Saudi Arabia to host Design Law Treaty Diplomatic Conference

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Jane Lambert

A diplomatic conference will take place in Riyadh between 11 and 22 Nov 2024 to conclude and adopt a design law treaty.   Although art 5quinquies of the Paris Convention for the Protection of Industrial Property requires industrial designs to be protected by all countries of the Paris Union how they are protected varies greatly from country to country.  Countries like the UK and EU member states provide a system of design registration.  Other countries like the USA grant design patents.  The purpose of the proposed treaty is to harmonize and facilitate the registration procedure.

A draft treaty and implementing regulations have already been proposed.  The proposed treaty consists of 32 articles covering abbreviations, general principles, filing, grace periods, publication, terms of protection, renewal, regulations and governance.  An agenda, timetable and social programme have also been published.  The proposed treaty will not affect contracting parties' obligations under the Hague Agreement or Section 4  of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs").

Further information on the conference can be contained from the World Intellectual Property Office and the Saudi Authority for Intellectual Property websites.  Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page,

Arab-British Chamber of Commerce International Intellectual Property Conference "Combating Transnational Intellectual Property Crime"

Yesterday I was one of the speakers at the Intellectual Property Conference on "Combating Transnational Intellectual Property Crime" which was held at The Langham Hotel in London. The conference was chaired by The Rt. Hon. Baroness Symons of Vernham Dean who had been Minister for the Middle East, Minister for International Trade and Minister for Defence Procurement, and the Prime Minister’s envoy to the Gulf in the last Labour Government in the United Kingdom.  She is now Chair of the Arab-British Chamber of Commerce.

Lady Symons introduced Dr Muhammed bin Abdul-Kareem Al-Issa and Dr Bassam Al-Talhouni, the Ministers of Justice of Saudi Arabia and Jordan, and Lord McNally, Minister of State for Justice in England and Wales.  All three ministers fulminated against counterfeiting and piracy (though none of them actually defined those terms) and outlined some of the measures that they had taken in their respective jurisdictions to suppress those activities. The Minister from Jordan was the most specific and he was able to report a fall in reported instances which Lady Symons noted.  Lord McNally spoke about cyber security. Each of those ministers was presented with a "certificate of appreciation" after their presentations. Lord McNally remarked that he felt like the Tin Man in the Wizard of Oz  as he and Lady Symons solemnly displayed the certificate for the cameras.

The next session "Strategic Dialogue on Changing Public Perceptions on Counterfeiting and Intellectual Property Theft" was chaired by Miss. Cherie Booth QC of Matrix Chambers and Omnia Strategy LLP who is perhaps better known as Mrs. Tony Blair. Miss Booth hinted at the temptations in a typical household to download pirated music and buy fake handbags. She spoke of the cost of intellectual property infringement globally and the need to change public behaviour in the way that speed cameras had forced motorists to drive more slowly.

Miss Booth introduced two speakers from Saudi Arabia, Sheikh Nasser Bin Ibrahium Al Mohammed, Head of Judicial Inspection and Member of the Supreme Judicial Council, and Sheikh Ibrahim Bin Abdel Aziz Al Ghossn, President of the National Committee of Lawyers.  Sheikh Al Mohammed gave the most moderate presentation up to that point observing that developing countries can be expected to do only so much in enforcing intellectual property rights and that more should be done by developed countries. He also castigated greedy rights holders as well as greedy infringers. Interestingly he seemed to suggest that an owner of any kind of property who failed to take care of it had only himself to blame and that the need to eat was a partial defence or at least a strong mitigating factor in Saudi law. Even though he is president of a body which presumably includes defendants as well as claimants' lawyers, Sheikh Al Ghossn was implacable in his condemnation of pirates and counterfeiters.  He argued that IP infringement was not just a wrong or even a crime but a sin in Islam.

Perhaps the most interesting speaker of the whole conference was Mr Adil El Maliki who is Director General of OMPIC (Office Marocain de la Propriété Industrielle et Commerciale) the Moroccan intellectual property office. He outlined the comprehensive intellectual property legislation that Morocco had enacted and the treaties to which it had acceded.  He quoted statistics to show that Moroccans were applying for more patents and trade marks which he attributed to those measures.

The last speaker of this session was Mr Robert Bond of Speechly Birham who had been very kind to us when I set up NIPC in 1997 and he was at Hobson Audley. He urged co-operation between rights owners, individuals and businesses in safeguarding intellectual property rights. Public awareness of the importance of intellectual property had to be raised - even in law firms. In that regard he told an alarming story about how an internee was about to post details of a confidential meeting onto Facebook before someone twigged what she was up to and intervened.

There was time for three questions. A barrister who was clearly interested in theology asked Sheikh Al Ghossn exactly what sort of sin was constituted by infringement. Being a Quaker and not a Muslim I must confess that I did not quite understand either the question or answer. I pointed out that IP rights confer monopolies which are not necessarily a good thing. "And your question?" interjected Miss. Booth. "My question is how does Saudi and Moroccan law deal with abuses of such monopolies which can arise either because the rights should never have been granted in the first place or they are used to suppress legitimate competition?" It was clear from the very brief reply that I had not put my question with sufficient clarity.

The last session was "Coordinating Law Enforcement, Government and Business Institutions Actions against Counterfeiters."  Viscount Younger of Leckie, Parliamentary Under Secretary of State for Intellectual Property, summarized comprehensively the measures that had been taken by trading standards officers, the police and the IPO to suppress IP crime. He also announced that he would call a conference on IP enforcement in London shortly,  Before the session I had a brief chat with Lord Younger about St Andrews, where we were both students, and my objection and that of the Intellectual Property Bar Association, Sir Robin Jacob and other leading academics, the IP Federation and just about everybody to criminalizing registered design infringement which I set out in more detail in  my article on the Intellectual Property Bill in my NIPC law blog of the 28 May 2013.

There was a short and in parts amusing presentation from Mr Majed bin Mohammed bin Garoub who is Secretary General of the Union of Lawyers in the GCC Countries about enforcement in those countries. He explained that he acts for a lot of claimants and he is so diligent in pursuing infringers that he has a name for it.

Our chair, Mr Mike Pullen of DLA Piper, developed Lord McNally's observations on cyber security and data protection. Although an expert on competition law with experience of some leading cases he said very little on the subject which was a pity because he would have had a lot to say on the abuse of dominant positions, contracts in restraint of trade and concerted practices.

David Meldrum, a partner of D Young & Co, spoke of the research and development work that was taking place in such places as the free zones of Dubai like Internet City and the Qatar Science and Technology Park.  Inventors and creatives in those places would require a lot of advice on protecting their intellectual assets which is why his firm had opened an office in Dubai.

Eventually it was my turn and to my great horror no slides appeared.  Inwardly panicking I said the first thing that came into my head which was a weak joke that nobody was likely to counterfeit my CHF71 Swatch watch. I think I made that quip because someone had speculated that there were probably a lot of fake Rolexes in the room. For the next 10 minutes I ad libbed and I hope that I said something sensible in  that time. The presentation that I had intended to give is above.

I was more comfortable dealing with questions. Through my experience of running inventors' clubs and IP clinics and having participated briefly in one of the sessions on the implementation of Sir Richard Lambert's review on business and university co-operation I was able to field a question on ownership of graduate students and academics' inventions.  Pertinently Mr Mohammed bin Garoub pointed out that not all academic work leads to patentable inventions.  I also answered a question on remedies against states pointing out that in addition to the dispute settlement procedures under the WTO agreement nationals of countries that were party to bilateral investment treaties might have the option of claiming compensation at the International Centre for the Settlement of Investment Disputes (see "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection"  27 July 2013 NIPC Law and "The UAE's Bilateral Investment Treaties" 28 July 2013).

We then broke for lunch during which time I met some remarkable people including Irina Bragin who supplies lovely handbags made out of carpets and one of the first ladies to be called to the Saudi Arabia bar. Having written recently about the topic in "Saudi Women can now practise Law" 14 Oct 2013 I was delighted to meet her. I told her how good it was to see her country's athletes at the London Olympics and how womankind around the world (and no doubt most men) will rejoice when our Saudi sisters are allowed to drive.

It was a very good meeting and I thank the Arab-British Chamber of Commerce for the invitation to speak. Should anybody wish to discuss this article, my slides or any other topic he or she can contact me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. He or she can also send me a tweet, write on my wall or contact me through G+, Linkedin or Xing.

UAE Trade Mark Law

Obligation under TRIPS to protect Trade Marks
As a party to the World Trade Organization, the United Arab Emirates is bound by Annex 1C to the Agreement Establishing the World Trade Organization which is better known as TRIPS (Trade-Related Aspects of Intellectual Property Rights).

Art 15 (1) of TRIPS requires member states to provide that:

"Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks."

Art 16 (1) further provides:

"The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use."

Other provisions of the treaty set out the conditions for registration, enforcement and licensing and assignment.

UAE Trade Mark Legislation
The UAE's obligations under TRIPS are implemented by Federal Law No. 37 of 1992 on Trademarks as amended by Law No. 19 of 2000 and Law No. 8 of 2002 (see Jane Lambert "The Legal Order of the United Arab Emirates" 12 Nov 2011).  It therefore applies throughout the Emirates including Dubai and its free zones including the Dubai International Financial Centre which also has its own private law of passing off (see Jane Lambert "The DIFC Law of Passing Off" 7 April 2011).

The Register
Art 5 of the Law establishes a trade mark registry in the Ministry of Economy and Commerce:

"wherein shall be recorded all the trade marks, names, addresses and type of activities of their owners, the descriptions of their goods, products or services and any conveyance, assignment, transfer of ownership, mortgage or licence for use concerning such marks or any other changes."

Registrable Marks
Art 2 provides that

"anything having a distinctive form such as names, words, signatures, letters, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, advertisements, packs or any other mark or group of marks if used or intended to be used either to distinguish goods, products or services whatever their source or to indicate that the goods or products belong to the trade mark's owner due to its manufacturing, selection or trading or to indicate the rendering of a service"

shall be considered a trade mark.   Art 3 excepts from registration signs having the following characteristics:

"1. The mark having no property or distinctive character or that made of data being only the name given by tradition to familiar goods, products, services or the ordinary drawings and pictures of goods and products.
2. Any mark breaching the public morals or violating the public order.
3. Public emblems, flags and other logos, of the State, the Arab or international organizations or an institution thereof or any foreign country except by its authorization as well as any imitation of such emblems, flags or logos.
4. Logos of the Red Crescent or Red Cross and such other similar symbols and the marks being an imitation thereof.
5. Marks that are identical or similar to symbols having a purely religious character.
6. Geographical names if their use would create confusion with regard to the origin or source of goods, products and services.
7. The name, title, picture or logo of a third party unless he or his heirs approve its use beforehand.
8. Particulars of honorary degrees to which a registration applicant does not prove his legal entitlement.
9. Marks that may mislead the public or include mistreatments on the origin or source of products or services or their other properties as well the marks that include a fictitious, imitated or forged trade name.
10. Marks owned by natural persons or legal entities with whom it is prohibited to deal.
11. The mark whose registration for some categories of products or services results in undervaluing other products or services distinguished by such mark.
12. Marks including the following words or expressions :
Concession, Concessionaire, Registered, Registered Drawing, Copyright, Imitation is Considered Forgery or such similar words and expressions.
13. The national and foreign medals, coins and bank notes.
14. The marks deemed as just a translation for a renown mark or another mark already registered, if the registration would confuse the consumers, with regard to products distinguished by the mark or similar products."

These are what we would call in Europe "absolute grounds of refusal.".   Art 4 also excludes:

"1. The trademarks having an international goodwill beyond the boundaries of the mother country, may not be registered unless authorized by the owner or by his official attorney.
2. It is the public's awareness about the trademark that determines its goodwill.
3. A trademark with a goodwill, may not be registered to distinguish products or services that are not similar or compliant with those distinguished by the trademark if:

a. The use of the trademark indicated a link between the goods and services to be distinguished and the goods or services of the original trademark owner.
b. The use led to a potential prejudice to the owner of the original trademark owner."

Art 10 further provides:

"Subject to the provisions of Art. 26 hereof, no trade mark identical or similar to an already registered mark may be registered for the same categories of products or services, or different goods or services, if the use of the requested trademark would generate an impression that such goods or services are linked to the goods or services of the owner of the registered mark or prejudicing his interests.
Should one or more persons apply simultaneously for the registration of the same mark or close or similar marks for one category of products or services, the Ministry shall suspend the registration of all applications until an attested waiver is submitted by the opponents in favour of one of them or a final judgment is awarded in favour of one of them."

Finally, art 26 excludes from registration a trade mark that is struck off for years 3 years fron the date of striking off.

Registration
As is the case everywhere, trade marks are registered in the UAE for specified goods or services in accordance with Executive Regulations (art 7). Applications for registration are examined within 30 days of filing (art 11 (1)).

If an application is refused the applicant has 30 days to appeal to a committee consisting of representatives of the Minister of Economy and Commerce and two from the Chamber of Commerce ("the Committee") and from there to the Court under art 12 (2).

If an application is accepted it is published in the Ministry's Trade Marks Bulletin and in two Arabic language daily newspapers. Those who object to the application have 30 days in which to give notice of their objection.  Such notice is then sent to the applicant who is invited to reply.  The Ministry considers the parties submissions under art 15 and decides whether to entertain the opposition or to allow the application to proceed to grant and, if so, on what terms. Any party dissatisfied with the Ministry's decision may appeal to the Committee and thence to the court

If a mark is registered registration takes effect from the date of filing (art 16). The same article provides that the registered proprietor is given a certificate containing the following particulars:

"1. Registration number of the mark.
2. Date of submission of application and date of registration.
3. Trade name or name, nationality and domicile of the mark owner.
4. Duplicate of the mark.
5. Description of the products, goods or services for which the mark is designated and their category.
6. Number and date of the international priority right and name of the State Member in Paris Convention for the Protection of the Industrial Property, where the priority right application has been lodged."

Effect of Registration
Art 17 (2) provides that

" The owner of a registered trademark may prevent others from using a similar or identical trademark, to distinguish products or services that are identical, similar or correlated for which the mark has been registered, in such a way that confuses the consumers."

Once a trade mark has been used continuously for 5 years of the date of registration without any challenge as  to validity title to the mark may not be disputed (art 17 (1)).

A mark may be registered for 10 years and may be renewed indefinitely for further periods of 10 years for so long as it is used.

Infringement
A trade mark is infringed if the same or similar mark is used for gods that are the same or similar to those for which the mark is registered.  Infringement of a trade mark is both a criminal offence and a breach of statutory duty.  The penalty for trade mark infringement is a fine, prison or both.   Interim and final injunctive relief and damages are available to trade mark owners against infringers. Infringing goods may be seized before the commencement of civil or criminal proceedings.

Further Information
Our chambers is developing a presence in the United Arab Emirates and has recently recruited a resident tenant. If you require advice on any aspect of intellectual property or technology law including licensing and franchising or representation before the DIFC Courts or any arbitration, contact Stephen Broom on +44 (0)20 7404 5252 or fill out our contact form.