Resolving Intellectual Property Law Advisory Disputes Effectively
A dispute about who owns a trademark and a dispute about the adviser who let its renewal lapse belong in different forums and are proved with different evidence.
Two unrelated problems travel under the same label: a fight about the right itself, and a claim against the adviser who handled it. Separating them explains why registration and opposition run through the Ministry of Economy, why enforcement is chosen tactically between civil, administrative and criminal action, and why licence disputes are decided by the contract's forum clause instead.
Reviewed by Mohamed Noureldin, Founder, Managing Partner & Senior Legal Consultant
The phrase "IP advisory dispute" covers two entirely separate problems, and treating them as one is the reason many of them are handled badly. The first is a dispute about the right itself — who owns the trademark, whether the competitor's packaging infringes it, whether the registration should have been granted. The second is a dispute with the adviser about the advice: a renewal that was missed, a licence that was never recorded, a classification that left the client's core product unprotected. They go to different places, they are proved with different evidence, and they run on different timetables.
The rights themselves are federal
The starting point that surprises most clients incorporated in the Dubai International Financial Centre (DIFC) or the Abu Dhabi Global Market (ADGM) is that neither is a registry for intellectual property. Trademarks, patents and copyright in the UAE are governed by federal legislation and administered by the Ministry of Economy, and a registration obtained there covers the whole country including the free zones. A DIFC or ADGM company protects its brand with a federal registration like everyone else.
What the DIFC and ADGM do offer is a common-law contract environment and their own courts. That matters enormously for licences, assignments, development agreements and confidentiality obligations, and not at all for whether a mark is registrable or a patent valid. Keeping those two questions apart when drafting a dispute resolution clause avoids the common error of agreeing a forum that cannot grant the remedy the client will actually want.
Related: Our intellectual property advisory practice handles registration, enforcement and licensing across the UAE.
Registration disputes: opposition and grievance
Where the fight is over whether a mark should be registered, it begins at the Ministry of Economy. An application that is accepted is published, and a third party who believes it conflicts with an earlier right may oppose it within the period the Ministry specifies. A decision refusing an application, or accepting one over an opposition, is challenged through the grievance route provided against decisions of the trademark office, and from there to the federal courts.
These proceedings are documentary. They are won on evidence of prior use, prior registration, the goods and services actually covered, and the similarity of the marks as they appear in the register — not on commercial argument about market position. Clients who lose them have usually lost because nobody assembled dated evidence of use before the deadline, which is a records problem rather than a legal one.
Enforcement runs on three parallel channels
Against an infringer already in the market, the UAE offers three routes and they are not alternatives so much as complements.
- Civil proceedings in the local courts for an injunction, destruction of infringing goods and damages. This is where a claim for financial loss belongs, and it is the slowest of the three.
- Administrative action through the economic department of the emirate concerned, which can inspect premises, seize counterfeit stock and impose penalties. For straightforward counterfeiting this is often the fastest way to take goods off a shelf.
- Criminal complaint to the police and public prosecution, which is available for counterfeiting and can be a serious deterrent, particularly against repeat traders.
Recording a registered mark with the customs authority of the relevant emirate adds a fourth layer at the border, allowing suspect consignments to be held before they reach a warehouse. Recordal is administrative and inexpensive relative to litigation, and it is routinely overlooked.
The choice between channels is tactical. A criminal complaint applies pressure but takes the pace of the matter out of the rights holder's hands. An administrative seizure produces a quick result but not compensation. A civil claim produces a judgment but takes time. Rights holders with recurring infringement problems generally use the administrative route as the default and reserve civil claims for defendants worth suing.
Licence and assignment disputes are contract disputes
Once a right has been licensed, most disputes stop being about intellectual property and become ordinary contract disputes: scope of the licence, whether it was exclusive, territory, royalty calculation, ownership of improvements, and what survives termination. Here the forum clause governs, and the realistic options are the local courts, the DIFC or ADGM courts, or arbitration.
On arbitration, the position changed with Dubai Decree No. 34 of 2021, which abolished the DIFC-LCIA and moved its caseload to the Dubai International Arbitration Centre. The DIFC remains available as a seat, and clauses drafted before that change should be reviewed rather than assumed to still work as written. In Abu Dhabi, ADCCAC was restructured as arbitrateAD from 2024. Arbitration is governed by Federal Law No. 6 of 2018 as amended in 2023.
Two limits are worth stating plainly. Arbitration is well suited to royalty, exclusivity and termination disputes between contracting parties. It cannot bind an infringer who never signed the contract, and it cannot cancel or amend an entry in the federal register. Where both problems exist in one matter, the clause should not force everything into a single forum.
When the dispute is with the adviser
A claim against an IP adviser is a professional liability claim, and it is decided by comparing what the engagement said the adviser would do with what was done. The recurring subjects are narrow and predictable: renewal deadlines, the classes and specifications applied for, whether searches were run before adoption of a brand, whether a licence or assignment was recorded so that it binds third parties, and whether the client was told about the deadline it then missed.
Most of these become disputes because the scope of the engagement was never written down. If the file does not say who is responsible for docketing renewals, both sides will later say the other was. An engagement letter that names the marks, the jurisdictions, who monitors deadlines, what is excluded, and how the parties will escalate a disagreement will prevent more claims than any liability cap.
Related: We also advise on IP portfolio management and licensing for businesses across the Emirates.
Disclaimer: The information provided in this article is for general informational purposes only and does not constitute legal advice. Readers should seek professional legal advice tailored to their specific circumstances before making any decisions or taking any action based on the content of this article.
Nour Attorneys Team
