United Arab Emirates: Enforcing IP Rights at Trade Fairs in Dubai

Trade exhibitions enable companies to showcase their offerings in forums where others interested in the same industries are guaranteed to congregate. These events provide scope to identify new opportunities, to get a feel for developing trends, and to monitor the activities of others in the industry.

Capitalising on its location within four hours' flight of 2.2 billion people, Dubai has used the trade exhibition industry as one of the cornerstones of its economic development. Along with the income generated by making venues available, a raft of other businesses (from printing companies to hospitality providers) share the economic benefits.|

The Dubai World Trade Centre reports that 1.1 million visitors attended trade and consumer events at DWTC venues in 2008 alone. It also claims that this cements Dubai's position as the business tourism hub in the Middle East and North Africa region. It is difficult to dispute the significance of Dubai's role as a venue for trade exhibitions in this region. Unfortunately, for many intellectual property rights owners, it is not only legitimate traders who seek to benefit from these international marketing opportunities. This article sets out typical scenarios that IP owners might encounter at trade exhibitions in Dubai, along with possible strategies for addressing infringement of IP rights by trade exhibition participants.

Typical scenarios

• One typical scenario involves a trader displaying signage, sample products, and /or catalogues, illegitimately bearing another company's trade marks.
• Another scenario is where the trader does not use a third party's exact trade mark, but uses general get-up (possibly including word elements) sufficiently similar to another company's trade-dress to either cause customer confusion or to at least bring to mind the other company's product.
• A further scenario involves the replication of products, without the use of any infringing word or logo trade marks.

Preliminary steps
In the UAE, action in respect of the scenarios outlined above is generally reliant on registered IP rights. The authorities in Dubai are understandably reluctant to take action where no clear proprietary rights can be established. In each of the three scenarios set out above, it is important to have first secured registration of corresponding rights. Obviously, registration of IP rights takes time, so this preparation will need to be made well in advance.

Registration of word trade marks is a basic starting point. Registration of logos and packaging as trade marks, including in specific colour formats, can be beneficial in cases where a suspect trader is using look-alike trade dress, without actually using an identical or confusingly similar verbal element. Where the infringement relates to the shape of a product, then a registered industrial design right might provide a cause of action. An alternative might be to rely on the registration of the shape as a 3D trade mark. In any event, it will be necessary to have sought relevant registered IP rights in advance, as these cannot be secured quickly, or at short notice.

Assuming that relevant registered IP rights have been secured in advance, another essential preliminary step relates to authorisation. A lawyer typically requires a Power of Attorney from the IP owner before taking any action against infringers in the UAE - regardless of the way in which the action is going to be taken. (For foreign IP owners, legalisation formalities will also need to have been met.) In the context of trade exhibitions, which may only last a few days, it is essential that the Power of Attorney aspect is addressed well in advance of the event. It is unrealistic to expect that there will be enough time to execute and legalise a Power of Attorney in the time between becoming aware of infringing conduct at a trade exhibition and the conclusion of the trade exhibition. In this regard, it is essential to anticipate and plan ahead, rather than simply 'react'.

A further essential preliminary step relates to evidence of the subject intellectual property rights. In order to take action on short notice, it is essential that the lawyer has a copy of the relevant certificate/s of registration on hand before the decision is made to take action. Once again, preparation is the key.

Action
In taking action against a trader infringing trade marks at a trade exhibition in Dubai, the most relevant government authority is the Dubai Department of Economic Development ("DED"). The organiser of the trade exhibition will also play a role, although the degree to which the organiser may wish to cooperate in action against one of its clients is obviously a point of contention.

As a first step, and depending on the extent of the action the IP owner wishes to take against the infringer, it is worth reviewing any publicly available information relating to the exhibition organiser's treatment of IP rights. Some trade exhibition organisers publish IP policies on their websites, or make them otherwise available. Such policies usually set out the approach that the exhibition organiser will take in response to allegations of infringement of IP rights. If such a policy exists, then it might typically provide a contact point for complaints relating to IP, and outline the process (including evidentiary requirements) for raising and addressing a complaint.

Taking action via the exhibition organiser's IP protection policy may be a pragmatic option. It could result in the suspect trader's display being promptly removed from the exhibition, effectively preventing the trader from using the exhibition to market the infringing goods. The cost of thwarted attendance at the trade fair would cause a loss for the trader, and the likelihood of them exhibiting similar stock at similar trade fairs in the future (at least in Dubai) would be reduced.

Where the exhibition organiser does not have an intellectual property protection policy, or is simply unwilling to cooperate, or in cases where the IP owner is unlikely to be satisfied with simply shutting down the infringing display, the next step would be to involve the DED.

DED inspectors responsible for handling complaints relating to IP rights understand the issues and are willing to take action to uphold such rights. Administrative action may include conducting a raid on the trader's site at the trade exhibition (and any related storage facility), and could result in seizure and destruction of the offending goods, as well as a fine for the suspect trader.

An administrative raid needs to be carefully managed. It is likely that consultation with the exhibition organiser will be required. If the IP owner is not going to be satisfied with action via a complaint to the exhibition organiser, or by administrative action via the DED, then civil and criminal complaints remain options – although the cost of such action and the length of time that proceedings can take act as a disincentive in many cases.

Other considerations
A key practical consideration relating to action against infringers at trade exhibitions relates to actually identifying whether infringing goods are on display or likely to be displayed.

Where an exhibition in Dubai is part of a series of exhibitions held in a number of cities around the world, then it may be possible to assume that particular traders and their wares are likely to be present. For example, if the IP owner became aware of a particular trader marketing infringing goods at a fair in Frankfurt or Shanghai, it may be a good indication that the same trader will be marketing its goods on the Dubai leg of the tour.

In any event, it will typically be necessary to have someone attend a trade exhibition to determine whether any infringing conduct is occurring. For trade exhibitions that are open to the public, this is generally not a problem, although trade exhibitions that are only open to those 'in the trade' may be slightly more difficult to monitor without sufficient advanced notice. In this type of scenario, it may even be appropriate to involve an investigator, or to have employees of the IP owner attend the event to gather preliminary information.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.