Intellectual property in United Arab Emirates
Al Tamimi & Company's wide-ranging IP practice covers patents, trade marks, industrial designs and domain names, with extensive experience in contentious and non-contentious work. The team has also established a strong practice in anti-counterfeiting measures in the fashion and luxury sectors, where its clients include household name brands. Head of IP Omar Obeidat has additional expertise in competition, compliance and consumer protection; Ahmad Saleh is the regional head of patents and designs and has vast experience in patent prosecution and protection. The team also counts a number of experienced associates, including Ahmad Zaza and Rasha Al Ardah.
Omar Obeidat; Ahmad Saleh
Merck & Co
- Successfully acted for Lamberti Spa in a trade name and domain name dispute.
- Represented Toshiba Corporation in an administrative complaint against counterfeit laptop batteries and stickers.
- Acted for FIFA for the 2018 FIFA World Cup; the work involved the protection of FIFA’s IP rights and ticketing issues in the UAE, Egypt and Saudi Arabia.
Clyde & Co LLP
The three-partner team at Clyde & Co LLP advises across the entire IP life cycle, covering registration-related, commercial and contentious IP matters. The busy department is also able to cooperate with colleagues across the firm's GCC offices. Joycia Young is an 'excellent partner' in IP, with an emphasis on the commercial aspects of IP, including brand development and protection. Practice head Rob Deans and trade mark specialist Mark Devaney are also noted, as is senior associate Nicole Giblin.
‘For the region, Joycia Young and her team lead a very strong IP practice by endeavouring to understand the business and its objectives and making suitable recommendations.‘
‘Joycia Young is an excellent partner and her team as well – Nicole Giblin.‘
- Advising Etihad Airways internationally on its brand and trade marks.
Full-service IP firm Rouse acts for international and regional brands on contentious and non-contentious trade mark and patent matters. The team has also grown its marketing, advertising and digital practice. Starbucks is among the firm's key clients; the team handles the company's MENA trade mark portfolio, and, recently, represented it in a complex multi-jurisdictional trade mark dispute. Sara Holder, who has experience working in numerous jurisdictions in Asia and the Middle East, is co-head of the firm's global patent and technology practice. Bassel El Turk was appointed as country manager for the UAE and Saudi Arabia in 2018, and Samantha Grainger, who made partner in 2018, heads the trade mark practice in the MENA region.
Bassel El Turk; Sara Holder; Samantha Grainger
‘Rouse has been a leader in the area for a prolonged period.‘
‘The team is client-oriented and accommodates to our strategy.‘
‘Sara Holder is a bright lawyer.‘
United Arab Emirates University
Emirates Shipping Line
- Handlinh the management of Starbuck’s MENA trade mark portfolio.
- Handling advisory and clearance work for Visa International for major advertising and promotional campaigns in the MENA region.
- Advising Honeywell on trade mark clearance, filing, opposition, cancellation, infringement and anti-counterfeiting matters.
The busy IP department at Bird & Bird acts for leading brands in the education, fashion, consumer goods and entertainment sectors, among others. It is equipped to advise on myriad IP issues, from brand management and trade mark protection to patent and trade secrets protections. Practice head Melissa Murray is highlighted for her 'very good understanding of the laws and commercial practicalities of the Middle East'.
‘The team has a good understanding of not just the law but also the commercial practicalities in the Middle East which are often just as (if not more) important than the black letter law.‘
‘Melissa Murray has a very good understanding of the laws in the Middle East and the commercial practicalities of the Middle East. She very promptly responds to queries and is readily available.‘
- Assisted a client on a comprehensive global rebranding exercise.
DLA Piper Middle East LLP has an impressive TMT and IP practice in the UAE. The firm has an extensive presence in the region through its multiple offices, and is well versed in multi-jurisdictional matters. Its expertise covers trade mark registration and enforcement, copyright infringement, franchising and licensing, and it has recently advised a number of companies on IP portfolio management. Paul Allen heads the IPT practice in the Middle East; Jamie Ryder is another key contact.
‘Understands my business and provides on-point advice.’
FGE International B.V.
Emirates Integrated Telecommunications Company PJSC (“du”).
The Football Association Premier League Limited
Expo 2020 Dubai
Gowling WLG balances a busy IP workload, with a particular emphasis on trade marks. In recent work, it assisted CrossFit with trade mark protection, including handling a successful administrative enforcement action in Bahrain against a third party infringing the CrossFit trade mark. On the transactional side, the team also advises on IP due diligence and the IP aspects of M&A. Trade mark specialist Jon Parker is 'incredibly experienced and knowledgeable in his field'.
‘The team has a breadth of knowledge and offers practical advice. It is on the ground in the UAE which means it has solutions that some other remote firms cannot and do not offer.‘
‘Responsive, understands client’s needs, practical and cost effective.‘
‘Jon Parker puts himself in the client’s shoes and tells them what they need to know.‘
‘Jon Parker is incredibly experienced and knowledgeable in his field.‘
D2M Solution FZE
21st Century Leaders
- Advising a hospitality company on the creation and development of standalone brands for hospitality businesses.
- Assisting a new client since the start of 2019 with the identification of key trade marks and other IP assets within its group of companies.
- Ongoing regional brand protection for the CrossFit trade mark.
Hadef & Partners LLC stands out in trade mark and brand protection and is noted for its 'very responsive, professional and personalised approach'. James Dunne is the name to note in this space; he is 'intelligent, efficient, commercially savvy and provides exceptional service'. Victoria Woods heads the commercial practice and advises on distribution, franchise, agency, outsourcing and licensing agreements. The team is also a popular choice for IP enforcement, where it has IP litigators with rights of audience before the UAE courts.
James Dunne; Victoria Woods
‘The Hadef team are experienced in trade mark law and practice across the whole Middle East region, and so, are able to provide an efficient and comprehensive service. The quality of the work is very high.‘
‘I have had nothing but friendly, prompt and thorough service from this team.‘
‘A very responsive, professional and personalised approach to trade mark registration and associated strategic matters.‘
‘Led by the highly responsive James Dunne, Hadef & Partners LLC are well placed to assist with intellectual property requirements in the UAE.‘
‘James Dunne has co-ordinated trade mark protection in the region for many key clients and I have complete peace of mind that the work is handled at a superior service level. James keeps me informed at every step of the way—the clarity of communication is a particular strength.‘
‘James Dunne understands the importance of having a client service focus. I have been happy to recommend James to many of my colleagues around the world.‘
‘James Dunne is very well regarded in the intellectual property space. James is intelligent, efficient, commercially savvy and provides exceptional service. I would highly recommend James to anyone needing advice in the IP field.‘
‘In James Dunne, Hadef has not only found an experienced specialist but also someone who appears to be very passionate about his practice area.‘
‘I have dealt with James Dunne extensively, and find him and his team very efficient and responsive.‘
‘James Dunne leads a highly knowledgeable and efficient team.‘
BSA Ahmad Bin Hezeem & Associates LLP has a broad IP offering and is particularly strong in the media and entertainment sectors. In recent work, the firm was appointed to represent a news and media company in contesting several copyright infringement claims filed in Saudi Arabia and the UAE. Munir Suboh heads the IP department. Amala Atieh was promoted to senior associate in 2019.
‘BSA has been one of our preferred choices for handling our legal and IP issues inside and outside UAE for more than 10 years. Their creativity and ability to analyse complex problems as well as their profile as talented strategists helped us to define thoroughly our business plans.‘
‘They have the ability to explain complex information clearly and concisely. With their meticulous attention to details, they complete always their assignment thoroughly and successfully.‘
‘Munir Suboh is committed to his clients and getting transactions done. He is able to navigate and manage the process effectively, all with a dedication to his client.‘
Anderson Tax Legal LLC
Royal & Son Alliance Insurance
World Wrestling Entertainment
Al Arabiya News Channel FZ LLC (AL Arabiya Channel)
Ammune Therapeutics Inc
Collingham LLC (The Cobbler)
- Advised a media company in the MENA region on copyrights related to broadcasting rights and sport content.
- Represented a client in claims pertaining to infringement, misuse, attack and dilution of its brand.
- Advised on trade mark prosecution services and domain name protection.
Under the leadership of TMT specialist Nasser Ali Khasawneh, Eversheds Sutherland LLP handles contentious and non-contentious IP matters. Senior associates Andrew Garbett in Abu Dhabi and Christine Khoury in Dubai are key contacts.
World Intellectual Property Organisation (WIPO)
- Nasser Ali Khasawneh is an active WIPO domain name panellist and has acted as arbitrator on many WIPO domain name disputes with a UAE or GCC element.
The TMT department at Simmons & Simmons Middle East, led by Raza Rizvi, advises on a range of IP, technology, commercial and regulatory matters. In recent work, Rizvi and a cross-office team of lawyers in the UK and UAE advised biopharmaceutical company Celgene on its IP strategy for market protection of major pharmaceutical products with US and European patent protection and certain limited protections in the UAE and the Middle East.
Emirates Digital Wallet
- Advising GlaxoSmithKline on a number of notable IP transactions relating to a major vaccines project and a major consumer oral healthcare project.
- Advising Rockwell on all IP aspects of its market entry into the Middle East.
- Assisting Celgene with its IP strategy for market protection of its major pharmaceutical products in the region.
Boutique firm The Bench Law is 'responsive, knowledgeable and service orientated'. It focuses on the hospitality and TMT sectors and, within its work, advises on a broad range of IP matters relevant to its clients' operations. The team enhanced its IP offering with the hire of consultant Peter Hansen, who has 20 years of experience in this field; Hansen splits his time between the UAE and Australia. Joby Beretta is also noted.
Joby Beretta; Peter Hansen
‘The Bench is focused on providing specific and tailored support.‘
‘Responsive, knowledgeable, service-orientated and provide value for money.‘
‘Expert and flexible across many fields.‘
‘Joby Beretta is always willing to assist and you feel you are getting the service and quality of one of the blue chip legal outfits for a price a small company can afford.‘
‘Joby Beretta was available and responsive when matters arose or his input was required.‘
Virgin Mobile Middle East & North Africa
International Hotels Group (IHG)
Dubai Multi Commodities Centre (DMCC)
- Advising LifeOnScreen on global IP protection strategy and IP licensing.
- Advising MSS Kits on its global IP portfolio management.
- Advising Bench Events on various commercial contracts including intra-group IP licences and joint ventures for the IP in various events.