Sunday, 30 January 2011

Bahrain: a Forum for the Resolution of IP and Technology Disputes?

According to "Our Vision", from regional pioneer to global contender the economic vision 2030 for Bahrain", the government of Bahrain plans substantial investment in advanced manufacturing particularly in the motor and food production industries, information and communications technology and financial services over the next 20 years. There will inevitably be disputes and differences between researchers and developers, their investors and distributors. The Bahrain Chamber for Dispute Resolution ("BCDR") is already a forum for the resolution of commercial disputes with the emphasis on arbitration of construction, financial services, insurance and energy cases. This article examines the legislative decree establishing the BCDR and the BCDR Rules and considers their appropriateness for intellectual property and other technology-related disputes.

Legislative Decree number 30 of 2009 was promulgated by the King of Bahrain on 29 June 2009. Art 2 establishes an independent chamber for the settlement of economic, financial and investment disputes to be known as the "Bahrain Chamber for Dispute Resolution". The chamber consists of a board of trustees who oversee the BCDR which includes making its procedural rules and administrative and technical personnel. Art 9 provides:
"The Chamber shall have jurisdiction to settle the following disputes originally within the jurisdiction of Bahrain courts or other entities having judicial jurisdiction, for cases in which the value of the claim exceeds Five Hundred Thousand Dinars:
1. Disputes among financial institutions licensed according to the provisions of the Law of Central Bank of Bahrain or between these institutions and other institutions, companies, and individuals.
2. International Commercial Disputes. The dispute shall be deemed international if the location of one of the disputant parties or the place where a substantial part of the obligations of the commercial relationship is to be performed, or the location most closely connected with the dispute is outside the Kingdom.
A dispute shall be deemed commercial if its subject matter, contractual or non-contractual, concerns relationships of a commercial nature including any transaction of supplying goods or services or the exchange thereof, distribution agreements, commercial representation or commercial agency, managing rights before others, hiring to purchase, construction of factories, consultation services, engineering works, issuing licenses, investment and financing, banking transactions, insurance, franchising agreements, joint ventures, any other forms of industrial or commercial cooperation, and transporting commodities or passengers by air, sea or land."

The definition of "commercial dispute" provided by that article would clearly cover computer supply, licensing, joint venture and similar disputes. There is no reason why it should not include infringement disputes though perhaps not those in which the validity of an intellectual property right is an issue. Art 11 (1) allows the parties to agree upon the applicable law and in the absence of such agreement the law of Bahrain is to prevail. There is limited right of recourse to the Cour de Cassation (Bahrain's highest civil court) under art 13.

Arbitrations are commenced by service of a notice of arbitration which must contain a statement of claim that includes the following:
"(a) a demand that the dispute be referred to arbitration;
(b) the names, addresses and telephone numbers of the parties;
(c) a reference to the arbitration clause or agreement that is invoked;
(d) a reference to any contract out of or in relation to which the dispute arises;
(e) a description of the claim and an indication of the facts supporting it;
(f) the relief or remedy sought and the amount claimed; and
(g) may include proposals as to the means of designating and the number of arbitrators, the place of arbitration."
(Art 2 of the BCDR Rules). The defendant must respond with a defence or defence and counterclaim within 30 days. Most importantly for intellectual property disputes, art 21 confers on the arbitrator an extensive range of powers including injunctive relief and measures for the protection or conservation of property. That would seem to include interim injunctions, search orders and freezing injunctions.

As in all arbitrations and other forms of alternative dispute resolution, the parties must agree to refer their disputes to the BCDR. The words that the BCDR suggests are as follows:
"Any controversy or claim arising out of or relating to this contract, or the breach thereof, shall be determined by arbitration administered by the Bahrain Chamber for Dispute Resolution (BCDR-AAA) in accordance with its Arbitration Rules."
The BCDR also suggests that parties should consider adding provisions as to the number of arbitrators, the city and country in which the arbitration will take place and the language or languages of the arbitration.

If anyone wants to discuss representation before the BCDR, dispute resolution of future disputes before the chambers or any other matter relation to arbitration or mediation in general, he or she should contact me through my contact form.

Thursday, 27 January 2011

DIFC Law of Confidence

The DIFC (Dubai International Financial Centre) is like a little bit of London in the Gulf. Covering an area of 45 hectares - slightly smaller than Kensington Gardens - it is a free zone for the banking, insurance, trading and other financial services industries with its own legal system. As I said in my article on The DIFC Courts, the interesting attribute of this legal system is that the laws are in English and its courts apply the common law.

There is now a comprehensive body of civil and commercial law for the Centre covering such matters as companies, contracts, insolvency, partnerships and data protection. DIFC Law No. 5 covers obligations which includes much of the law of tort (negligence, nuisance and deceit) and equitable obligations (fiduciary duties and confidence).

The DIFC law of confidence is set out in art 37 of this Law of Obligations. Paragraph (1) provides:
"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."
It should be noted that the word "confidant" has a special meaning in this article in that it refers to the person imparting information rather than the person to whom information is confided (cf my note on "The Law of Confidence" in IP/IT Update). Art 37 (2) continues:
"If a person breaches his duty as defined in Article 37(1), he is liable to the confidant."
"Misuse" in the DIFC code includes but is not limited to disclosure (art 97 (4)). There is no attempt to define confidential but art 97 (3) provides that "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."
The obligation of confidence is subject to the following limits in art 97 (4):

"(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."
Finally, it is no defence that the defendant did not know that he was misusing confidential information (art 97 (5)).

There does not appear to be any case law on the obligation of confidence. The only other relevant legislation that I have been able to find is art 29 of the DIFC Law of Contracts:
"Where information is expressly given as confidential by one party in the course of negotiations, the other party is under a duty not to disclose that information or to use it improperly for its own purposes, whether or not a contract is subsequently concluded. Where appropriate, the remedy for breach of that duty may include compensation based on the benefit received by the other party."
This provision would clearly apply to discussions between those with a business proposition such as inventors and potential backers such as angels or venture capitalists. However, it should be noted that the information must be disclosed "expressly in confidence" which implies a confidentiality agreement of the kind I have drafted for use in England (see my "Confidentiality Agreement" on the JD Supra website).

I should be glad to discuss this article with anybody who has any questions. He or she can contact me through my on-line form.

Saturday, 22 January 2011

Domain Names: New Domain Name Dispute Resolution Policy for ".ae" and "امارات." Top Level Domains

The .ae Domain Administration (".aeDA") is the domain name authority for the ".ae" and "امارات." top level domains. It is a department of the United Arab Emirates Telecommunications Regulatory Authority. On 29 Sept 2010 the .aeDA adopted a new Domain Name Dispute Resolution Policy known as the "UAE DRP" for those domains.

The UAE DRP is based substantially on ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) for generic top level domain names. The UAE DRP is incorporated by reference into all agreements for the registration of all ".ae" and "امارات." ccTLDs. As in the UDRP the key provision is the warranty and representation that appears at s.4 of the UAE DRP:
"By applying to Register a Domain Name, or by asking a Registrar to maintain or renew a Domain Name Registration, you hereby represent and warrant to us and the relevant Registrar that:
a) the statements that you made in your Registrant Agreement are complete and accurate;
b) to your knowledge, the Registration or the use, direct or indirect, of the Domain Name by you does not and will not infringe upon or otherwise violate the legal rights of any third party;
c) you are not Registering or will not, directly or indirectly, use the Domain Name for an unlawful purpose; and
d) to the best of your information, knowledge and belief, you are not Registering or will not, directly or indirectly, use the Domain Name in violation of any applicable laws or regulations.
It is your responsibility to determine whether your Registration or use of the Domain Name Registration infringes or violates someone else's rights,"
Each applicant agrees to refer to a panellist appointed by the WIPO any dispute where a third party asserts that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which he or she has rights; and
ii) the domain name proprietor has no rights or legitimate interests in respect of the domain name; and
iii) the domain name has been registered or is being used in bad faith.

As In the UDRP, the complainant must prove that each of those three elements is present.

The .aeDA has accredited a number of registrars to issue ".ae" and "امارات." domain names. Decisions in respect of the UAE DRP can be viewed on the the WIPO website.

If you need advice or would like one of us to represent you in an ".ae" domain name dispute or would simply like to discuss this post. please contact us through this form.

Friday, 21 January 2011

Patents: Gulf Co-operation Council

The Gulf Co-operation Council (Co-operation Council for the Arab States of the Gulf) is an economic, political and to some extent military union of the states of Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. The Council's objectives are
  • To effect coordination, integration and inter-connection between Member States in all fields in order to achieve unity between them.
  • To deepen and strengthen relations, links and areas of cooperation now prevailing between their peoples in various fields
  • To formulate similar regulations in various fields including the following: Economic and financial affairs Commerce, customs and communications Education and culture
  • To stimulate scientific and technological progress in the fields of industry, mining, agriculture, water and animal resources; to establish scientific research; to establish joint ventures and encourage cooperation by the private sector for the good of their peoples.
To further the last objective the Supreme Council of the Gulf Co-operation Council has established a Gulf Co-operation Patent Office ("GCCPO") at Riyadh in Saudi Arabia. The GCCPO grants Gulf Co-operation Council patents for inventions which stand alongside national patents in all the GCC member states. The legislation establishing the GCC patent is the Patent Regulation for the Co-operation Council for the Arab States of the Gulf.

The GCCPO opened for applications on 3 Oct 1998. A list of granted patents appears in a journal known as the "Bulletin Patents" which is published on the GCCPO website.

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Saturday, 15 January 2011

Why Dubai? Or the rest of the Gulf for that matter?

The Bar Council has sent three missions to the Gulf since 2008:
Those missions have focused on construction, financial services, company and insolvency work and on the opportunities offered by the DIFC (Dubai International Financial Centre) Courts and the Qatar Financial Centre Civil and Commercial Court. None of the missions has included members of the intellectual property bar which is hardly surprising since none of the cases that have been decided by the Dubai and Qatar courts has turned on intellectual property.

However things may be changing. Madeleine Heal has discussed proposals for a new intellectual property code and a specialist intellectual property tribunal for the DIFC in Proposed DIFC Intellectual Property laws – A Hub for Innovation. The development of Dubai Internet City, Dubai Media City and Dubai Studio City and Education City in Qatar and the Qatar Science and Technology Park will attract investment from around the world. Equally, businesses, universities and research institutes in those centres generate intellectual assets that will require legal protection around the world. There will inevitably be disputes and differences which will need to be resolved locally.

As Madeleine said in her article the English Bar can help with that. I have already helped to decide the domain name dispute as a neutral (WIPO case D2005-0309 Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing). I hope to do more work as an advocate and advisor as well as arbitrator and mediator in the region. Also, as the Gulf falls midway between manufacturers in India and China and mineral and agricultural commodity producers in Southern and East Africa and also between the financial centres of Western Europe and the Western Pacific Basin, there should be more than just local work.