Introduction & Key Countries. UAE Egypt Saudi Arabia Jordan Morocco

Transcription

1 Hatem Abdelghani

2 Introduction & Key Countries UAE Egypt Saudi Arabia Jordan Morocco

3 United Arab Emirates How does counterfeit come in UAE Enforcement Actions Applicable Laws Punishments Customs Recordation Trade Name Cancellations Applicable laws Punishments IP Enforcement Trainings

4 HOW DOES COUNTERFEIT COME United Arab Emirates

5 How does counterfeit come in UAE 90% from China 10% from India, Turkey, Pakistan, Bangladesh, Egypt Transit Shipments

6 ENFORCEMENT ACTIONS United Arab Emirates

7 Enforcement Actions Administrative Case Criminal Case Civil Case United Arab Emirates

8 Administrative Case Filing of Complaint with Economic Development Department (EDD) Scheduling of Raid Action and Seizure of Counterfeit Goods Official Seizure Report by the EDD Official Destruction Report by the EDD EDD will pass its order to Destroy counterfeit products United Arab Emirates

9 Criminal Case Filing of Complaint with Police Scheduling of Raid Action and Seizure of Counterfeit Goods Seized Counterfeit Goods will be Transferred to a Third Party Logistics Company Authorities will take the Statement of the Defendant & Complainant Judgment will be awarded Public Prosecution will transfer the case to Court for adjudication Police will transfer the Case to the Public Prosecution for further inquiry Similar Genuine Products along with the Counterfeits Seized will be submitted to the Criminal Investigation Laboratory Execution / Destruction will be applied with the Municipality Destruction of Counterfeit Seizures Obtain Destruction Certificate United Arab Emirates

10 Applicable Laws Federal Law No. 37 of 1992 (as amended by Federal Law No. 8 of 2002) Article 2: A trademark is anything which takes a distinctive form whether names, words, signatures, letters, figures, drawings, symbols, titles, tax stamps, seals, pictures, inscriptions, advertisements or packs or any other mark or a combination thereof, used or is intended to be used, either in distinguishing goods, products or services whatever their origin is, or to show that goods or products are owned by the mark owner by virtue of their manufacture, selection or dealing in, or to indicate the performance of a service. Sound is considered a part of the trademark if it accompanies thereto. United Arab Emirates

11 Applicable Laws Federal Law No. 37 of 1992 (as amended by Federal Law No. 8 of 2002) Article 37/3: Any person who commits any of the following acts shall be punished by an imprisonment and by a fine not less than (5000) five Thousand U.A.E. Dirhams, or by one of those penalties. Whoever puts, in mala fide, a registered trademark owned by another party, on his products. United Arab Emirates

12 Applicable Laws Federal Law No. 37 of 1992 (as amended by Federal Law No. 8 of 2002) Article 43: The court may, in any civil or criminal case, order the confiscation of the seized things or which may be seized later, and deduct their price from the fines or compensations, or for the disposal thereof in any other manner deemed fit by the court. The court also may order the destruction of the unlawful marks, or, if necessary, order the destruction of the products, envelopes, packing materials and other things which bear such marks or bear illegal statements, and machines and instruments used in particular in the act of counterfeit. The court may order all the above actions even in the case of acquittal. The court may also order the publication of the judgment in the Official Gazette or in one of the daily newspapers at the expense of the convict. United Arab Emirates

13 Punishments Fine to the Government Destruction of Counterfeit Seizures Imprisonment United Arab Emirates

14 Civil Case Applicable Law Article (40) of Federal Law No. 37/1992 and its amendments provides with respect to trademark that: Whoever is injured as a result of any of the acts stated in the two Articles 37, 38 of such law is entitled to file a lawsuit before the competent Civil Court to claim the one responsible for such act to pay an appropriate indemnity against the damage it suffered. United Arab Emirates

15 CUSTOMS RECORDATION United Arab Emirates

16 Customs Recordation The following are the requirements for the Customs Recordation: A. Power of Attorney B. Valid copies of the Trademarks registered in UAE C. Government Fees Customs Recordation will be valid as long as the Trademark Registration is valid and has to be renewed once TM has expired along with TM Renewal Certificates. United Arab Emirates

17 TRADE NAME CANCELLATION United Arab Emirates

18 Trade Name Cancellation Applicable Laws: I. The Federal Trade Transactions Act No. 18/1993 Article 65: A trader may not disclose such matters as are consistent with the reality regarding the origin or description of his goods, or any other matters pertaining to their nature or importance. He may not either declare falsely that he holds a status or degree or award, nor may he resort to any other misleading means, with the intent thereby to usurp the customers of a competitor trader; or else, he shall be liable for compensation. United Arab Emirates

19 Trade Name Cancellation Applicable Laws: II. The Federal Trade Transactions Act No. 18/1993 Article 66: A trader may not resort to fraud and cheating when marketing his goods, nor may he spread or publish false particulars tending to be prejudicial to the interests of another competitor trader; in default he shall be liable for damages. Article 67: The trade name shall be identical to the truth and shall not mislead or prejudice public order or morals. United Arab Emirates

20 Trade Name Cancellation Applicable Laws: III. Paris Convention for the Protection of Industrial Property This is considered to be one of the most important references on the protection of the names and the trademarks. The UAE is a signatory in this convention and it became an internal legislation by the accession of the United Arab Emirates, Decree No. 20 of Article 8 of Decree No. 20 of 1996: A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark. United Arab Emirates

21 INTELLECTUAL PROPERTY TRAINING United Arab Emirates

22 United Arab Emirates

23 Egypt How does counterfeit come in Egypt Enforcement Actions Criminal Case Civil Case Intellectual Property Training

24 HOW DOES COUNTERFEIT COME Egypt

25 How does counterfeit come in Egypt Products without labels Shipping of labels separately Printing House Factories & Manufacturing Companies Infringing Products Egypt

26 ENFORCEMENT ACTIONS Egypt

27 Custom Cases Filing of a case with the Civil Court Will estimate the value of the seizures and we would have to pay on behalf of the Brand Owner The case file will be transferred to the Court by the Customs Authorities The Court will appoint a Sworn Expert whose role is to analyze the seized goods The case will be officially closed after the destruction is completed Destruction of the seized goods. The case file will be transferred to the Economic Court for trial Egypt

28 Criminal Case Filling the complaint on behalf of your Company to the Police Police will submit the seizure report to the Public Prosecution Trademark Office will issue the Technical examination report with regard to the Infringement of the TM of the Company Trademark Office will submit the Technical examination to the Public Prosecution Office Case will be officially close after destruction. After final Judgment issued by the Court, destruction of the seized goods will apply. Public Prosecution will transfer the case file to the Economic Court for trial Egypt

29 INTELLECTUAL PROPERTY TRAINING Egypt

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31 Saudi Arabia How does counterfeit come in Saudi Arabia Anti-Counterfeiting & Fraud Department of the Ministry of Commerce & Industry Customs Cases Intellectual Property Trainings

32 HOW DOES COUNTERFEIT COME Saudi Arabia

33 How does counterfeit come in Saudi Arabia Transit Shipment from China UAE (as hub of the region) Re-exportation from other countries China Saudi Arabia

34 Anti-Counterfeiting & Fraud Department of the Ministry of Commerce & Industry A platform in Saudi Arabia whereby trademark owners can seek to enforce their registered trademarks rights without having to resort to lengthy and expensive Criminal and/or Civil Court action. However, in many occasions, especially when products concerns the health of consumers, the ACFD transfers the case to the Public Prosecution The ACFD may also issue a direction to the opponent to remove all infringing materials from its premises including any signboards if the dispute involves the opponent s unauthorized use of complainant s trademark and the opponent may be required to sign an undertaking to the effect that it will permanently refrain from illegally using the trademark of the complainant without the necessary authorization to do so. The ACFD is also authorized to destroy the confiscated products and materials and to issue a seizure report to the complainant. Saudi Arabia

35 Anti-Counterfeiting & Fraud Department of the Ministry of Commerce & Industry If the situation warrants, the ACFD may also impose interim sanctions and/or injunctions against the opponent s carrying out certain business transactions. In the event of a failure to comply with an order of the ACFD, such injunctions can go as far as freezing all works, applications, licensing activities before all governmental agencies, ministries and departments. Saudi Arabia

36 Anti-Counterfeiting & Fraud Department of the Ministry of Commerce & Industry Filing of Complaint with Anti-Counterfeiting & Fraud Department (ACFD) Scheduling of Raid Action and Seizure of Counterfeit Goods Official Seizure Report by the ACFD Official Destruction Report by the ACFD and execution of other sanctions ACFD will pass its order to Destroy counterfeit products Saudi Arabia

37 Customs Cases On detaining a shipment, Saudi Customs Authorities (SCA) will approach legal representatives of brand owners Brand owners will provide confirmation on authenticity of the goods within 7 days If counterfeit complaint and official letter confirming the same has to be submitted A committee within the customs will make the decision to give a fine and/or destruction of the goods. Authorities will take statement of the defendant Authorities will study the case Saudi Arabia

38 INTELLECTUAL PROPERTY TRAINING Saudi Arabia

39 Saudi Arabia

40 Jordan How does counterfeit come in Jordan Customs Recordation Customs Cases Criminal Cases Intellectual Property Training

41 HOW DOES COUNTERFEIT COME Jordan

42 How does counterfeit come in Jordan Transit Shipments Turkey China UAE Jordan

43 Customs Recordation The following are the requirements for the Customs Recordation: A. Power of Attorney B. Valid copies of the Trademarks registered in Jordan C. Brief description of the brand and its products and the differences between the genuine and counterfeit. D. List of Official Distributors of the brand in order to avoid shipments for them from being stopped. Jordan

44 Customs Cases Once the Customs Recordation is completed, the Jordanian Customs will approach whenever they come across a suspected shipment where it is required to have the confirmation of the brand owner. The customs cases in Jordan are heard in the Court that require follow-up, attendance in hearings, drafts of memorandums, till the destruction of the counterfeit goods. Jordan

45 Criminal Cases A suit has to be filed with the Criminal Court The court would stamp the complaint & register the case We would provide the authorities with the stamped complaint to mark official seizure of the goods Public Prosecutor (PP) obtain statements of both parties Expert Report will be submitted to court Submit identical genuine sample of the counterfeit products seized Court will appoint an expert to prepare a report on the nature of goods PP will transfer the case to Court Court will award a judgment Execution of judgment Jordan

46 INTELLECTUAL PROPERTY TRAINING Jordan

47 Jordan

48 Jordan How does counterfeit come in Jordan Customs Recordation Customs Cases Criminal Cases Intellectual Property Training

49 HOW DOES COUNTERFEIT COME Jordan

50 How does counterfeit come in Jordan Transit Shipments Turkey China UAE Jordan

51 Customs Recordation The following are the requirements for the Customs Recordation: A. Power of Attorney B. Valid copies of the Trademarks registered in Jordan C. Brief description of the brand and its products and the differences between the genuine and counterfeit. D. List of Official Distributors of the brand in order to avoid shipments for them from being stopped. Jordan

52 Customs Cases Once the Customs Recordation is completed, the Jordanian Customs will approach whenever they come across a suspected shipment where it is required to have the confirmation of the brand owner. The customs cases in Jordan are heard in the Court that require follow-up, attendance in hearings, drafts of memorandums, till the destruction of the counterfeit goods. Jordan

53 Criminal Cases A suit has to be filed with the Criminal Court The court would stamp the complaint & register the case We would provide the authorities with the stamped complaint to mark official seizure of the goods Public Prosecutor (PP) obtain statements of both parties Expert Report will be submitted to court Submit identical genuine sample of the counterfeit products seized Court will appoint an expert to prepare a report on the nature of goods PP will transfer the case to Court Court will award a judgment Execution of judgment Jordan

54 INTELLECTUAL PROPERTY TRAINING Jordan

55 Jordan

56 Morocco Customs Cases Criminal Cases Commercial Cases Punishments Intellectual Property Trainings

57 Custom Cases Court will issue an order to open the container and count the involved goods bearing the trademark Our local team will escort the Inspectors of the Customs to the location where the goods have been seized The goods will be seized after the confirmation from the Right Holder. The case will be officially closed after the destruction is completed The report of the Bailiff will be submitted to the Court. Bailiff appointed by the Court will establish a report Morocco

58 Criminal Cases Filing of complaint with the Royal Gendarmerie (RG) Once accepted by RG, they would approach the Public Prosecution for approval of Raid Action Date for raid action will be set Charges will be proven and execution of the judgment will be conducted The report of the RG along with supporting evidences will be submitted to the Criminal Court Seized goods will be kept in safe custody of Customs authorities (as RG does not have their own facility) Morocco

59 Commercial Cases File a lawsuit with the Commercial Court Commercial Court will appoint a Bailiff to conduct the Raid Action Bailiff will complete his report of the seizure Awarding of Judgment Submit Introductory Petition to court File a case against target within 30 days from execution date of Tribunal order Morocco

60 Punishments Destruction of Counterfeit goods Fine to the Government Compensation to the Brand Owner Industrial property law (No ) issued in Morocco, which amends Law No of 2000 entered in force on 15 January 2015, this Law has strengthened the fines and penalties on counterfeiters. Hence, the Court imposes on the traders to pay a fine of not less than US$ 5,500 and up to US$ 50,000 or more as a compensation to the Right Holder. Morocco

61 INTELLECTUAL PROPERTY TRAINING Morocco

62 Morocco

63 THANK YOU! End