IPO Guidance on the Gulf Cooperation Council

 

Jane Lambert

On 6 April 2023 the UK Intellectual Property Office ("the IPO") circulated an email headed "Are you a UK business trading in the Gulf Cooperation Council (GCC)? Or thinking of doing so?" to its mailing list, The email announced that the IPO had published guidance to help businesses navigate the IP regimes in each of the six GCC member states providing information on the main IP rights and where to go for further guidance,  It added that the GCC was the UK's 7th largest export market worth £33.1 billion in 2021, that the UK has a longstanding relationship with the GCC, particularly in areas like technology, life sciences, creative industries, financial services and education, and that intellectual property will play a vital role in securing British ambitions in the region.

International IP Service

A button on the email connects to a web page on the British government's website headed Collection International IP Service with the strapline "Protecting your trade marks, patents, designs and copyright abroad" which was first published on 20 Aug 2021 and last updated on 10 March 2023.  It begins with a general observation:

"Intellectual property rights are territorial. You should consider getting IP protection if you want to trade overseas or sell to overseas customers via the internet. Start by developing an international strategy, identifying your markets, business goals and resources."

 I would endorse that advice adding only that an international strategy is an aspect of an IP strategy which is something that every business should develop whether an individual on his or her first day in business or a mighty multinational  (see What is an Intellectual Property Strategy? 19 May 2017 last updated 8 April 2023).  I could help with that as I have many years experience of advising on IP strategy and have written many articles on the topic.

Top Tip

I would also endorse the IPO's "Top Tip":

"Know before you go. Wherever you want to do business, it is important that you understand the steps you should take to protect your IP before entering the market. It is a lot easier to jump over any hurdles before realising it might be too late to act. You will also need to do some research to make sure you’re not infringing someone else’s IP."

Meet the Experts: Yamesh Yaqoob

The next link introduces our IP attachés which are listed on a separate Attaché contact details page.  Our main in the GCC countries is Mr Yamish Yaqoob whose appointment I reported in UK's New Intellectual Property Attache to the GCC on 27 Oct 2021.  The section on Mr Yaqoob states:

"Focus on the GCC: Yamish provides guidance to UK stakeholders in the GCC region on how to effectively protect and manage their IP assets. He also works closely with regional IPOs and official authorities on outreach and awareness raising of the value of IP. Yamish will input on IP in a Free Trade Agreement with the GCC, to further build bilateral cooperation within the GCC on IP practice and policy. Currently, he is also working in close collaboration with the Saudi IP authority on delivering a joint work plan aimed at improving the local IP ecosystem."

IP Country Guides

The International IP Service page links to a list of IP Country Guides.  These include guides on:

• Bahrain 
• Kuwait 
• Oman 
• Qatar
• Saudi Arabia and 
• the United Arab Emirates ("UAE"). 

Each of those guides was published on 2 March 2023 and follows a similar format.  There are passages on trade marks, patents, designs, copyright, enforcement and sources of further information.

The guidance on the UAE fails to mention the English speaking common law jurisdictions in the Abu Dhabi Global Market and the Dubai International Financial Centre free zones.  I have discussed the DIFC courts extensively in this publication and I introduced the Abu Dhabi Global Market legal system in Abu Dhabi Global Market - Yet Another Common Law Enclave in the Gulf on 22 Feb 2016.  It is worth remembering that the DIFC has its own intellectual property legislation which I mentioned in Introduction to, and Overview of, the New DIFC Intellectual Property Law on 13 Dec 2019.  The DIFC courts have always had jurisdiction to hear and determine breach of confidence and passing off and there seems to be no reason in principle why they should not grant injunctions, delivery up of infringing matter and pecuniary relief for infringements of the DIFC Intellectual Property Law.  Having said that, the Law establishes an Intellectual Property Commissioner with extensive powers to resolve IP disputes.

There is a similar English speaking common law jurisdiction at the Qatar Financial Centre known as the  Qatar International Court and Dispute Resolution Centre which I discussed in Qatar Financial Centre: Civil and Commercial Court Regulations on 28 June 2011 and subsequent articles.  The IPO guidance on Qatar does not mention that court or legal system.

Any member of the Bar of England and Wales in good standing can quickly be granted rights of audience in any of those courts.  The procedural law and practice of all three courts are modelled on the English Civil Procedure Rules.  Much of the substantive law is also modelled on British statutes or codifications of English case law. Some of the litigation is conducted online which means that members of the English bar can represent parties from their chambers in London or even their homes elsewhere in the UK. 

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 or send me a message through my contact page.

How will the Blockade of Qatar affect IP Law in the GCC Countries?

Jane Lambert

Severing diplomatic relations, expelling a state's nationals, closing a land border and airspace are steps that fall only a little way short of war. It is remarkable that those steps have been taken by two of the parties to the Gulf Cooperation Council ("the GCC") against a third since the GCC had achieved a high degree of political and economic integration.

One aspect of that integration is the GCC patent which is actually a unitary patent for the member states of the GCC - something that the member states of the European Union have yet to achieve. GCC patents are issued by the GCC Patent Office which I discussed in Patents: Gulf Cooperation Council on 21 Jan 2011. A subtitled video on YouTube explains how the Office works.  According to its website, the GCC Patent Office has granted 5,721 patents as of today. That may not be a huge number when compared to the output of the Chinese, Japanese, US, Korean or European intellectual property offices, but the GCC Patent Office's business would have been expected to grow as all the GCC countries were developing industries and technologies for when the oil runs out.  As the Office is located in Saudi Arabia, it is hard to see how Qatar can continue to participate in it unless the order expelling Qatari nationals from Saudi Arabia is rescinded.

Other types of IP law will be less affected. Trade mark law had been harmonized in the GCC states by a GCC Trade Marks Law but there was no such thing as a GCC trade mark (see Saba Al Sultani and another GCC Trademark Law Coming Soon Sept 2014 WIPO Magazine).  Similarly, there was no GCC system of design registration and no single GCC copyright.

It is to be hoped that the differences between the Qatari government and the governments of its neighbours can be resolved and that the blockade can be lifted soon, but, even if it is, the actions taken by Saudi Arabia, Bahrain and the United Arab Emirates may well have done lasting damage to the GCC. It will not be lost even upon the states that participated in the blockade that the GCC is not a union of states of equal size. Saudi Arabia has a population of 33 million compared to Bahrain's 1.4 million, Kuwait's 4.3 million, Oman's 4.6 million, Qatar's 2.4 million and even the UAE's 5.8 million. The pressure that has been exerted upon Qatar on this occasion could easily be brought to bear on any of the other states in a future dispute.

Consequently, any business exporting to, importing from, investing, or seeking investment in any of the GCC states would be wise to plan for a future that may not include the GCC in its current form. The IP issues that would arise in such a future would be very similar to those that have sprung up in the UK as a result of Brexit. Exporters to, and investors in, any of the GCC states should ensure that their brands, technology and other intellectual assets are protected by national as well as GCC law. Their contracts should take account of the possibility of further blockades and insert effective force majeure provisions. Wherever possible contracts should be construed and enforced in accordance with English law. Where that is not possible, the laws of the Abu Dhabi Global Market, Dubai International Financial Centre or the Qatar Financial Centre which are modelled on English law and enforced by English speaking, common law courts should be considered.

Should any reader wish to discuss this article or IP law in the Gulf in general he or she should call me during British office hours on +44 (0)20 7404 5252 or send me a message through my contact form.

Gulf Co-operation Council Member States - Treaties and Intellectual Property Authorities

Country	Treaties and Conventions	Intellectual Property Office
Bahrain	Berne, Brussels, Madrid Protocol, Paris, Patent Co-operation, Patent Law, Rome, Trademark Law, TRIPS, WIPO Copyright, WIPO Performances and Phonograms	Ministry of Industry and Commerce P.O. Box 5479 Manama Bahrain +973 17530335
Kuwait	TRIPS	Ministry of Trade and Industry Trademarks and Patents Department P.O. Box 2944 Safat 13030 Kuwait +965 22 42 4426
Oman	Berne, Brussels, Budapest, Hague, Madrid Protocol, Nairobi, Paris, Patent Co-operation, Patent Law, Trademark Law, TRIPS, UPOV, WIPO Copyright, WIPO Performances and Phonograms	Ministry of Commerce and Industry P.O. Box 550 Code No. 113 Muscat Oman+968 247 741 26 / 992 226 22
Qatar	Berne, Nairobi, Paris, Patent Co-operation, TRIPS, WIPO Copyright, WIPO Performances and Phonograms	Intellectual Property Center Ministry of Justice P.O. Box 917 Doha Qata +974 448 42 292
Saudi Arabia	Berne, Paris, TRIPS	General Directorate of Industrial Property, King Abdul-Aziz City for Science and Technology (KACST) P.O. Box 6086 Riyadh 11442 +9661 481 4342
United Arab Emirates	Berne, Paris, Patent Co-operation, Rome, TRIPS, WIPO Copyright, WIPO Performances and Phonograms	Directorate of Industrial Property, Ministry of Economy and Commerce P.O. Box 901 Abu Dhabi +971 2 613 1336

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.