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.
Industries represented in events held at DWTC venues over the last year have included: healthcare and pharmaceuticals, biotechnology, oil and gas, construction and infrastructure development, interior design, fashion, consumer electronics, travel and tourism, education, banking and finance, food and beverages . |
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.
We have even encountered situations where an entire exhibition stall was kitted out in the livery of a well known company, complete with signage showing the well-known company's logo, and with copies of certificates of (dubious) corresponding trade mark registrations from the trader's own jurisdiction prominently displayed to lend legitimacy. |
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.