, Supreme Federal Court and any other relevant official authorities in the UAE in respect of any past, present or future infringement of any of the assigned rights as if the Assignor himself were bringing such action. Assignee shall have the right to any and all damages recovered from any such actions and Assignor hereby waives any recovery obtained by the Assignee".

• Standard document, Assignment of trade marks: Cross-border: clause 2(c).

For clause 2(c), the authors recommend using the second proposed wording, namely, "the right to bring, make, oppose, defend, appeal proceedings, claims or actions and obtain relief (and to retain any damages recovered) in respect of any infringement of any of the registered Trade Marks whether occurring before, on or after the date of this agreement, excluding and reserving to the Assignor all goodwill of the business of the Assignor relating to the goods and services in respect of which the Trade Marks are registered".

The authors also recommend adding the new clause 2(d) set out above (see above, Assignment of intellectual property rights: Cross-border: clause 2(c)).

• Standard document, Assignment of copyright: Cross-border: clause 2.

See above, Assignment of intellectual property rights: Cross-border: Clause 2(c).

• Standard document, Assignment of patents: Cross-border: clause 2(e).

See above, Assignment of intellectual property rights: Cross-border: Clause 2(c).

• Standard document, Assignment of industrial designs: Cross-border: clause 2.

See above, Assignment of intellectual property rights: Cross-border: Clause 2(c).

Right of priority

8. Do applicants for registered IP rights have the right to seek a priority date for their applications? If yes, is it possible to assign that right of priority along with the IP right to which it relates? Are there any formal requirements for a valid and enforceable assignment of the right of priority?

Applicants for IP rights have the right to seek a priority date for their applications. It is possible to assign that right of priority along with the IP right to which it relates, provided that the assignment must expressly includethe priority date/rights among the rights being assigned, as shown in Standard document, Assignment of patents: Cross-border: clause 2(a)(i).

Tax considerations

9. What tax charges and tax considerations typically arise on an assignment of IP rights? Do these vary depending upon:

• The type of intellectual property right being assigned; and/or

• Whether the assignor or assignee is an individual or corporation; and/or

• Whether the assignor or assignee is tax-resident? If yes, explain those variations.

Value added tax (VAT)

An assignment of IP rights is generally subject to VAT at 5% if the assignor is a taxable person in the UAE.

The UAE has recently introduced VAT at a general rate of 5% on the supply of goods and services. Services are broadly defined as anything that can be supplied other than goods. The UAE Cabinet Decree No. (52) of 2017 concerning the executive regulation of the Federal Law No. 8 of 2017 on value added tax (VAT Executive Regulation) sets out specific forms of supply that are a supply of services, including the granting, assignment and surrender of a right and the transfer or licensing of intangible rights, for example, rights of authors, inventors, artists, rights in trade marks, and rights that the state laws deem to be as such.

However, there are some exceptions in the VAT Law, including the transfer of the whole or an independent part of a business from any person, whether a legal entity or individual, to a taxable person for the purposes of continuing the business transferred.

Corporate and income tax

The UAE Federal Government does not impose corporate income or personal income tax on its residents. Corporate income tax is levied on companies under local decrees issued by individual emirates, for example the Emirates of Abu Dhabi, Dubai and Sharjah.

Income received from an assignment of IP rights may be subject to corporate and personal income tax imposed at emirate level. No withholding taxes are applicable in the UAE and VAT is imposed against taxable persons as defined in the relevant regulations.

10. Set out below any amendments necessary to the following standard documents to reflect tax charges and considerations arising in your jurisdiction:

The following amendments apply:

• Standard document, Assignment of intellectual property rights: Cross-border. The Parties should state and determine the entity that will bear all taxes that could result or could be obligatory for payment to the tax authorities.

The Assignor should confirm that the assignment fees exclude VAT or any taxes that may be required.

The Parties should indemnify each other from any claim resulting from a failure by any party to settle tax dues to a competent authority.

• Standard document, Assignment of trade marks: Cross-border.

See above, Assignment of intellectual property rights: Cross-border.

• Standard document, Assignment of copyright: Cross-border.

See above, Assignment of intellectual property rights: Cross-border.

• Standard document, Assignment of patents: Cross-border.

See above, Assignment of intellectual property rights: Cross-border.

• Standard document, Assignment of industrial designs: Cross-border.

See above, Assignment of intellectual property rights: Cross-border

Power of Attorney

11. Is it common practice for an assignee to seek to include a power of attorney in an assignment of IP rights? If yes, comment on whether Standard document, Assignment of intellectual property rights: Cross-border: clause 7.2 is sufficient to grant a valid and enforceable power of attorney. If not, set out below any necessary amendments to make it so

The relevant IP registration departments in the UAE Ministry of Economy allow the assignee, if locally based in UAE, to directly record the assignment. Otherwise, the competent authorities always require a power of attorney from the applicant for the assignment recordal application to register the assignment of IP rights (see Question 22).

The power of attorney must be in writing and include sufficient power to handle assignment of rights and recordal formalities before the Federal authorities in the UAE. The power of attorney must be notarised before a notary public (if executed in the UAE). If it is executed outside the UAE, it must be executed before a notary public and then legalised by the relevant UAE diplomatic channel, that is, an embassy or consulate. The power of attorney must be executed by the assignee in its name and the recordal application must be submitted.

Standard document, Assignment of intellectual property rights: Cross-border: clause 7.2 is not sufficient to grant a valid and enforceable power of attorney. The rights granted to the Assignee under clause 7.2 must be redrafted to grant a broader power of attorney and more specific assignment of rights, duly notarised and/or legalised, in order to be acceptable in the UAE. This will assure many practical solutions and cost saving.

Assistance with future proceedings

12. Is it usual for an assignor to be obliged to assist the assignee in obtaining, defending and enforcing the assigned rights, and to assist with any proceedings that relate to them after completion of an assignment (see for example Standard document, Assignment of intellectual property rights: Crossborder: clause 7.1(b))?

The assignee has all rights to enforce the IP rights against any infringement after recordal of the assignment with the IP authorities and publication of it in the Official Gazette.

There are situations where the assignor may be required to assist legal proceedings or actions related to the enforcement of the IP rights, to prove or consider prior use of the IP rights by the assignor and/or to support the actions or proceedings. The inclusion of Standard document, Assignment of intellectual property rights: Crossborder: clause 7.1(b) would be sufficient to oblige the Assignor to assist the Assignee in any action or proceedings in relation to the assigned rights.

Perfecting the assignment

13. Does either party have to take any additional steps after execution of an assignment for an assignee to receive and enjoy the full benefit of an assignment? If yes, briefly describe those additional steps, and whether they vary depending on the IP right being assigned

For the assignment to be duly recognised by law and effective against third parties, it must be executed according to certain formalities (see Question 17), recorded with the IP authorities and published in the Official Gazette (see Question 22).

Liability

14. Is it possible for an assignor to seek to limit or exclude all liability that might arise after execution of an assignment in relation to the assigned rights (see, for example, Standard document, Assignment of intellectual property rights: Cross-border: clause 9)?

It is possible in principle for the parties to exclude or limit civil liability by inclusion of Standard document, Assignment of intellectual property rights: Cross-border: clause 9. The contractual limitation of liability clauses do not prevent courts from accepting claims from third parties since contractual obligations are solely enforced between the parties. The Civil Transactions Law establishes legal grounds for tort/civil liability. Claims for compensation from wrongdoing entitle any person to bring a civil claim for damages in tort cases. Therefore, this clause will not prevent interested third parties from filing actions, proceedings or claims against the assignor in relation to the assigned rights. It is for the court to decide whether damages are caused by gross negligence or willful misconduct by the Assignor, and whether to consider the limitation or exclusion of liability clauses between the Assignor or Assignee.

15. Is it possible to limit or exclude liability for death and personal injury under particular circumstances?

The general rule of limitation of liability under the Civil Transactions Law does not oblige courts or third parties to follow the limitation of liability agreed between contracting parties.

The exclusion or limitation of liability for death and personal injury can be included in an assignment of rights but its enforceability depends on the assigned IP right itself. For example, an assignment of trade marks once officially recorded and published in the Official Gazette should make the assignee responsible for all claims in relation to such rights. This should also apply to copyright if the assignee uses the rights and the product results in personal injury to a third party.

For patents and inventions, death or personal injury caused by the invention will keep the inventor(s) or assignor, in addition to the assignee, within the scope of liability if wrongdoing or cause is proven against the assignor/inventor while developing the invention. Despite exclusion of liability for products, the act of it is not permissible.

Guarantor

16. Is it possible for a third party to guarantee the obligations of an assignor in an assignment of IP rights? If yes, is it usual for the guarantor to be made a party to the assignment and/or does a separate guarantee agreement need to be entered into by the parties?

It is possible for a third party to guarantee the obligations of an assignor in an assignment of IP rights. Usually, the guarantor is made a party to the assignment agreement. However, there is nothing to prohibit the parties from executing a separate guarantee agreement while referring to it in the assignment agreement. Not referring to the guarantee in the assignment will make the guarantee difficult to be triggered by the assignee due to an uncertain link between them. A general guarantee can be used but the burden of proof and reliance on such a guarantee will be difficult to pursue in practice. Therefore, guarantors can be asked to sign the assignment deed as a way of acknowledgment and implied approval of their role.

Formalities for assignment

17.Does an assignment of intellectual property (IP) rights have to comply with any particular formalities to be valid and enforceable (including in relation to format, language and execution)? If yes, describe briefly what these are for each type of IP right.

Trade marks

The assignment must be in writing and signed by the assignor and assignee. If the assignment is signed in the UAE, it must be executed before a notary public. If the assignment is signed outside the UAE, it must be executed before a notary public and then legalised by the relevant UAE consulate.

If the assignment is in a language other than Arabic, it must be accompanied by an Arabic translation undertaken by a translator in the UAE authorised by the Ministry of Justice.

Copyright

See above, Trade marks.

Patents and know-how

See above, Trade marks.

Industrial design right

See above, Trade marks.

18. If some form of consideration has to be transferred between the parties for an assignment to be valid and enforceable, is a nominal sum acceptable, or must it be an amount that reflects the current market value of the IP rights being assigned, whether for tax reasons or otherwise

The assignment agreement must state the consideration involved in return for the assignment. The consideration can be nominal. The amount of the assignment fee in a recordal assignment deed can be minimal and not necessarily the current market value, as long as the actual assignment deed is referred to in another agreement and proper tax fees are paid to the competent authorities. The language of the recordal deed of assignment needs to be carefully drafted to ensure compatibility.

Compliance with local law and practice

19. Are any of the terms in the following standard documents invalid, unenforceable or contrary to standard practice in your jurisdiction? If yes, set out below any necessary amendments to make those terms valid, enforceable and reflective of standard practice.

The following amendments apply:

• Standard document, Assignment of intellectual property rights: Cross-border. No amendments are necessary other than the amendments or comments stated earlier, such as the right to sue for past infringement (see Question 7, Assignment of intellectual property rights: Cross-border: Clause 2(c)) and exclusion of liability (see Question 14 and Question 15).

There is no requirement to refer to moral rights in an assignment. Further, moral rights cannot be assigned and/or waived under the Copyright Law (see Question 38). Therefore, the third alternative wording of clause 6 should be used if any copyright will be assigned:

"The Assignor, being the sole author of the Works, expressly reserves and asserts his right to [be identified as the author of the Works,] such right [arising under [LEGISLATION]], and expressly reserves all his other moral rights [arising under [LEGISLATION]] and, so far as is legally possible, any broadly equivalent rights he may have in any territory of the world]."

• Standard document, Assignment of trade marks: Cross-border.

No amendments are necessary other than the amendments or comments stated earlier, such as the rights to sue for past infringement (see Question 7, Assignment of intellectual property rights: Cross-border: Clause 2(c)) and exclusion of liability (see Question 14 and Question 15).

• Standard document, Assignment of copyright: Cross-border.

See above, Standard document, Assignment of intellectual property rights: Cross-border.

• Standard document, Assignment of patents: Cross-border.

See above, Standard document, Assignment of trade marks: Cross-border.

• Standard document, Assignment of industrial designs: Cross-border.

See above, Standard document, Assignment of trade marks: Cross-border

Brexit

20.Are any amendments required to the following standard documents to reflect the fact that the UK is preparing to leave the EU; and/or will have left the EU after March 2019? If yes, set those amendments out below and, if necessary, briefly explain them (and where no amendments are necessary, insert "no amendments").

Not applicable.

Registration and recordal aspects of intellectual property right assignments

Registrable intellectual property rights

21. Which intellectual property (IP) rights are registrable in your jurisdiction? Provide a link to the website of the relevant registry in each case.

Trade marks are registered in the trade mark registry managed by the Trade mark Office.

Patents and industrial designs are registered in the patent and design registries managed by the Patent Office.

Copyrights are registered, or recorded, in the copyright registry managed by the Copyright Office.

These official registries can be accessed on the UAE Ministry of Economy website, at https://services.economy.ae/ m/Pages/Home.aspx?lang=ar-ae .

Assignment recordal / registration

22. Can an IP assignment be recorded at the IP registry in your jurisdiction? If yes, is this optional or a statutory requirement? If the position varies depending on the IP right being assigned, explain those variations

Trade marks

An assignment must be recorded with the Trade marks Office against registered rights. It is not possible to record the assignment against a pending trade mark application. The assignment will have no effect against third parties until it is recorded with the Trade marks Office and published in the Official Gazette.

While there is no statutory time frame to complete the assignment recordal process, it is advisable to complete the formalities immediately once the assignment deed is signed and executed according to the required formalities.

Further, the recordal of an assignment of IP rights must meet a number of conditions, including a written assignment agreement, specification of the assigned rights and the geographical area where the rights are assigned (see Question 52).

The IP authorities require a power of attorney from the assignee for recordal of an assignment of IP rights (see Question 11).

Copyright

An assignment is referred to under the Copyright Law as a transfer. The recordal of a transfer is not compulsory but it is recommended, so that the transfer is recognised by the authorities. Further, recordal is recommended to easily enforce the assignee's rights against third parties in case of legal action to show the assignee's rights.

There is no statutory time frame for recordal. Recordal of rights before the copyright office is not mandatory nor a prerequisite to establish standing to sue for copyright infringement.

Patents and know-how

See above, Trade marks.

There is no statutory time frame after granting for recordal. Fees are usually covered by the assignee unless the parties agree otherwise in the assignment deed or any other agreements. Assignment by the inventor to the applicant for the patent is required and the deed of assignment should be submitted to the examiner to grant patent rights.

Industrial design right

See above, Patents and know-how.

23. Is it usual to include a mechanism in the terms of an assignment to ensure that the assignor satisfies its obligation to record the assignment, or that the assignee is able to take action if the assignor fails to do so?

It is usual to include terms in the assignment that oblige the assignor to execute and sign deeds or documents required to record the assignment with the IP authorities.

The IP authorities require a duly notarised/legalised power of attorney from the assignee, for the purpose of recording assignments (see Question 11).

Warranties and indemnities in intellectual property right assignments

Express warranties from assignor

24. Is it usual for an assignee to seek certain express warranties from an assignor in an IP assignment? If yes, comment on whether the following clauses reflect the scope of express warranties typically given by an assignor and, if not, set out below any necessary amendments so that they do (where no amendments are necessary, insert "no amendments").

No amendments are necessary to: • Standard document, Assignment of intellectual property rights: Cross-border: clause 4.

• Standard document, Assignment of trade marks: Cross-border: clause 4.

• Standard document, Assignment of copyright: Cross-border: clause 4.

• Standard document, Assignment of patents: Cross-border: clause 5.

Implied warranties from assignor

25. Is it usual for certain warranties to be implied into the terms of an IP right assignment in your jurisdiction? If yes, briefly describe what those implied warranties are; which types of IP assignments they apply to (if not all); and whether their application can be excluded from the terms of an assignment. State any relevant legislation

Trade marks Warranties must be expressly included in the assignment in order to be recognised by the IP authorities or courts. Implied warranties from the Assignor might not be recognised or considered. The Civil Transactions Law (the tort and contract chapters) establishes the assumption of an implied warranty. The application of this law cannot be excluded against third party claims in the assignment contract. However, the assignee will be primarily responsible for any claims after the transfer of ownership date.

Copyright

See above, Trade marks.

Patents and know-how

See above, Trade marks.

Industrial design right

See above, Trade marks.

Assignor indemnity

26. Is it usual for an assignee to seek an indemnity from an assignor? If yes, comment on whether the following clauses reflect standard practice in your jurisdiction and, if not, set out below any necessary amendments so that they do.

No amendments are necessary to:

• Standard document, Assignment of intellectual property rights: Cross-border: clause 5.

• Standard document, Assignment of trade marks: Cross-border: clause 5.

• Standard document, Assignment of copyright: Cross-border: clause 5.

• Standard document, Assignment of patents: Cross-border: clause 6.

• Standard document, Assignment of industrial designs: Cross-border: clause 5.

27. Does an assignee have a general obligation at law to mitigate any loss that it may suffer or incur as a result of an event that would give rise to a claim under an indemnity? State any relevant legislation.

The IP laws do not impose any specific obligations or such mitigation arrangements. However, general principles in civil commercial law and judicial principles assume that parties should not act recklessly or with negligence when facing loss, otherwise liability could be assumed and imposed by the competent court under general rules of tort.

Assigning specific types of intellectual property rights

TRADE MARKS

Partial assignments

28. Is it possible to make a partial assignment of a registered trade mark?

The Trade marks Law does not contain provisions that trade marks can be assigned in whole or part. Therefore, trade marks cannot be partially assigned in the UAE. There is nothing in the law but UAE trade mark practice and the system does not allow for this. One way to work around this is to refile for one element in a separate application and then assign it. The court precedents stipulate that the use and ownership of a trade mark is for its whole elements and not partially.

Goodwill

29. What is understood by the term "goodwill" in your jurisdiction?

Goodwill refers to the reputation associated with the trade mark and the reputation of the products and/or services for which the trade mark is used in the market.

30. Is goodwill automatically transferred to the assignee of a trade mark, or must it be expressly included in the terms of an assignment (see for example Standard document, Assignment of intellectual property rights: Cross-border: clause 2(b) and Standard document, Assignment of trade marks: Cross-border: clause 2(b))? Does this depend upon whether the trade mark is registered or unregistered?

In UAE, registered trade marks can be transferred with or without goodwill. Goodwill is automatically transferred with the assignment of a trade mark.

Co-ownership

31. Is it possible to co-own trade marks? If yes, are co-ownership agreements used to formalize the terms upon which the parties agree to co-own trade marks?

It is possible to co-own trade marks. It is recommended to execute co-ownership agreements to set out terms and conditions regulating the relationship between the joint owners in relation to use and enforcement of the trade marks.

Copyright in trade marks

32. Under what circumstances might a trade mark also be protected by copyright? Is there anything additional that an assignee must do to ensure that copyright in a trade mark is transferred to it by the terms of an assignment?

Logos, artistic signs, emblems and slogans can be protected as a trade mark and by copyright. To ensure that copyright in a trade mark is transferred to the assignee, the terms of the assignment must explicitly state that the assignment includes the trade mark and all other rights subsisting in or relating to it, including goodwill and copyright.

Acquiescence

33. If a registered trade mark owner has acquiesced in the use of a later trade mark whilst being aware of such use, is the owner prevented from applying for a declaration that the later trade mark is invalid, or from opposing the use of the later trade mark? If yes, how long must the period of acquiescence be before this rule applies, if at all? Are there any exceptions to this rule?

The Trade marks Law does not contain acquiescence defences to trade mark infringement as such. However, it states that cancellation proceedings against registered trade marks are not admissible if the registration of the trade mark has been tolerated for five years.

COPYRIGHT

First owner of copyright work

34. Is the general rule that the author of a copyright work (the person who creates it) is the first owner of that work? Are there any exceptions to this rule? If yes, briefly describe them.

The author of a copyrighted work (the person who creates it) is the first owner of the work. If the author has created the work in the course of their employment, the copyright will not transfer automatically to the employer and will remain with the employee, unless the employment contract explicitly provides for the assignment of the copyright from the employee to the employer and the required assignment (see Question 17) is executed between the employee and employer. The Employment Law, Copyright Law and Civil Transactions Law establish this principle and the practice of local courts and judicial precedents confirm it.

Recognition of moral rights

35.Does your jurisdiction recognise moral rights, or any equivalent or similar rights that accrue to the author of a copyright work? If yes, provide a brief overview of those rights.

Moral rights are recognised in the UAE. The moral rights of an author under Article 5 of the Copyright Law include the rights to:

• Publish the work for the first time. • Claim authorship/ownership of the work.

• Object to any alteration of the work, if the alteration will cause distortion or mutilation of the work, or be prejudicial to the standing of the author.

• Withdraw the work from circulation for serious justifiable reasons.

36. Set out below any necessary amendments to clause 6 in each of the following standard documents to reflect the typical approach to moral rights (or the equivalent rights) in your jurisdiction: • Standard document, Assignment of intellectual property rights: Cross-border.

• Standard document, Assignment of copyright: Cross-border

The first and second options of Standard document, Assignment of intellectual property rights: Cross-border: clause 6 cannot be used in the UAE (see Question 38). Only the third option in clause 6 is acceptable in the UAE. None of the options of Standard document, Assignment of copyright: Cross-border: clause 6 can be used in the UAE. But the third option of Standard document, Assignment of intellectual property rights: Cross-border: Clause 6 is acceptable in UAE.

Assertion of moral rights

37. Do some or all moral rights have to be asserted by the author before they apply, or do they take effect immediately upon creation of a copyright work?

The right to attribution must be asserted by the author, due to the definition of author in Article 1 of the Copyright Law.

Assignment and waiver of moral rights

38. Can moral (or similar) rights be assigned and/or waived? Is the author the only one entitled to assign and/or waive them, or can an assignee of the works to which they relate also assign and/or waive them?

It is not possible to assign or waive moral rights under the Copyright Law.

39. Comment on whether Standard document, Waiver of moral rights: Cross-border is valid and enforceable in your jurisdiction and, if not, set out below any necessary amendments to make it so, and briefly explain your reasons.

It is not possible to assign or waive moral rights under the Copyright Law.

Exceptions to moral rights

40. Are there any particular types of works that moral rights do not apply to?

Moral rights apply to all copyright works under the Copyright Law. There are no particular types of copyright works that moral rights do not apply to.

Database right

41. Under what circumstances might the subject matter comprised in a copyright work also be protected by database right? Is there anything additional that an assignee must do to ensure that rights to use the database are transferred to it by the terms of the assignment?

Databases are protected under the Copyright Law, which lists databases among the works that enjoy copyright protection in Article 2.

There is no special database rights law that protects investment in a database. Databases do not receive protection beyond that provided under the Copyright Law or any applicable contractual obligations between the parties. Therefore, contractual terms on access, use, and transfer of databases are the most effective way to protect databases that do not qualify for protection under the Copyright Law. Organising and compiling a database in general is eligible for copyright protection but the protection does not extend to the data itself as it cannot be classified as original. Originality lies is in how to produce, organise, display or present the data.

There is no federal or special data protection law to cover the UAE. There are only two special database laws applied in a very limited manner and enacted to cover some free zone areas, such as the DIFC and Dubai Healthcare City. The assignee is advised to obtain careful advice on the assignment of rights that involve a database, to ensure the assignment clause extends to cover such rights.

First owner of database

42. Is the general rule that the maker of a database (the person who creates it) is the first owner of the database right in it? Are there any exceptions to this rule? If yes, briefly describe them.

The database author is the first owner of the copyright, unless made by an employee in the course of their employment under an employment contract that obliges the employee to assign the copyright in the database to the employer. In this case, the employer is the owner of the database.

PATENTS

First owner of invention

43. Is the general rule that the inventor is the first owner of an invention, and entitled to the rights in any patent granted in respect of that invention? Are there any exceptions to this general rule? If yes, briefly describe them.

The inventor is the first owner of an invention, unless made by an employee in the course of their employment and under an employment contract that obliges the employee to assign the patent in any creation or invention to the employer, in which case the employer is the patent owner (Article 8, Industrial Property Law).

However, if the employee's employment contract does not include provisions related to inventions, patents and assignments of such rights, and they discover an invention in the course of their employment using the employer's documents, experience and other facilities available to the employee, the right to the invention will vest in the employee. The employee is obliged under the Patent Law to notify the employer of the invention through a written report. The employer must notify their interest to acquire the invention within four months and the employer will be entitled to patent rights in the invention from the date of the invention, provided that the employer provides the employee with fair compensation. Fair compensation is determined taking into account the employee's salary, the economic value of the invention and the benefits that the employer will gain from the invention.

Divisional applications

44. Do patent applicants have the right to file "divisional patent applications"? If yes, is it possible to assign that right, along with the patent to which it relates? Are there any formal requirements for a valid and enforceable assignment of the right to file divisional applications, other than listing it in the manner shown at Standard document, Assignment of patents: Cross-border: clause 2(a)(ii)?

The Patent Law does not explicitly recognise the concept of divisional patent applications. However, the Patent Office allows the filing of divisional applications claiming priority under the Paris Convention for the Protection of Industrial Property. In this case, the Patent Office requires divisional applications to refer to the original application and not extend beyond its scope.

The assignment of divisional applications has not been mentioned in the Patent Law or any regulations or memos of the Patent Office.

Improvements

45. Briefly describe any potential issues that the obligation in Standard document, Assignment of patents: Cross-border: clause 3 might give rise to, including in relation to competition law, and set out below any necessary amendments to address them.

No potential issues will arise in relation to Standard document, Assignment of patents: Cross-border: clause 3 due to the inclusion of the sentence "to the extent that it is not prohibited by law or by any obligation" to clause 3, which implies that the parties desire to comply with the applicable laws in the country.

The assignment and transfer of rights related to patents, with any amendments or validation of them, are subject to the supervision of the Patent Office in relation to conditions, security interests and rights granted (Article 59, Patent Law). Further, the Patent Office can require the parties to amend an assignment that contains a misuse of IP rights or which conflicts with trade competition, otherwise the Patent Office will not record the assignment. The provisions of Article 59 of the Patent Law imply that the parties to the assignment would be given the right to amend its clauses if they are contrary to the competition laws. In practice and due to the relatively small number of granted patents, the authors do not see this power exercised by the Patent Office but it is certainly an important factor to be considered when preparing an assignment deed or agreement.

The Competition Law and Regulation penalise competition practices that affect the level of competition in a relevant market. The Competition Law defines a relevant market as products or services or a combination of them which, based on their price, characteristics and methods of use, can be replaced with other goods or services or alternatives, which can be chosen to meet a specific requirement of consumers in a certain geographical area. Therefore, no issues will arise in relation to clause 3 if it will not affect the competition level in the relevant market.

INDUSTRIAL DESIGNS

First owner of industrial design

46. Is the general rule that the designer is the first owner of any design right in a design? Are there any exceptions to this rule? If yes, briefly describe them.

The designer is the first owner of the industrial design, unless made by an employee in the course of their employment under an employment contract that obliges the employee to assign the industrial designs or models to the employer. In this case, the employer is the owner of the industrial designs or models, under Federal law 17 of 2002 as amended by Law 31 of 2006. The same rights can also be protected by copyright if they meet the originality requirement and are fixed in a tangible medium of expression. As copyright protection may not be suitable for some designers, they opt to protect their novel designs as industrial designs.

The provisions related to inventions made by an employee relating to patents (see Question 43) also apply to industrial designs, since the Patent and Industrial Models Law deals with patents and industrial designs/models generally.

Registered and unregistered

47. Do both registered and unregistered design rights subsist in your jurisdiction? State any relevant legislation.

The law only protects registered designs.

48. How is the territorial scope of each type of design right determined?

A registered design is protected in all of the UAE, since it is a federal registration. A design must be registered in the UAE to be protected in the UAE, and for its owner to prevent third parties from using or registering the design in the UAE.

Registration of the design outside UAE will not protect the design in the UAE, and will not grant its owner the right to enforce the design against infringement in the UAE.

49. Do both types of design right protect the same aspects of a design? What are those aspects for the respective rights?

A registered design protects the ornamental or aesthetic aspect of an article. The design can consist of threedimensional features that can be used in industry or craft, or two-dimensional innovative creation of lines or colours. UAE law does not recognise unregistered design rights (Federal law 17 of 2002, as amended by Law 31 of 2006).

50. Do both types of design right give the proprietor the same duration of protection, and scope of rights, for their design? What are the respective periods of protection and scope of the rights?

The protection period for a registered design is ten years from the date of filing the design application (Federal law number 17 of 2002, as amended by Law 31 of 2006). UAE law does not recognise unregistered design rights.

51. Are any particular features or types of design excluded from protection under the registered and/ or unregistered design right regimes

Under Federal law 17 of 2002 as amended by Law 31 of 2006, also known as The Industrial Property Law in Article 47, the conditions to be met for a design to be registered and protected in the UAE are all of the following: • New. • Innovative.

• Usable as an industrial/handicraft product.

• Not violating public order or morals in the UAE.

UAE law does not recognise unregistered design rights.

Confirmatory assignments of intellectual property rights

52. Under what circumstances are confirmatory assignments of intellectual property (IP) rights used in your jurisdiction, if at all (see Standard document, Letter confirming assignment of intellectual property rights: Cross-border)?

It is possible to execute a brief deed of assignment for the purpose of recordal of transfer of rights rather than disclosing the full detailed assignment agreement, commonly called a Trade mark Recordal Assignment Deed. It must comply with certain formalities and contain certain minimum information. Parties can opt to rely on this only or can have a side assignment agreement to tackle all details of their transaction (see Question 53). Similar brief deeds of assignment are used for other IP rights such as patents, copyright and designs.

53. Does a confirmatory assignment of IP rights have to comply with any particular formalities to be valid and enforceable?

A brief deed of assignment must be in writing and signed by the assignor and assignee. If the deed is signed in the UAE, it must be executed before a notary public. If it is signed outside the UAE, it must be executed before a notary public and then legalised by the relevant UAE diplomatic channel, embassy or consulate.

If the deed is in a language other than Arabic, it must be accompanied by an Arabic translation undertaken by a translator in the UAE authorised by the Ministry of Justice.

According to the relevant law in relation to IP rights, the confirmatory assignment must also contain the basic information required by law and practice of registries to be acceptable for recordal, such as:

• The names and addresses of the assignor and assignee.

• Full details of the assigned rights.

• The offer and acceptance of the transfer of the rights.

• The nominal or other consideration amount.

• The territory.

• The classes of goods/services for which the trade mark is registered.

• Details of the invention or industrial design for patent and industrial design assignment.

• Applications/registration numbers.

These information requirements apply to similar brief deeds of assignment used for other IP rights, such as patents, copyright and designs, to the extent they are applicable. For copyright, the assignee and assignor can execute the transfer of rights before the Copyright Office and sign a special form for it. For patents, parties can execute an assignment of prior filings of applications and should include enough information about the invention rather than a list of classes.

54. Set out below any necessary amendments to make Standard document, Letter confirming assignment of intellectual property rights: Cross-border valid and enforceable in your jurisdiction, and briefly explain your amendments

It is highly recommended to amend the title of the document to become a deed of assignment and ensure that it complies with the legal requirements (see Question 53).

The wording of this letter might not be considered by the official authorities as an affirmative offer and acceptance of the transfer or assignment of rights, especially since it is addressed to the assignee and requires the assignee's acceptance of the same. Therefore, it is recommended to execute a one-page deed of assignment rather than this letter

Contributor details

Munir Suboh

Partner and Head of IP

BSA Ahmad Bin Hezeem & Associates LLP

T +971 4 3685555

E munir.suboh@bsabh.com

W www.bsabh.com

Amal Atieh

Senior Associate

BSA Ahmad Bin Hezeem & Associates LLP

T +971 4 3685555

Eamal.atieh@bsabh.com

W www.bsabh.com

Article published by Thomson and Reuters Practical Law. See full article here
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