Friday, 10 June 2016

Fajer Ahmed's Law Column

National Assembly of Kuwait
Author: xiquinhosilva
Source Wikipedia
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Serendipity means a "fortunate happenstance" or "pleasant surprise". The word was coined by Horace Walpole who explained an unexpected discovery he had made by reference to a Persian fairy tale, The Three Princes of Serendip in which the princes were “always making discoveries, by accidents and sagacity, of things which they were not in quest of”.  A practical example of serendipity occurred this morning when I was referred to an article in the Kuwait Times about a ballet teacher in Kuwait by the Royal Academy of Dance (see Jane Lambert Dance in the Gulf 10 June 2016 Terpsichore).

I discovered that the Kuwait Times has a legal column in English called Legalese. The columnist is called "Attorney Fajer Ahmed".  His columns seems to cover everything from What happens if you’re fired by telephone? which was published on 5 June 2016 to Understanding Kuwait's Laws on 15 Nov 2015. Articles that my readers might find particularly interesting include The Law and Franchises in Kuwait (28 Feb 2016), How to start a Business in Kuwait 31 Jan 2016) and Protecting your Intellectual Property (17 Jan 2016).

Fajer also contributes to a an online publication called 248AM which also has a legal column. Interesting articles on that site include Kuwait Law: How a Law becomes a Law 2 Nov 2015 and Kuwait Law: SMEs and Small Businesses in Kuwait 25 Nov 2013. 

I also learned from 248AM that Kuwait is building a cultural centre that will include a stage for opera, ballet and other performing arts (see Sneak Peak: Kuwait Cultural Centre 5 May 2014 and A Photographic Journey inside Qasr Al Salam 9 Apr 2014). Since copyright protects librettos, musical scores, choreographic notation, stage backdrops and sometimes costumes and props and as actors, dancers, singers and musicians have the right to object to filming, taping or broadcasting of their performances it is perhaps time to revisit Kuwait copyright and related rights which I last discussed in Intellectual Property Law in Kuwait on 14 July 2011.

Thursday, 24 March 2016

When an Abu Dhabi Royal sues in England: Sheikh Tahnoon Bin Saeed Bin Shakhboot Al Nehayan v Kent

Royal Courts of Justice
Author Anthony M
Source Wikipedia
Creative Commons Licence























In the United Kingdom, as in many other countries, the unsuccessful party in civil litigation usually has to contribute substantially to the solicitors and counsel's fees of the successful party. The amount that the unsuccessful party has to pay is known as "costs" in England, Wales and Northern Ireland and "expenses" in Scotland. If there is serious doubt as to whether a claimant could or would pay such costs or expenses the courts if those jurisdictions have power to require him or her to give security (or in Scotland caution) for the costs. That typically takes the form of a deposit of money into an interest bearing account managed by the court but it could be a bank guarantee, insurance bond, escrow fund or other arrangement.

In England and Wales the power to order security for costs is governed by Section II of Part 25 of the Civil Procedure Rules. CPR 25.13 enables the court to make an order for security for costs if:
"(a) it is satisfied, having regard to all the circumstances of the case, that it is just to make such an order; and
(b) (i) one or more of the conditions in paragraph (2) applies, or
(ii) an enactment permits the court to require security for costs."
This is a very powerful weapon for defendants as it can stop a claim in its tracks.  The usual reason for an order is that:
"the claimant is a company or other body (whether incorporated inside or outside Great Britain) and there is reason to believe that it will be unable to pay the defendant’s costs if ordered to do so."
However, there are other grounds one of which is that the claimant is:
"(i) resident out of the jurisdiction; but
(ii) not resident in a Brussels Contracting State, a State bound by the Lugano Convention, a State bound by the 2005 Hague Convention or a Regulation State, as defined in section 1(3) of the Civil Jurisdiction and Judgments Act 1982."
It was on that ground that Mrs Justice Nicola Davies expressed willingness in  Sheikh Tahnoon Bin Saeed Bin Shakhboot Al Nehayan v Kent [2016] EWHC 623 (QB) (21 March 2016) to make a security for costs order (albeit limited in scope) against the sixth in line to the throne of Abu Dhabi who is a very wealthy man.

In this action the claimant claimed £2 million under an agreement with the defendant to invest in an hotel business. His claim form was issued on 8 July 2013 and a request was made for interim security on 10 Jan 2014. That was not provided to the defendant's satisfaction so he applied on 28 July 2015 for security in the sum of £1 million payable as follows:
"i) £400,000 within 35 days of the date of the court's order;
ii) £250,000 by no later than 35 days after the hearing of the restored CMC;
iii) £350,000 by no later than 2 days before the date fixed for the trial in the action."
The defendant's application notice provided for the claim to be struck out and judgment to be given to the defendant if such security was not given.

The defendant submitted that:
  1. He would face serious and substantial difficulties in seeking to enforce any costs award in his favour against the claimant having regard to the claimant's status as a senior member of the ruling family of Abu Dhabi and for position generally with respect to the enforceability in the UAE of judgments of the court of England and Wales.
  2. If the court were to ignore the standing of the claimant and concerns about the judicial system in the UAE, expert evidence before the court demonstrated that a costs order from the courts in England and Wales would not be enforced by the courts in the UAE.
In support of his first submission, the defendant relied on a report on the UAE by the United Nations Special Rapporteur on the Independence of Judges and Lawyers. The rapporteur found that:
"The justice system in the UAE has developed into an elaborate and complex court system in a relatively short time frame. Despite commendable progress and achievements the Special Rapporteur is concerned that the challenges and shortcomings she has identified are serious and negatively affect the delivery of justice, the enjoyment of human rights and the public's confidence in the judiciary. …"
 She found at para [28] of her report that:
"The federal system of the United Arab Emirates is complex and can be difficult to understand, in particular for non nationals, who constitute the majority of the population. During a visit, the Special Rapporteur was told that because of the complex superposition of federal and local laws, it is sometimes difficult for the public to know where the boundaries lie between the federal and local justice systems. There also appears to be a lack of consistency between the applications of federal laws between the Emirates. The Special Rapporteur is concerned about reports that it is difficult for people to know which legal provisions are applicable to them depending on where they are in the Federation, and that laws are sometimes applied in an arbitrary manner, that creates ambiguity and mistrust with both law enforcement authorities and the justice system."
There were also concerns about the independence of the judiciary, the absence of a formal distinction between the judiciary and the executive and particularly that the attorney-general was one of the 7 members of the federal supreme court and 3 others represented the executive.

In support of his second submission, the defendant relied on the evidence of a senior UAE lawyer  that it would be extremely difficulty and expensive to enforce a costs order against the claimant in the UAE.

At para [29] of her judgment, Mrs Justice Nicola Davies found no objectively justified grounds upon which to conclude that this defendant was unlikely to successfully obtain enforcement of a costs judgment against the claimant in the civil or commercial courts of the UAE but she did accept at [30] that the defendant would be likely to have to embark upon a legal process which could be lengthy and thus costly in order to attempt to obtain enforcement of a costs order. She formed the view that those difficulties would be better protected by a security for costs order tailored to the additional costs that the defendant would incur in enforcing a costs order. She made it clear that such an order would be limited in its amount and would not preclude this claimant from pursuing his claim.

As the defendant's application did not include such a claim and as no quantification had been provided, Her Ladyship left it to the parties to state in writing whether they could agree terms and to return for a second hearing if they could not.

An order of the kind proposed by the judge is unusual and would not have been made if the claimant had substantial assets in the United Kingdom. In expressing willingness to make it, she impliedly accepted at least some of the criticisms that had been made of the UAE and Abu Dhabi legal systems by the defendant. No doubt that is one of the reasons why the authorities in Dubai and Abu Dhabi have established special common law jurisdictions in their financial districts (see Jane Lambert Abu Dhabi Global Market - Yet Another Common Law Enclave in the Gulf 22 Feb 2016).

Should anyone wish to discuss this case or any of the issues raised in it he or she should call me on +44 (0)207 404 5252 during office hours or send me a message through my contact form. I should like to thank Mr Abdul Hafeezi of Freeman Harris for bringing this case to my attention.

    Monday, 22 February 2016

    Abu Dhabi Global Market - Yet Another Common Law Enclave in the Gulf




    The Abu Dhabi Global Market ("the ADGM") describes itself as "a broad-based international financial centre for local, regional and international institutions, established in accordance with the Federal Law No (8) of 2004, Federal Decree No (15) of 2013, Cabinet Resolution No (4) of 2013, and Abu Dhabi Law No (4) of 2013." It is located on Al Maryah Island which is a 114 hectare island to the North East of the capital. Like the Dubai International Financial Centre and the Qatar Financial Centre, the ADGM will have its own legal system based on English common law.

    S.1 (1) of the Application of English Law Regulations 2015 provides:
    "The common law of England (including the principles and rules of equity), as it stands from time to time, shall apply and have legal force in, and form part of the law of, the Abu Dhabi Global Market—
    (a) so far as it is applicable to the circumstances of the Abu Dhabi Global Market;
    (b) subject to such modifications as those circumstances require;
    (c) subject to any amendment thereof (whenever made) pursuant to any Abu Dhabi Global Market enactment; and
    (d) notwithstanding any amendment thereof as part of the law of England made pursuant to an Act or any legislative instrument adopted thereunder at any time after the date of enactment of these Regulations, which amendment shall not apply and have legal force in, or form part of the law of, the Abu Dhabi Global Market, unless and until an Abu Dhabi Global Market enactment expressly provides that it applies and has legal force in, and forms part of the law of, the Abu Dhabi Global Market."
    Accordingly, it would appear that the English law of confidence and the action for passing off are imported directly into the law of the ADGM.

    S.2 (1) of the same Regulations imports a number of UK statutes into ADGM law with certain modifications. The governing body of the ADGM have made their own laws on companies, data protection, employment, insolvency and partnerships which are based on English law. All the ADGM's laws will be in English.

    The ADGM Courts will be governed by the ADGM Courts, Civil Evidence, Judgments, Enforcement and Judicial Appointments Regulations 2015. S. 1 (2) of those Regulations establishes a Court of Appeal and a Court of First Instance. S.12 (1) provides for the Court of Appeal to be a superior court of record and the court of final instance in the ADGM and s.16 (1) for the Court of First Instance to be a superior court of record.  The Court of Appeal shall consist of the Chief Justice of the ADGM and any other judge directed to sit in that court by the Chief Justice (see s.26 (1)). The Court of First Instance shall consist of the Chief Justice and any other judge directed to sit in that court by the Chief Justice.

    The Chief Justice has power under s.187 (1) and s.191 (1) of the Regulations to make rules and practice directions to be known as the “ADGM Court Procedure Rules” (see s.186 (1)). These rules shall govern and provide for all the practice and procedure to be followed in the Court of Appeal, the Court of First Instance and any other court as may, from time to time, exist.

    The Courts are likely to open in the next few months.  The judiciary has now been appointed. Lord Hope of Craighead will be the first Chief Justice and Lord Saville, the Hon. Kenneth Hayne AC, the Rt. Hon. Sir Peter Blanchard KNZM and William Stone QC will also sit on the bench. Lord Hope must now compile draft ADGM Court Procedure Rules and Practice Directions for consultation.  When the courts open, any lawyer who has practised or been employed as a lawyer for a continuous period of 5 years or more anywhere in the world may appear before the ADGM courts by virtue of s.219 (1) (a) of the ADGM Courts etc Regulations 2015.

    Should anyone wish to discuss this article of the ABGM courts generally he or she should not hesitate to call me during office hours on +44 (0)20 7404 5252 or get in touch through my contact form.

    Monday, 26 October 2015

    Arab Center for Dispute Resolution: New Kid on the UDRP Block














    Every agreement to register a generic top level domain name, that is to say one ending with the suffix ".com", ".org" or ".info", contains a clause requiring the applicant to agree to submit any dispute with a trade mark owner over the domain name to a form of alternative dispute resolution known as "a mandatory administrative proceeding".  This is a form of adjudication by a one or three member tribunal appointed by an approved administrative-dispute-resolution service provider. Those service providers are appointed by the Internet Corporation for Assigned Names and Numbers ("ICANN"), a California company which manages the international domain name system ("DNS") in accordance with a memorandum of understanding with the US Department of Commerce dated 25 Nov 1998.

    ICANN has appointed five administrative-dispute-resolution service providers, the latest being the Arab Center for Domain Name Dispute Resolution ("ACDR") which was approved on the 18 May 2013. The others are the Asian Domain Name Dispute Resolution Centre, the Czech Arbitration Court of Arbitration Arbitration Center for Internet Disputes, the National Arbitration Forum and the World Intellectual Property Organization ("WIPO").   ICANN has published the process by which it considers applications for approval as an administrative-dispute-resolution service provider on its website in Information Concerning Approval Process for Dispute-Resolution Service Providers.

    The function of an administrative-dispute-resolution service provider is to receive complaints by those who object to the registration of a domain name and allocate them to neutrals known as "administrative panels" to determine whether the complaint is well founded.  If the panel finds that the complaint is well founded he or she can order the company that registered the domain name ("the registrar") to cancel the registration or transfer it to the complainant. The registrar is required by its contract with ICANN to wait 10 business days to see whether the transfer is challenged in the courts in which the registrar or the domain name holder is domiciled.  If it is not challenged the registrar is contractually bound to carry out the panel's order.

    The memorandum of understanding sets out a number of principles by which the DNS was to be managed one of which was competition.  Art II C.2 provides:
    "This Agreement promotes the management of the DNS in a manner that will permit market mechanisms to support competition and consumer choice in the technical management of the DNS. This competition will lower costs, promote innovation, and enhance user choice and satisfaction."
    That include competition between registrars for applications for the registration of domain names and competition between administrative-dispute-resolution service providers in the resolution of domain name disputes.  As all administrative-dispute-resolution service providers have to decide domain name disputes in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy and its Rules for Uniform Domain Name Dispute Resolution Policy, the only scope for competition lies in fees and service.

    As the fees charged by the ACDR are comparable with WIPO's and those of other service providers the ACDR must compete on service.  The choice of service provider lies with the complainant who will consider such factors as language, convenience and confidence in the panel.  The ACDR is located in Amman and its offices are described in its application to ICANN for approval as a service provider describes them as "spacious" and "state of the art".  Its staff are said to be "educated in English or French, or both, next to Arabic". Its panel of neutrals are drawn from across the world as well as the Middle East and includes several members of other service providers' panels.

    Those factors would might be expected to appeal to complainants in Jordan and other Middle East North African countries but perhaps not so much to those outside the region unless they have trade marks in Arabic. According to the WIPO over 88% of all its disputes since 1999 have been conducted in English followed by Spanish and French accounting for 4.1% and 2.5% respectively. No cases have been conducted in Arabic though there have been 83 cases in Turkish and one in Hebrew. Whereas 663 complaints have been filed from the USA, 267 from France, 220 from Germany and 189 from the UK so far this year there have been only 3 from Qatar and 6 from the United Arab Emirates. It is perhaps not surprising the no decisions have been published by the ACDR so far.

    However, that may change with the registration of an increasing number of domain names in Arabic script, more registration agreements in the Arabic language and the economic development of the region generally. The Asian Domain Name Dispute Resolution Centre appears to have developed a market in resolving disputes in Mandarin and that may be a model for the ACDR.

    Should anyone wish to discuss this article or domain name disputes in general, he or she should call me on +44 (0)20 7404 5252 during office hours or use my contact form.

    Saturday, 19 September 2015

    Pursuing Expatriates in England and Wales


    Oxford Combined Court Centre
    Author Kaishu Tai
    Source Wikipedia
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    According to such web forums as the Consumer Action Group, Getoutofdebtfree, LegalBeagles and World Law Direct, banks and other financial institutions in Dubai have been chasing returning expatriates in this country for unpaid bank loans, credit card balances and other debts that they are alleged to have incurred in the Emirates. Much of the advice that is posted to those forums is helpful but some of it is not. One or two posts are downright dangerous. Here are some tips for handling such claims.

    1.  Foreign debts can be pursued here

    As a general rule the courts in England and Wales will enforce foreign debts and other causes of action. Those courts will apply the law of the place where the debt or other cause of action occurred.  Thus, if you have borrowed money from a Dubai bank or credit card company the court will construe and enforce the loan or credit card agreement in accordance with UAE and Dubai law rather than that of England and Wales. There are a number of exceptions. For example, the English courts will rarely entertain a claim where the parties have agreed to resolve their dispute in the courts of some other country or by arbitration. However, that would not prevent the English courts from enforcing a foreign judgment or arbitration award.

    2.  Foreign Limitations Periods 

    Every legal system sets a time limit for bringing a claim. That is known as "the limitation period." In England and Wales the limitation period for most other claims is 6 years.  In the United Arab Emirates it is much longer.  Art 473 of the Civil Code provides:
    "A right shall not expire by the passage of time but no claim shall be heard if denied after the lapse of fifteen years without lawful excuse, but having regard to any special provisions relating thereto."
    For many years the English courts applied the English limitation period even if the law of the place where the contract was made provided a different limitation period but our law was changed by the  Foreign Limitation Periods Act 1984. S.1 (1) of that Act provides:
    "Subject to the following provisions of this Act, where in any action or proceedings in a court in England and Wales the law of any other country falls (in accordance with rules of private international law applicable by any such court) to be taken into account in the determination of any matter—
    (a)  the law of that other country relating to limitation shall apply in respect of that matter for the purposes of the action or proceedings subject to section 1A; and
    (b) except where that matter falls within subsection (2) below, the law of England and Wales relating to limitation shall not so apply."
    However, that section is subject to s.2 (1) and (2)  of the Act:
    "(1)   In any case in which the application of section 1 above would to any extent conflict (whether under subsection (2) below or otherwise) with public policy, that section shall not apply to the extent that its application would so conflict.
    (2)   the application of section 1 above in relation to any action or proceedings shall conflict with public policy to the extent that its application would cause undue hardship to a person who is, or might be made, a party to the action or proceedings."
    There have been cases where very short foreign limitation periods have been overridden on the ground that they are contrary to public policy in that they cause undue hardship to the claimant but I have found no case where an exceedingly long limitation period has been overridden by an English court. However, it is at least arguable that s.2 (1) and (2) were inserted to enable the English courts to consider lengthy limitation periods like that of the UAE and to override them if need be. I am aware of at least one recent case where an application for summary judgment by a foreign creditor was dismissed on that ground.

    Try to settle quickly

    Because costs can mount up quickly for all parties the sooner you settle your dispute the better.  The longer you leave it the more expensive settlement will become because you will have to take account of your own and probably the other side's costs.

    Practice Direction - Pre-Action Conduct and Protocols

    Paragraph 3 of the Practice Direction - Pre-Action Conduct and Protocols provides:
    "Before commencing proceedings, the court will expect the parties to have exchanged sufficient information to—
    (a)  understand each other’s position;
    (b)  make decisions about how to proceed;
    (c)  try to settle the issues without proceedings;
    (d)  consider a form of Alternative Dispute Resolution (ADR) to assist with settlement;
    (e) support the efficient management of those proceedings; and
    (f) reduce the costs of resolving the dispute."
    The first step is for the creditor's solicitors to write a letter before claim. It is imperative to acknowledge that letter at once. It is unlikely to be a try on even if it is the first communication you have received from the other side in many years. You then have a very short time in which to seek legal advice in order to answer the letter before claim in full.

    Getting the Right Legal Advice

    Claims by foreign creditors to enforce foreign contracts involve difficult points of foreign as well as English law and not every law firm or barrister has experience of this kind of litigation. Consumer advice services and websites are even less likely to have all the answers. Ask your legal advisor whether he or she has experience of the sort of claim that you are facing and how such previous claims were resolved. Specialist legal advice does not come cheap but it is a lot less expensive than litigation which is likely to result from bad advice or no advice at all. Remember that there are lots of deals that can be done to reduce or spread the cost of legal advice.

    Be prepared for Hard Bargaining

    The other side are likely to be represented by law firms with years of experience of this kind of litigation and they can be expected to drive a very hard bargain. There is nothing personal in this. They are just doing their job. The best way to deal with them is to follow the Practice Direction and seek and follow the best advice that is available to you.

    Further Information

    If you want to discuss this article or any related matter, call me on 020 7404 5252 during office hours or use my contact form.

    Monday, 17 August 2015

    After the oil runs dry - protecting inventions from GCC countries overseas

    Beam pump in the West Kern Oil Museum in Tait, California, USA
    Photo Konrad Summers
    Creative Commons Licence
    Source Wikipedia






















    Over the last few years the governments of the Gulf states have invested heavily in education and research to diversify their economies and lessen their dependence on oil and gas.  Saudi Arabia founded what is now the King Abdulaziz City for Science and Technology in 1977. Dubai established its International Academic City in 2007. The Qatar Foundation has set up Education City in Doha. Such investment appears to have led to good academic research but there have not yet been many applications for patents. Of the 205,268 applications for patents through the Patent Cooperation Treaty ("PCT") in 2013, Saudi Arabia accounted for 187, the United Arab Emirates 57, Oman 3 and Bahrain 2 (see page 41 of WIPO Facts and Figures 2014 ). As for applications to the Gulf Co-operation Council ("GCC") and national patent offices, there were 2,991 to the GCC 1,426 to the United Arab Emirates, 931 to Saudi Arabia, 332 to Qatar and 170 to Bahrain.

    Patents are important because they confer a monopoly of a new invention. Art 28 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") requires member states of the World Trade Organization to provide that:
    "A patent shall confer on its owner the following exclusive rights:
    (a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product;
    (b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process."
    Such monopolies are granted to stimulate research and development.  By restricting the exploitation of a new invention to patent owners, inventors and their investors have an opportunity to recoup their expenditure and perhaps earn a little extra.

    In order to maximize a new invention patents should be sought not just for the country in which the invention was invented but also for the countries where the invention or its products are likely to be sold and those in which they could be manufactured.  Two international agreements facilitate patenting of new inventions:
    Art 4 of Paris gives applicants for patents up to 12 months priority from the date upon which they make their first application. The PCT facilitates simultaneous applications for patents in a number of countries from a single filing.

    The first step for an inventor is to apply for a patent for his or her own country.  Before taking that step the inventor will probably wish to satisfy himself or herself that there is a market for the invention, that he or she can secure investment for it and similar matters. He or she may well be asked for particulars of the invention. if the inventor agrees to such a request he or she should make such disclosure only in confidence. The law of the Dubai International Financial Centre recognizes a duty of confidence (see DIFC Law of Confidence 27 Jan 2011). Inventors who wish to take advantage of such law should make sure that their confidentiality or non-disclosure agreements require the confidante to submit to the courts of the DIFC and provide for the agreement to be construed and enforced in accordance with DIFC law. We can advise you on the law of confidence of the DIFC and draft such agreements for you.

    PCT applications proceed in two phases: 
    • an international phase where searches and examinations are carried out for novelty, inventiveness and utility on behalf of all parties to the PCT; and 
    • a national phase where individual offices determine whether an application complies with their national law. 
    The reason for those two phases is that the basic requirements of patentability such as novelty, inventiveness and utility are shared by all countries but there are important differences from state to state in other requirements. For instance, art 52 (2) (c) of the European Patent Convention excludes programs for computers from the definition of "invention".  However, that paragraph is subject to art 52 (3) which provides:
    "Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
    That provision has been incorporated into the laws of each of the parties to the Convention including the UK. Art 52 (2) (c) and (3) and their corresponding provisions in national law have been considered many times by the courts of the contracting states and the Boards of Appeal (internal tribunals) of the EPO over the years. It appears that an invention  can be patented even if it is implemented by a computer program so long as it is something more than a program. Thus, a patent can be granted for a digitally controlled machine tool even if it consists of a known components so long as the tool is novel, inventive and useful but not for the program that actuates the processor that controls the tool.

    Because of such considerations, applications for patents should be drawn up by attorneys with experience of the PCT. Attorneys from firms with offices outside the GCC may offer an advantage in that regard and there are several UK firms with offices in the Gulf. We should be glad to effect introductions to such firms if so requested. The same firms will can offer sure footed support to GCC inventors in national and regional patent offices during the national phase.  Occasionally disputes over patentabiluty arise that have to be resolved in the Boards of Appeal or other courts and tribunals. We can represent GCC inventors in hearings before EPO Boards of Appeal, hearing officers representing the Comptroller in the UK Intellectual Property Office and the courts of England and Wales.

    Patent enforcement can be expensive particularly in common law jurisdictions such as the UK. We advise GCC inventors to consider taking out IP insurance from the time they file their applications. We can introduce inventors to specialist brokers if need be.  Disputes over whether a patent has been infringed are resolved by the courts of the country in which the infringement takes place. If a GCC inventor's patent has been infringed in the UK we can offer advice and representation in the Patents Court and the Intellectual Property Enterprise Court of England and Wales. A number of European countries including the UK have agreed to establish a Unified Patent Court to resolve disputes over unitary and other European patents (see the Agreement on a Unified Patent Court of 19 Feb 2013). When that court opens we can advise and represent inventors before that court also. For further advice on our services see Jane Lambert IP Services from Barristers 6 April 2013 4 to 5 IP.

    Should anyone wish to discuss this article or patent law or the law of confidence on general, he or she should call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.

    Monday, 15 June 2015

    An IP Case from the DIFC at Last: Capital Healthcare Partners Ltd v Ali Akbar Hashemi













    On 27 April 2011 I discussed the Dubai International Financial Centre's Law of Confidence. It is set out in art 37 of the DIFC Law of Obligations (DIFC Law No. 5 of 2005):
    "37. Breach of confidence 
    (1)  Subject to Article 37(4), a person has a duty not to misuse specific information which he has received from another (a "confidant"), directly or via an intermediary, and which can reasonably be regarded as confidential, where he knows or ought to know that the information is confidential.
    (2) If a person breaches his duty as defined in Article 37(1), he is liable to the confidant.
    (3) Unless non-confidentiality is otherwise expanded by agreement, information is not confidential if:
    (a) it is in the public domain;
    (b) it is trivial or useless; or
    (c) it is in the public interest that the information should not be confidential. 
    (4) Misuse of information includes, but is not limited to, its disclosure.
    (5) A person may disclose confidential information where -
    (a) the confidant has consented, expressly or by implication, to its disclosure;
    (b) its disclosure is required by law;
    (c) its disclosure is required in the interests of the confidant;
    (d) it is no longer confidential; or
    (e) it is disclosed to a person who has a legitimate interest in receiving it. 
    (6) It is no defence that the defendant did not know that he was misusing the confidential information."
    In CFI 045/2012 TVM Capital Healthcare Partners Limited v Ali Akbar Hashemi 22 May 2014 Justice Roger Giles QC held that the defendant Aki Akbar Hashemi owed the claimant a duty of confidence under a confidentiality agreement dated 24 Nov 2011 and art 37 (1) to use certain PowerPoint presentations that had been given to him in confidence for the sole purpose of evaluating a new healthcare investment on behalf of an undisclosed principal and that he had breached that obligation by disclosing the information to other investors. The judge awarded the claimants damages of AED 250,000 on the basis that that would have been the fee charged by the claimant for relaxing the obligation of confidence. In reaching his decision the learned judge relied on Mr Justice Brightman in Wrotham Park Estate Co Ltd v Parkside Homes Ltd [1974] 1 WLR 798 as it had been applied and extended in subsequent cases.

    The defendant appealed against the finding of liability on the ground that the judge should have found that the case was res judicata and thus an abuse of the process of the court, that there was no evidence upon which the award of damages could have been founded and that the claimant should not have been awarded all its costs having regard to the fact that it had claimed US$29 million but had actually recovered only a small fraction of that sum. The appeal came on before Sir John Chadwick, Sir David Steel and HE Justice Omar Al in CA 006/2014 TVM Capital Healthcare Partners Ltd v Ali Akbar Hashemi 27 Jan 2015,

    The Court rejected the res judicata and res judicata point on three grounds.  First, not all the parties to the present appeal had been before the court in the proceedings relied upon. These were in any case criminal proceedings rather than a claim for breach of confidence, Secondly, the defendants had been charged with an offence that covered some but not all the claims in the instant appeal. Thirdly, issue estoppel had not been pleaded in the court below.

    As to damages, the judge had not erred in his approach and while the figure might have been higher than the appeal judges would have awarded there was no basis on which to interfere with the judge's decision.

    The Court did disallow some of the claimants' costs but these were more than offset by his contribution to the costs of the appeal.

    The interesting point from this case is that the DIFC courts seem to protect trade secrets by contract but also under the law of obligations as a statutory duty. Also, there seems to be no difference in the basis upon which damages under contract and the law of obligations. Justice Giles gave a very thorough judgment on the point which was not substantially challenged.  Although the DIFC Courts probably reached the same conclusion as would have been reached by an English court the route by which they arrived at it was different.

    Should anyone require amplification or clarification of this case, or the DIFC law of confidence generally he or she should call me during office hours on +44 (0)20 7474 5252 or use my contact form.