Worldwide: Intellectual Property Newsletter - April 2015

Last Updated: 16 April 2015
Article by Clyde & Co LLP

Middle East and North Africa region

Our market updates this month lead with the news that Dubai Customs may soon cease the practice of re-exporting counterfeit products seized by their inspectors. This will be very welcome news for many brand owners.

At Clyde & Co, our IP team is patting itself on the back having received the inaugural UAE IP Firm of the Year at the 2015 Managing IP Global Awards, which took place at MIP's 10th annual awards ceremony held in London on 11 March. Well done team!

Also in March, we were ranked as band one again by Chambers and Partners, with each of Rob Deans, Joycia Young and Jon Parker being ranked as leading lawyers. We are also delighted by some of our clients' comments which include that we:

  • are "willing to go the extra mile to ensure that matters are handled in the best possible manner";
  • "really have that mix of local experience and commercial understanding"; and
  • have a way of "distilling issues across multiple jurisdictions down to a few salient points which are easily understood and acted upon".

We certainly try very hard indeed to provide our clients with the advice required in a professional and personable way. The feedback that we receive through these surveys is genuinely appreciated – thank you!

In this month's issue, we also cover:

Protecting IP rights in sanctioned countries: Iran and Syria

This month we report on a very topical issue for many of our clients – can they register and enforce their intellectual property rights in Iran and Syria? Our sanctions specialists, Patrick Murphy and Douglas Maag, answer this question together with Harriet Balloch in our IP team.

Market updates and insight from around the region

For further information, please speak to your usual contact in the Clyde & Co IP team, or email us at

UAE Trade Mark Gazette

The latest edition of the UAE Trade Mark Gazette was published on 1 April 2015. This month's opposition deadline is 1 May 2015.

If you identify any marks that are of potential concern, or if you have any queries, then speak to your usual contact in the Clyde & Co IP team, or email us at

The timeframe for arranging the legalisation of a Power of Attorney (which will need to be filed at the same time as any opposition) is generally around three weeks. With this in mind, please contact us as soon as possible if you identify any marks which you may wish to oppose.

Market updates and insight

Protecting IP rights in sanctioned countries: Iran and Syria

By Harriet Balloch, Senior Associate, with input from our sanction specialists, Patrick Murphy, Legal Director and Douglas Maag, Senior Counsel

We are regularly asked to advise brand owners on the impact of sanctions on their ability to protect and enforce intellectual property (IP) rights in the Middle East region. This article summarises the position under the EU and US sanctions regulations in relation to IP rights in Iran and Syria.

In summary, the current position is that IP rights owners are not prohibited from protecting and enforcing their IP rights in Iran and Syria, under the existing EU and US sanctions.

However, difficulties remain and businesses should ensure that any company or individual with which they conduct business in Iran and Syria (including licensees, distributors, customers and professional advisors) are not listed on the designated persons registers maintained by the national governments in the EU and by the US government.

IP rights owners with a presence in the EU or the US, or with employees who are nationals from the EU or the US, will be required to comply with all applicable sanctions. It is therefore important that businesses with interests in sanctioned countries conduct regular assessments in order to avoid a breach of EU or US sanctions and the serious penalties that would then apply.

We set out below a more detailed review of the EU and US sanction regulations, together with some suggested action points for IP rights owners with interests in Iran and Syria:

  1. EU sanctions against Syria and Iran

The EU has implemented economic and trade sanctions against Iran and Syria, and specific entities and individuals in these countries.

The EU sanctions apply to any person in the EU, entities which are incorporated in the EU and nationals of EU countries, as well as to any business carried out within the EU.

The EU sanctions effectively restrict certain activities in relation to:

  • Iran under Regulation 267/2012 (as amended); and
  • Syria under Regulation 36/2012 (as amended), (collectively the EU Regulations)

There are two key restrictions under the EU Regulations:

1.1 " Identity Based " restrictions

These restrictions prohibit those persons subject to the EU Regulation from engaging in any economic activity with certain designated persons. The relevant factor is whom the person is trading with (as opposed to which activity is being undertaken).

Specifically, persons subject to the EU Regulations have to freeze funds and economic resources of designated persons, and so are restricted from dealing with them, whether directly or indirectly through a third party.

Accordingly, it is important to check the lists of designated persons (which are maintained and updated by the national governments in the EU) to ensure that business partners and customers do not appear on these lists.

1.2 " Activity Based " restrictions

The EU Regulations also prohibit certain defined activities from being carried out in Iran or Syria by persons subject to the EU Regulations.

The activities targeted in the EU Regulations are principally those connected with the oil and gas and shipping industries (specifically the export of certain key equipment and technology), insurance, as well as banking and finance.

Accordingly, for those persons who are subject to the EU Regulations, it is important to identify precisely what activity is being carried out in relation to Iran and Syria in order to ascertain whether the activity is prohibited. Unless an activity is expressly prohibited by the EU Regulations, it is permitted.

The protection and enforcement of IP rights is not one of the activities restricted in the Regulations.

1.3 Impact on IP rights owners

Accordingly, IP rights owners are not prohibited from protecting and enforcing their IP rights in Iran or Syria by the EU Regulations.

In any event, IP rights owners should ensure that they avoid any dealings which would breach the "identity based" restrictions by carrying out due diligence on current and future licensees, distributors and customers in Iran and Syria to ensure that they are not designated persons.

Breaching the EU regulations can result in penalties being imposed against companies and individuals, including imprisonment and/or fines.

2. US sanctions against Iran and Syria

The Office of Foreign Assets Control (OFAC) at the US Department of Treasury administers the sanction regime in the US.

The US has imposed financial and trade sanctions which generally prohibit US Persons from trading with sanctioned countries, including Iran and Syria. A list of specific individuals and companies which are considered specially designated nationals is maintained and published by OFAC.

The US sanctions apply to 'US Persons', which is widely defined to include any person in the US, entities incorporated in the US (and their foreign branches), US subsidiaries (under the Iran sanctions) or branches of foreign companies, US citizens and permanent residents of the US.

2.1 Scope of restrictions

US Persons are required to comply with the following regulations:

  • the Iranian Transactions and Sanctions Regulations (31 C.F.R. Part 560) and other relevant laws (the US Iranian Sanctions), subject to certain exceptions; and
  • the Syria Sanctions Regulations 31 C.F.R. Part 542 (2011), Executive Orders (13606, 13608, 13338, 13582) and other relevant laws (the US Syrian Sanctions)

(collectively the US Sanctions).

The US Sanctions generally prohibit US Persons from engaging in transactions concerning Iran and Syria. Failure to comply with the US Sanctions can result in severe penalties being imposed, including civil and criminal fines and/or imprisonment.

2.2 Exceptions for IP rights owners

IP rights owners can seek to rely on exceptions relating to the protection and enforcement of IP rights under the US Sanctions. Specifically, the following transactions in Iran and Syria are considered to be authorised:

  • the filing and prosecution of any application to obtain a patent, trade mark, copyright or other form of IP protection;
  • the receipt of a patent, trademark, copyright or other form of IP protection;
  • the renewal or maintenance of a patent, trademark, copyright or other form of IP protection;
  • the filing and prosecution of oppositions or infringement proceedings with respect to a patent, trademark, copyright or other form of IP rights, or actions taken to defend such proceedings; and
  • the payment of fees currently due to the Government of Iran and Syria; and
  • the payment of reasonable and customary fees and charges to attorneys in Iran and Syria.

These permitted transactions are subject to the prohibition on any dealing with or the transfer of any funds to specifically designated persons, as determined by the US Secretary of the Treasury. Accordingly, by way of example, no payments should be made to the accounts of any specifically designated persons regardless of whether the funds relate to the protection or enforcement of IP rights.

3. Action points for IP rights owners

With discussions regarding the lifting of sanctions in Iran ongoing, many businesses are looking to expand their operations into the country. This puts pressure on those managing these businesses' IP rights to ensure that suitable protection is in place.

The good news is that under the EU and US sanctions regimes, IP rights owners are permitted to take action to protect and enforce their IP rights in Iran and Syria, subject to ensuring that they are not dealing with any individuals or entities which have been 'blacklisted' as designated persons.

Although there are serious criminal consequences for companies and individuals found to be breaching the sanctions regulations, it is relatively straightforward for IP rights owners to ensure compliance by undertaking an audit of current and proposed partners and customers in Iran and Syria.

However, IP rights owners should also consider other potential impacts of the sanctions regimes on their businesses, including in relation to the restrictions on the export or import of specific equipment and products. It is also important for IP rights owners to monitor the sanctions regime to ensure ongoing compliance, given the volatility of the political situation in the region.


The latest edition of the UAE Trade Mark Gazette was published on 1 April 2015 and we have made a copy of this Gazette available online. This month's opposition deadline is 1 May 2015. Click here to access the Gazette.

Checking the Gazette

The link provided is the original Arabic language Gazette without an English language translation. This Gazette is in the form of an Adobe pdf file and it is possible to carry out key word searches in order to identify potentially conflicting trade mark applications.

Please note that due to the size of the Adobe pdf file, it may take several minutes for the Gazette to load. However, once loaded, it should be possible to review and search the Gazette without experiencing any delays.

Contacting us

If you have any marks that are of potential concern, or if you have any queries, then please email us at with:

  • the trade mark(s) of interest; and
  • the relevant page number(s) of the Gazette.

We can then check the Gazette and provide you with full details of the application so that you or your client can decide whether to file an opposition before the deadline and put in place a legalised Power of Attorney if necessary.

In order to have any chance of meeting the non-extendable opposition deadline where a legalised Power of Attorney is required, we will need your urgent feedback on marks of potential concern.

Should you require urgent assistance, we will need to conduct conflict checks to ensure we are free to assist.

Download here.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.