Fighting counterfeit trade in Dubai

April 2013

This area – Al Karama – is in fact so well known that it is referenced in a number of travel publications as a place of interest for visitors to Dubai.

At the end of 2012 it came to the attention of the legal team of world famous French designer Mr. Christian Louboutin that his distinctive Red Sole shoes have not been spared the interest of counterfeit traders in Dubai and specifically the Al Karama market.  Developing and executing a strategy to understand the extent of the problem and addressing the sale of counterfeit goods in the Dubai market was critical to Mr. Christian Louboutin

The first step taken in this matter was to conduct an extensive market investigation in Dubai in order to begin to develop an understanding of the extent of the availability of counterfeit products in the market.  Once the investigation was completed, a view of the extent of the problem could be formed which assisted in identifying key target areas and specific individual targets. The information obtained through this investigation also provided a basis upon which to consider the most appropriate course of action to take the fight to the more than forty counterfeit vendors identified by the market investigation.

Christian Louboutin carefully considered the various legal options through which actions can be taken against counterfeit goods vendors in Dubai and after considering the spread of vendors in especially the Al Karama market and with a focus on addressing the availability of counterfeit products in the market – he elected to follow an administrative procedure through the Dubai Department of Economic Development (the “DED”).

The DED is currently one of the most active law enforcement agencies in Dubai with respect to anti-counterfeiting actions and has its own inspectors who act ex officio monitoring markets and undertaking inspections on behalf of brands owners.  Accordingly, an official complaint was filed with the DED including details of the CHRISTIAN LOUBOUTIN trade marks registered in the UAE.  Along with the complaint, the DED was provided with samples of counterfeit products obtained from the market, samples of authentic products and all details of targets offering counterfeit goods for sale (as obtained through the market investigation).

Christian Louboutin’s in-house counsels also met with DED officials in Dubai explaining the extent of the counterfeiting problem globally, the impact of this trade on the brand and the value of the brand and specifically Christian Louboutin’s commitment to fighting the trade in counterfeit goods.

To date, the DED, with the support of Al Tamimi & Company, had seized thousands of pairs of counterfeit shoes from numerous targets in Dubai.

The majority of inspections conducted by the DED focused on targets identified through Al Tamimi & Company’s enforcement team, but in some cases, the DED seized goods during inspections focused on other brands.  Raising the profile of the brand with the DED and showing Christian Louboutin’s commitment to addressing the problem of counterfeit goods in Dubai by taking the time to meet with officials and through the ongoing interaction of Al Tamimi & Company’s team with the DED has clearly played an important role in the success achieved by the DED.

The complaint with the DED remains open and Al Tamimi & Company’s enforcement team continues to work very closely with the DED in order to identify new targets and to ensure that the brand remains at the top of the minds of DED inspectors. Protecting the valuable CHRISTIAN LOUBOUTIN brand in Dubai is an ongoing process, but the commitment of Christian Louboutin and the DED to take action in this market has already sent a very strong message to counterfeit traders in Dubai.

In addition to the complaint filed with the DED, Christian Louboutin’s trade marks are now also recorded with the Customs Authorities. Accordingly Christian Louboutin’s in-house counsels also met with the Customs Authorities, explaining the extent of the challenges faced by the brand, the impact of the trade in counterfeit goods on the reputation of the brand and their commitment to working with the Customs Authorities in protecting the brand.

This matter is a good example of the effectiveness of the administrative actions taken through the DED and the importance of ongoing collaboration with the DED to fight counterfeit trade in Dubai.  At the same time, the importance of working with the Customs Authorities in identifying and pursuing the importation of counterfeit goods cannot be overstated.

The first battles in this war against counterfeit goods in Dubai have been won by Christian Louboutin, the DED and Al Tamimi & Company and this constitutes a clear message to the counterfeit traders in the city – the war may be ongoing, but this battle group is mobilised to take aggressive and effective action as and when required.

For any assistance in respect of anti-counterfeiting action in the UAE, please contact Waldo Steyn at w.steyn@tamimi.com.