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LexTalk World Talk Show with Yasir Masood, Trademark Lawyer at Dennemeyer Group, UAE

LexTalk World Interviews Mr. Yasir Masood. Yasir is a Trademark Lawyer who has been active in the field of IP since 2016. After completing his law studies in Germany in 2013 and gaining initial experience in law firms in Germany and England, Yasir joined Dennemeyer’s Dubai office in 2016. He is part of the trademark and legal departments.


Host: How would you rate the current legal system's drive towards encouraging access to justice? Is there tangible movement in closing the justice gap?

Yasir: The UAE have started to hold some court proceedings in English. Per se, this is welcomed as most of population are non-Arabs. Understanding the proceedings directly indeed increases the access to justice.

Moreover, court fees are comparatively reasonable in the country.

As a trademark lawyer, I can particularly refer to the recent changes in the UAE Trademark Law:

  • The grievance committee to appeal trademark office decisions has been changed and now consists of a judge and two intellectual property (IP) experts, thus increasing the competency and trust in the committee. Moreover, decisions of the committee can now directly be appealed to the court of appeals and no longer the court of first instance, removing one instance and thereby making the process faster and less costly.

  • Moreover, preliminary measures have been added in the new Trademark Law and can be obtained even ex parte in urgent matters.

Host: In the era of legal technology, what are the most commonly used tools for you?

Yasir: At Dennemeyer we mainly use our own tools. On the one hand, there is our IP management software DIAMS iQ. This software does not just manage our files and deadlines but is also used to see the workflow between our offices.

We also give clients and select agents external access to the system, leading to an easier process and saving emails. It is estimated that about 75% of all emails will be saved soon. Thus, some clients have even given up their internal system and only use the data hosted by us.

This is an interesting development in the field of IP as it replaces the current triple docketing (agent -> Dennemeyer -> client). While the former two have to keep the data stored for legal reasons, this is not necessary for clients.

On the other hand we also have our own patent search and monitoring tool Octimine, which uses artificial intelligence (AI) and machine learning. Octimine is beneficial for experts and non-experts. For experts, it provides a second opinion and finds what people do not find. It is faster and more accurate.

It is therefore already used by a highly reputed patent office in Europe.

For non-experts such as start-ups and people in R&D, patent searches even become possible with Octimine. One can enter text without knowing the specific patent terminology and jargon and conduct one’s own searches, thus getting an idea of whether the invention is indeed new. Octimine is an example of AI making life easier for tomorrow.

Host: Time is money in any profession and in legal it's most of all. How do you ensure to make the best of your time as a lawyer?

Yasir: We focus on slimming down paper work – relating back to DIAMS iQ which helps a lot with that. This tool also provides automated reports for clients. Relying on templates and FAQs saves additional time.

Another point is being responsive to satisfy clients’ needs: good, efficient communication and anticipating client’s questions saves time – and frustration - for both sides by avoiding unnecessary emails etc. We also concentrate on reducing the time spent on invoicing by offering monthly invoicing and flat fee concepts.

Host: As a firm specialized in Intellectual Property (IP), what is your advice for clients that seek to protect their IP in the UAE?

Yasir: Before entering the market, it is advisable to direct an IP expert to conduct an official search of the local trademark office database. Virtually all recently filed and registered trademarks can be detected allowing the expert to advise on the level of risk that any of these marks may pose to the registration and use of the intended trademark. If identical or similar marks are found, further intelligence needs to be gathered to define all defence options. For instance, if the owner of a conflicting mark is holding the trademark illegitimately, this needs to be actively contested. On the other hand, in some cases, coexistence agreements can be negotiated, or a variation of the proposed mark can be enough to overcome the obstacle.

The technical features of your product can be checked through a patent search, which is usually available in a few weeks’ time including a patent expert’s advice. The depth of these searches vary from standard to highly complex, with consequent differences in fees. This investigation shows if and how the product may need to be adapted (employing a so-called “workaround”), or whether a negotiation with the prior patent owner is advisable.

Physical market surveys are possible but commonly not carried out in the UAE if no potential infringement is already expected. In the case of anticipated conflicts, further investigations are advisable on the duration and extent of any such adverse use. Additionally, the possible registration of related IP rights (IPRs), trade names and domain names should be cleared as well as the names of the owners. By cross-checking any possible international exposure of the opposing company/products, the overall dimension of the conflict can be assessed and a strategy conceived from both legal and commercial points of view.

As soon as the decision to begin commercial activities in the UAE is made, it is imperative to register one’s IPRs without delay. This goes particularly for trademarks, as mere use does not provide a solid basis for trademark protection in the UAE. The country follows the first-to-file principle, meaning the one who first files the trademark application is presumed to be the rightful owner. On the other hand, the UAE does not demand proof of use of the mark as a registration requirement and it only has to be used within five years after registration.

Marks can be filed in Latin or Arabic scripts but it is advisable to register a combination of both. There are usually several possible transliterations for a given mark and to prevent third parties from obtaining the registration of a slightly different permutation of one’s mark, it is prudent to have the dual version registered in one’s name.

As for patents, the UAE recently announced the introduction of a grace period for applications published before filing. It will, however, be limited to the UAE, so applicants are well-advised to continue securing their inventions via the national or Patent Cooperation Treaty (PCT) routes before going public. Gulf Cooperation Council (GCC) patent applications remain suspended and are not expected to become available again.

A common feature of foreign businesses operating in the UAE market is furthermore the relationship with local partners. Rather than opening their own establishment or branch, companies often opt to collaborate with agents in the country. Importantly, this arrangement carries with it specific issues in regards to IPRs.

The most pressing task in such a partnership is to register your IPRs in your own name. Leaving this to the local agent/importer/distributor jeopardizes your business should the relationship break off. Although, recovering your IP assets is generally possible in the end, it may entail an expensive, years-long court action.

Host: And once the IP is registered in the UAE, what should clients keep in mind in regards to the enforcement of their IP rights ?

Yasir: Once a trademark is registered, one needs to make sure to actually use it as continued non-use for more than five years makes the mark vulnerable to cancellation actions brought by third parties. Accordingly, the use of your trademark should be well documented by storing dated copies of all commercial communications, including imports, sales, advertising, and media campaigns. This will generate watertight legal proof in case of any disputes about the ownership and validity of your trademarks.

Moreover, the use of IPRs through third parties (agents, importers, distributors) needs to be done via a written contract, unambiguously setting out their ownership. The local distributor may be given a license to use the IPRs for an agreed period of time in the UAE. The use and all goodwill must be attributed back to the owner.

It should additionally be ensured that commercial agency, distribution or license agreements are being registered with the authorities to make them immediately enforceable. This registration will also legally help to act against any unwanted parallel or grey imports as it will establish proof of exclusivity. According to the new UAE Trademark Law it is not mandatory to record licenses, but written contracts are still necessary.

Similarly, care should be taken that non-disclosure agreements (NDAs) are in place with (prospective) business partners to safeguard confidential information concerning IPRs. This is of particular importance in relation to patents as the premature disclosure can result in failure to meet the novelty requirement for obtaining a patent All changes in IPR ownership – such as a change in the address or name of the owner and the assignment of IPRs – should be recorded with the IP Office without delay for clarity and so as not to interrupt the possibility of immediate enforcement actions.

In addition, it is strongly recommended to instruct a trademark watch service to monitor new filings in the country so that one can oppose infringing trademark applications in good time.

Last but not least, an effective anti-counterfeiting strategy is essential.

In five of the seven Emirates, brand owners can record their registered trademarks with the customs authorities to screen incoming shipments for products that infringe their trademark rights. For example, in the Emirate of Dubai, trademarks can also be recorded with the Department of Economic Development who will then monitor the Dubai market for any items in violation. If one does encounter infringements, it is of great importance to react swiftly – on the one hand to avoid further damages, and on the other hand because prolonged inaction might be considered acquiescence, which could hinder the enforcement of one’s rights later on.


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