Expo 2020 Dubai Association Rights

Author SumikashaC Licence CC BY-SA 4.0 Source Wikimedia 

Jane Lambert

Expo 2020 Dubai opened on 1 Oct 2021. It should have taken place between 20 Oct 2020 and 10 April 2021 but, like the Tokyo Olympics, it was postponed for a year because of the pandemic.  As it happens, International Expos have a lot in common with the Olympic Games. They attract visitors from all parts of the world. They require lavish sponsorship.  They are regulated by ithe Bureau International des Expositions much in the way that the Games are regulated by the International Olympic Committee.

Like the Olympics and other major sporting events, their funding is vulnerable to ambush marketing.  The booklet, Expo 2020 Dubai Brand Protection Guidelines, describes ambush marketing as "the act of creating a false or unauthorized association with an event, whether intentional or not." It effectively gives worldwide publicity to the ambushers for nothing.

The right to associate with a major sporting event or Expo is called an "association right" and it is regarded as an intellectual property right (see para 16.1 (6) of the Part 63 Practice Direction).  I discussed the legislation that protected the rights of the International Olympic Committee and the London Organizing Committee in Olympics Association Right and London Olympics Association Right on 31 July 2012 in NIPC Law.  Similar legislation has been enacted for the Commonwealth Games in Birmingham in 2022 which I mentioned in Guidance on Birmingham Commonwealth Games Association Right on 10 Aug 2021 in NIPC West Midlands.

The marks that are protected in the United Arab Emirates include the composite word and device marls of the Bureau International des Expositions and Expo 2020 Dubai. Images of those marks appear on pages 11 to 13 and 16 of the booklet. The booklet suggests that neither the Emirati nor the Dubai government has enacted special legislation to protect those marks or association rights. The intellectual property rights that are mentioned on page 19 are trade marks and copyright. I discussed the relevant legislation in UAE Trade Mark Law on 30 May 2013 and copyright and related rights on 4 Jan 2012 and 11 Feb 2012.

The booklet does not mention the courts in which infringement proceedings would be brought. It is assumed that these will be the civil courts in Dubai. As an intellectual property law has been enacted for the Dubai International Financial Centre. it may also be possible for sponsors to seek relief in the Centre's English speaking common law courts (see  Introduction to, and Overview of, the New DIFC Intellectual Property Law 11 Dec 2019).  An advantage of that jurisdiction is that the DIFC provides a remedy for passiong off (see The DIFC Law of Passing-Off  7 April 2012).

Changing the subject, almost every country in the world seems to be represented with its own pavilion in Dubai including very small states such as Monaco and the Holy See.  The British pavilion seems particularly lavish.   A day ticket to the Expo costs 95 UAE dirhams which is just under £20 and children, students, seniors and "people of determination" get in for free.  That compares very favourably to the Roman remains in Bath, an important tourist attraction in this country. 

Anyone wishing to discuss this article can call me on  +44 (0)20 7504 5252 during office hours or send me a message through my contact form. 

The New DIFC Intellectual Property Law - Trade Marks and Trade Names

Author Mostafameraji Licence CC BY-SA 4.0  Source Wikipedia Tourism in Dubai

 

Jane Lambert

Last November the Dubai International Financial Centre ("DIFC") enacted a new intellectual property law (see DIFC Intellectual Property Law (Law No 4 of 2019)).  I described its structure in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019 and discussed its provisions relating to patents and utility certificates, industrial drawings and designs and copyrights and neighbouring rights in subsequent articles.  In this article, I discuss the provisions relating to trade marks (arts 43 to 49) and trade names (arts 50 and 51).   There was already an action for passing off under the Law of Obligations which I discussed in The DIFC Law of Passing Off on 7 April 2011.

What is a Trade Mark?

The table in paragraph 3 of Schedule 1 to the IP Law defines a trade mark as:

"any signs or combination of signs or names, words, signatures, letters, numbers, Drawings, Symbols, addresses, Hallmarks, stamps, pictures, vignettes, notices, packages, colour or combination of colours, or any other mark or combination of marks having a distinctive form and used or intended to be used to distinguish goods, products or services. Sound and smell can be considered as trade marks."

That is broadly consistent with art 2 of Federal Law No. 37 of 1992 on Trademarks (as amended by Law No. 19 of 2000 and Law No. 8 of 2002).

Registration
The DIFC Intellectual Property Law makes no provision for registering trade marks in the DIFC.  Instead, art 43 of the Law provides that a trade mark registered under the Federal trade mark law is recognized for the purposes of the DIFC IP Law and is valid and enforceable in the DIFC.  "Federal trade mark law" is defined in the table in paragraph 3 of Schedule 1 as "UAE Law No. 37 of 1992 as amended by UAE Law No. 8 of 2002 and its implementing regulations, any other future amendment or Federal Law with respect to trade marks."  I have already discussed that statute including registration in UAE Trade Mark Law on 20 May 2013.  According to the WIPO, the UAE is not yet a party to either the Madrid Agreement or Protocol.  It appears from Saba Al Sultani and Rob Deans that trade mark law has been harmonized among the Gulf Cooperation Council states but there is not yet a unitary GCC trade mark on the lines of the GCC patent or EU trade mark (see Al Sutani and Read GCC Trademark Law Coming Soon Sept 2014 WIPO Magazine).

Prohibited Marks
The following marks will not be recognized in the DIFC unless they are registered under Federal trade mark law:

"(a) a mark which is not distinctive; 

(b) a mark consisting of a generic name used in relation to goods, products or services; 

(c) a mark that contains one or more familiar drawings or common pictures of goods; 

(d) a mark that is contrary to the public order or morality of the UAE; 

(e) a mark containing the insignia of the UAE, any governmental body in the UAE, flags and other symbols pertaining to the UAE (or any emirate thereof), Arab or international organisations (or any agencies thereof), or any foreign country except with the authorisation of those parties, as well as any imitation of such insignia, flags or symbols; 

(f) a symbol of the Red Crescent or the Red Cross, or any other similar symbol or mark which is an imitation thereof; 

(g) a mark which is identical or similar to a symbol of a purely religious nature; 

(h) a geographical name, where the use thereof may cause confusion as to the origin or source of the goods or services; 

(i) a name, surname, photograph or emblem of a third party, unless his, or his legal successors’, prior consent has been obtained. 

(j) a mark containing a title of honour, where the person applying for registration cannot prove that he is lawfully entitled to its use; 

(k) a mark which may mislead the public or which is identical or confusingly similar to a mark or marks of another party, even though not registered, or which contains false information as to the origin or the source of products or services, or about their other characteristics, as well as a mark containing an imaginary, imitated or forged trade name; 

(l) a mark owned by a person with whom it is illegal to deal with under Federal Law or Dubai Law. 

(m) a mark which, if used for certain classes of products or services, would diminish the value of other products or services distinguished by such mark; 

(n) a mark containing the word or expression: "Patent", "Patented", "registered", "registered Design", "copyright" or "Imitation is forgery" or similar words and expressions; 

(o) a mark containing national and foreign decorations, coins and paper currency; or 

(p) a mark that constitutes a translation or imitation of a well-known mark or the main part thereof or other previously registered mark, where the registration would confuse consumers as to the identity or origin of the goods or services that are distinguished by the mark or similar goods or services" (art 44).

The Commissioner of Intellectual Property ("the Commissioner") may levy a $5,000 fine upon anyone using a mark that falls within sub-paragraphs (d) to (p) pursuant to art 48 (1) and art 59 (see my Introduction to, and Overview of, the New DIFC Intellectual Property Law of 11 Dec 2019).

Well Known Marks
Art 45 (1) of the DIFC Intellectual Property Law protects well-known trade marks of international reputation ("well-known marks") that surpass their country of its origin and acquires fam in a relevant sector among consumers in the UAE. The decision as to whether a mark is or is not a "well-known mark"appears to be one for the court.   In making that decision, art 45 (2) enables the following factors can be taken into account{

"(a) the degree of public knowledge or recognition in a relevant sector; 

(b) the duration, extent and geographical area of use; 

(c) the duration, extent and geographical area of any promotion of the goods or services to which the trademark applies; 

(d) the duration and geographical area of any registrations, or any applications for registrations, to the extent that they reflect use or recognition of the trademark; 

(e) the record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark was recognised as well known by competent authorities; or 

(f) the commercial value associated with the trademark."

Nobody may use a mark that is identical or confusingly similar to a well-known trade mark in the DIFC (art 45 (3)).  Transgressors of this rule can be fined US$15,000 by the Commissioner.  

Owners of well known marks also have the following rights of action under art 45 (4) and (5):

• the right to prevent any party from using in the DIFC identical or confusingly similar marks, to distinguish goods or services that are not identical to those in respect of which, the well-known trade mark is registered, if: 
• the use of the mark indicates a possible connection between goods or services and the owner of the well-known trademark; and 
• the interests of the owner of the well-known trade mark are likely to be damaged by such use; and
• the right, to prevent another person’s commercial use of a mark or trade name in the DIFC, if such use began after a well-known trade mark has become well-known and the use of the mark or trade name causes dilution of the distinctive quality of the well-known trade mark.

The Commissioner can fine anyone using a trade mark in a way that may cause dilution to a well-known trade mark US$15,000.

Trade Mark Owner's Rights of Action
Art 46 confers upon the proprietor of a trade mark that is registered in the United Arab Emirates the exclusive right to exclude others from the import, export, use, sale, offer for sale, advertising, transit, distribution or use in any manner of goods or services distinguished by an identical or confusingly similar trade mark 

Defences
Art 49 provides that the following acts shall not infringe a trade mark or well-known mark:

"(a) to indicate the intended purpose of the goods or a service related thereto, provided that such use is necessary and in good faith;
(b) in news reporting, news commentary or parody; or
(c) by another person in comparative commercial advertising or promotion to identify competing goods or services, provided that such use is in good faith and in accordance to honest practices in commerce."

Should a defendant allege that the trade mark in suit is invalid or should be cancelled for other reasons, art 48 (2) requires him or hee to must issue proceedings in a court with jurisdiction to cancel the registration and satisfy the DIFC court that there are clear and solid grounds for such proceedings.  If he or she does so, the infringement proceedings in the DIFC will be stayed until the court of competent jurisdiction has ruled on the cancellation claim.  If the defendant does not do so, the infringement proceedings in the DIFC will continue.

Punishable Infringements
The following infringements are punishable with the following fines:

• US$30,000 for "counterfeiting or imitating" a registered trade mark, or a well-known trade mark, with the intent or effect of misleading the public (art 48 (1) (b));
• US$25,000 for unlawfully using a registered trade mark or a well-known trade mark without the proprietor's consent (art 48 (1) (c));
• US25,000 for unlawfully using a trade mark that is confusingly similar to a registered trade mark with the intent to, or effect of, causing confusion and misleading the public (art 45 (1) (d))'
• US$25,000 for knowingly selling, offering for sale or possessing with purpose of selling goods or services bearing a trade mark, or well-known trade mark, that is counterfeited, imitated or unlawfully used (art 48 (1) (e),

Licensing
Art 47 (1) permits the owner of a trade make by a written instrument, grant a licence to any person to use the trade mark for all or part of the goods or services in respect of which the trade mark is registered.   The owner of the trade mark may also use the mark contemporaneously with the licensee unless otherwise agreed in writing (art 47 (2).  Such a licence is known as a sole licence as opposed to exclusive licences which can be used by the licensee to the exclusion of the licensor and all other persons and non-exclusive licences that can be used by the licensor and any number of licensees.   

A licensee may not assign its rights to any other party, or grant a sub-licence in respect thereof, unless expressly allowed by the terms of the licence agreement (art 47 (3)).

Unless the licence agreement provides otherwise, a licensee is entitled to call on the owner of the trade mark to take infringement proceedings in respect of any matter which affects the licensee’s interests by virtue of art 47 (5) If the owner refuses to act in accordance with a request by the licensee, or fails to do so within two (2) months of being called upon to do so, the licensee may bring such proceedings in his or her own name, as if he or she were the registered owner of the trade mark.

Any act of a licensee in contravention of a licence agreement shall constitute trade mark infringement pursuant to art 47 (4) and may be punished by the Commissioner with a US$30,000 finr.

Trade Names
A trade name is defined in the table to paragraph 3 of Schedule 1 "as every name used in trade to designate particular business and registered with the competent authority."  Art 50 requires of persons registered, incorporated, licenced or permitted to operate in the DIFC to comply with the provisions of the Operating Law (DIFC Law No 7 of 2018) in relation to trade names, and to display such names conspicuously displayed on the façade of their business premises in the DIFC. Failure to display the name in accordance with the law attracts a fine of US$5,000.   Art 51 enables the Commissioner to resolve any conflict between a trade name registered in the DIFC and a trade mark, or a well-known Trademark, which is likely to damage the interests of a person, cause confusion or mislead the public.   Failure to comply with an order of the Commissioner to change a trade name in conflict with a trade mark may be punished with a fine of US$10,000.

False Claims
Art 48 (1) (f) prohibits falsely representing that a mark is registered as a trade mark, or as a well-known trade mark, or making any statement with the intent or the effect of leading others to such a conclusion.  The Commissioner can impose a US$5,000 fine for such misconduct.

Comment
Because DIFC law differs from English and EU trade mark law in a number of important respects, particular care should be taken in drafting a trade mark licence or assignment or a franchising, distribution or other agreement to be governed by DIFC law or likely to affect the DIFC.   Should it be necessary to enforce a trade mark or resist enforcement proceedings in the DIFC courts, members of the bar of England and Wales in good standing can obtain quickly and easily the right to appear before those tribunals. Actions to cancel UAE trade marks will have to be undertaken by Emirati lawyers.

Anyone wishing to discuss this artiucle or DIFC law generally should call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my comtact form;  

Dubai Smart City Accelerator

Dubai Fort

Author Kimon Berlin
Licence Creative Commons Share-Alike 2.0 Generic

Source Wikipedia Dubai

Jane Lambert

The Dubai Silicon Oasis Authority, which manages a free trade zone for information and communications technology businesses in the emirate, has invited applications for its Smart City Accelerator which will run from September 2019 to January 2020. This is not the first accelerator programme to take place in Dubai.  I reported on the DIFC's financial technology programme in FinTech in Dubai on 3 Aug 2017.

According to the Authority's press release:

"This year, scouts are particularly on the lookout for startups that specialize in 5G applications, connected stadiums, smart retail, smart airports, and smart payments. However, the program is open to applicants from across the spectrum of smart city solutions, including internet of things and connectivity, urban automation and mobility, artificial intelligence, blockchain, open city data, sustainable cities and living, and smart government."

The Accelerator will be run by Startupbootcamp which operates a number of accelerators around the world.

The Startupbootcamp web page offers 10 selected companies hands-on mentorship from over 100 industry experts, office space in Dubai, seed funding, and access to a global network of investors and corporate partners from across the Smart City industries.  The successful candidates will need to know about registering trade marks in the United Arab Emirates and their leading markets around the world as well as the various ways of protecting their investment in technology. It is not clear from the announcements by the Authority or operator who will supply that guidance or whether it will be supplied as part of the programme but I shall be glad to advise them individually or collectively by phone, Skype or otherwise if necessary.

The closing date for applications is 30 June 2019.  This post links to the application page,

Anyone wishing to discuss any of these issues should call me on +44 (0)20 7404 5252 during London office hours or they can contact me through my message form.

Saudi Arabia Trade Mark Law

In my Overview of Saudi IP law of 22 May 2011 I noted that Saudi Arabia does not have an intellectual property as such and that responsibility for protecting brands, technology and works of art and literature is shared by the Ministry of Commerce and Indutry, The King Abdulaziz City for Science and Technology and the Ministry of Culture respectively.

The Ministry of Commerce and Industry is in Riyadh. There is a Trade Marks section which can be contacted at +(966 1) 206 9449.  The Ministry has now translated into English some of the relevant legislation. WIPO has published statistics for patent, designs and trade mark grants and applications up to 2011.

The UAE's Bilateral Investment Treaties

A bilateral investment treaty ("BIT") is an agreement between two governments on the terms by which the nationals of each contracting party may invest in the territory of the other.   A typical BIT will oblige each government to accept investments from the nationals of the other, to treat such investments no less favourably than those of its own nationals or those of the investors of any other country, not to expropriate such investments without adequate compensation and to submit any dispute with an investor to arbitration through the International Centre for the Settlement of Investment Disputes ("ICSID").

BITs have existed for over 40 years but their potency first emerged in a claim by the US waste disposal company Metalclad Insulation Corporation ("Metalclad") against the Mexican government for compensation for the the refusal by the local and state authorities of permission to use a landfill site that Metalclad had acquired near the small town of Guadalcázar, San Luis Potosi for the disposal of toxic waste. Metalclad claimed that the refusal of planning permission amounted to "expropriation" of the landfill site and in their award of 30 Aug 2013 the arbitrators held that the company was right. They ordered the Mexican government to pay Metalclad US$16,685,000. Mexico challenged the award in the courts of British Columbia which was the province in which the arbitrators had sat and won a modest reduction of the damages but the result was seen as a victory for a medium size company against a sovereign government.

Since Metalclad there has been a spate of claims by private companies against states under BITs and some of these relate to intellectual property.   Legislation by the governments of Uruguay and Australia to discourage smoking by requiring cigarette companies to package cigarettes with graphic warnings in the case of Uruguay and plain packaging in the case of Australia have been challenged by the tobacco giant Philip Morris under Uruguay's BIT with Switzerland and Australia's with Hong Kong for expropriation of the multinational's trade marks in those countries. In the claim against Uruguay the arbitrators have recently decided that they have jurisdiction to entertain the claim (see their decision of 2 July 2013 to that effect).   In the claim against Australia the case is proceeding in the Permanent Court of Arbitration in the Hague. Both sides have instructed counsel, the claimants members of the English Bar and the Australians barristers from Australia (see the notice on the PCA's website and Philip Morris's press release of 21 Nov 2011.

The latest claim for compensation in respect of intellectual property is Eli Lilly & Co's for C$500 million against the Canadian government for the invalidation by the Canadian courts of two of its Canadian pharmaceutical patents.   Eli Lilly complains that the Canadian courts have developed a doctrine on utility called the "promise doctrine" which exists nowhere else in the world and results in the invalidation of patents that would be allowed elsewhere.  In Eli Lilly's submission such invalidation amounts to expropriation of its patents without adequate compensation and it has served a notice of intent to claim dated 13 June 2013.  I have written a short article on the claim in "Biting Back: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for Failing to provide Adequate IP Protection" 27 July 2013 as well as a more detailed article that has been accepted for publication in the EIPR.

In my article for the EIPR I have argued that if the invalidation of Eli Lilly's patents and indeed the refusal of planning permission for the use of Metlclad's landfill site amounts to "expropriation" then so too would the failure by a government to provide adequate intellectual property protection.   In this regard, it is worth remembering that the United Arab Emirates has 24 BITs including agreements with the following brand owing and design and technology exporting states:

• Austria
• China
• Finland
• France
• Germany
• Italy
• South Korea
• Switzerland, and
• the UK.

It is of course worth remembering that BITs can work both ways.   The UAE has BITs with newly industrializing countries such as Bangladesh, Malaysia, Turkey and Vietnam where the Emirati interest is likely to be similar to those of investors from developed states. Similarly, Emiratis have substantial investments in stocks and real estate in London and other European capitals to which these BITs apply.

Should anyone wish to discuss this article, BITs in general or a particular issue call me on +44 (0)20 7404 5252 during office hours London time or fill out my contact form.   You can also follow me on Facebook, Linkedin, twitter 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.

Du Trademark: Trade Mark Law in the UAE

DuTrademark Group describe themselves as "a group of trademark professionals who network and share there knowledge also exchange business after building a trust between each other". They offer a range of services including searches, advice and representation on trade mark law in Afghanistan and Algeria as well as the United Arab Emirates.

They have written a very good article on trade mark law in the UAE which discusses the local legislation and practice.

If you want to discuss this article further, their contact details are:

Horwath Mak
International Trademark & Patent Attorneys
1403, Al Reem Tower,
Al Maktoum Street,
Deira,
P O BOX 82315,
Dubai,
UAE.
Email: info@dutrademark.

Phone 971 (4) -236-7588 or +971 (4) -236-7589

Qatar Intellectual Property Law

Last Saturday morning I listened to a report on BBC Radio 4 by Razia Iqbal about the Qatar Philharmonic. This is the first and so far only symphony orchestra in the Gulf and it is developing an enviable reputation.  The great American conductor Lorin Maazel is said to have rated it among the great orchestras of the world.  Certainly they seem to have been very received in London as this YouTube clip from their performance of Marcel Khalife’s Arabian Concerto at the Royal Albert Hall, London, on 8 April 2010.shows.

The Qatar Philharmonic is just one of a number of cultural initiatives in this tiny kingdom. In her programme Iqbal discussed several of the others grouped in the Katara Cultural Village, a complex of museums, theatres, academies and auditoriums just outside Doha.   The cultural village is itself one of a number of other initiatives to transform Qatar's society and economy.   Others include the Qatar Financial Centre, the educational cluster with local campuses of no less than 8 first rate universities including University College London and the Qatar Science and Technology Park.  

These initiatives complement an active foreign policy and, of course, the international broadcasting service, Al-Jazeera which, together, have contributed greatly to political change throughout the Middle East and North Africa. With a land area slightly smaller than that of Yorkshire and less than half that county's population, Qatar punches well above its weight.

The cultural, educational, scientific and technical initiatives discussed above will flourish only with a strong intellectual property base.  Qatar has been a member of the World Trade Organization and hence party to TRIPS since 1 Jan 1996. It is party to the Berne and Paris Conventions though not to Rome but it has signed up to the WIPO Phonograms and Performances Treaty as well as to the WIPO Copyright Treaty. In accordance with TRIPS Qatar has enacted:

• Law No. 7 of 2002 on the Protection of Copyright and Related Rights;
• Law No. 9 of 2002 on Trade Marks, Trade Names, Geographical Indications and Industrial Designs the text of which is available only in Arabic; and
• Decree Law No. 30 for the year 2006 To Issue Patents Law.

Qatar is, of course, party to the Gulf Co-operation Council and enforces patents issued by the the GCC Patent Office in its territories. Patents, copyrights and semiconductor topographies  appear to be the responsibility of the Ministry of Justice while trade marks, designs and geographical indications are the responsibility of the Ministry of Business and Trade.

Should anyone wish to discuss this topic further he or she can call me on +44 161 850 0080 or fill in my contact form. He or she can also contact me through Facebook, Linkedin, Xing or twitter.

Intellectual Property Law in Oman

Oman has an estimated population of 3.6 million in a land area of 309,501 square kilometres. It is a member of the Gulf Co-operation Council ("GCC") and the World Trade Organization ("WTO"). Formerly one of the least developed states in the Gulf, the Sultanate has made such rapid progress since 1970 in economic, political and social development that the United Nations Development Programme acclaimed Oman as the most improved country in the world (see the UNDP Human Development Report for 4 Nov 2010).

Treaties

As a member of the WTO Oman is party to TRIPS (the Agreement on Trade Related Aspects of Intellectual Property Rights) and is thereby bound by the obligations discussed in my article on "Intellectual Property Law in Kuwait". As a member of the GCC, the GCC Patent Regulation and Implementing Bylaws apply in Oman. Oman is also party to the Paris and Berne Conventions, the WIPO Copyright and Performances and Phonograms Treaties, the Patent and Trademark Law Treaties, the UPOV Convention and the Patent Co-operation Treaty, Madrid Protocol and Hague Agreement (see the WIPO Treaties Contracting Parties page for Oman).

Legislation

Oman implements its obligations under those treaties through a number of Royal Decrees made in 2000 on patents, copyrights and neighbouring rights, trade marks and unfair competition, industrial designs, geographical indications and semiconductor topographies. The Sultanate's copyright law has been supplemented by Royal Decree No. 65/2008 Promulgating the Law on Copyright and Related Rights and its law on industrial property rights by Royal Decree No 67/2008. Royal Decree No 49/2009 on the protection of plant breeders' rights has come into effect this year the text of which is available in Arabic.

Intellectual Property Office

The Ministry of Commerce and Industry is the intellectual property office for the Sultanate. The English language page of the Ministry's website suggests that it will soon be possible to file patent, utility model and trade mark applications on-line.

Dispute Resolution

Oman has enacted robust arbitration legislation which would resolve licensing, joint venture and other disputes relating to intellectual property. A press release on 16 March 2010 indicated that the Oman Chamber of Commerce and Industry planned to establish an international arbitration centre in the country. A delegation from the Bar of England and Wales visited Oman in December 2010 (see the Bar Council's press release of 3 Dec 2010).

Further Information

Oman is a country of considerable potential and one that I follow particularly closely. Anyone who wishes to discuss this article or any other issue concerning intellectual property law in the Gulf should call me on 0800 862 0055 or complete my contact form.

Intellectual Property Law in Kuwait

Kuwait has an estimated population of just under 3.6 million in a land area of 17,820 square kilometres. It is one of the member states of the Gulf Co-operation Council ("GCC") (see "Gulf Co-operation Council Constitutional Framework" 10 June 2011 and "Patents: Gulf Co-operation Council" 20 Jan 2011).

International Obligations

This small but significant country is one of the founding members of the World Trade Organization ("WTO"). As such it is party to TRIPS (The Agreement on Trade Related Aspects of Intellectual Property Rights) which requires WTO members to give effect to the provisions of that agreement. That includes

• complying with arts 1 to 12 and art 19 of the Paris Convention for the Protection of Industrial Property ("Paris Convention") pursuant to art 2 (1) of TRIPS;
• complying with arts 1 to 21 of the Berne Convention for the Protection of Literary and Artistic Works ("Berne Convention") pursuant to art 9 (1) of TRIPS;
• protect the work of performers, sound recording studios and broadcasters in accordance with art 14 of TRIPS;
• provide for the registration of trade marks pursuant to arts 15 to 21 of TRIPS;
• protect geographical indications pursuant to arts 22 to 24;
• protect industrial designs pursuant to arts 25 and 26;
• provide patents for inventions in all fields of technology provided they are new, involve and inventive step and are capable of industrial application pursuant to arts in accordance with arts 27 to 34;
• protect semiconductor topographies in accordance with certain provisions of the Treaty on IP in Respect of Integrated Circuits ("the Washington Treaty") pursuant to arts 35 to 38 of TRIPS;
• protect undisclosed information pursuant to art 39; and
• provide civil remedies, criminal sanctions and other provisions for the enforcement of intellectual property rights under Part III of the Agreement.

Kuwait has been a member of the WIPO since 14 July 1998 but it does not appear to be party to the Paris or Berne Conventions or the Washington Treaty. Indeed, the only convention listed on the WIPO website to which Kuwait is party is the WIPO Convention.

The Kuwaiti government has entered a number of bilateral investment treaties with a number of countries (though not with HM government) which usually require the protection of intellectual property. Citizens of either party can sometimes claim compensation in ICSID (International Centre for the Settlement of Investment Disputes) against the government of the other party for non-compliance with such a treaty (see Metalclad Corp. v Mexico (30 Aug 2000)).

Legislation

A summary of Kuwait intellectual property laws and related legislation appears in WIPO lex. The main statutes appear to be:

• Law number 4 of 1962 relating to patents, designs and industrial models as amended by law number 3 of 2001 (Arabic and English);
• Law number 64 of 1999 concerning intellectual property rights (Arabic and English); and
• Decree number 68 of 1980 on trade marks as amended by decree no 10 of 1987 (Arabic only).

As Kuwait is party to the GCC, the Patent Regulation and the Implementing Bye-laws of the GCC will also apply.

Dispute Resolution

Industrial property disputes can be resolved through arbitration pursuant to Law No. 11 of 1995 regarding judicial arbitration with respect to civil and commercial matters (Arabic and English). The Kuwait Chamber of Commerce and Industry appears to provide arbitration services.

Intellectual Property Offices

According to WIPO the competent authority for patents and trade marks is the Trade Marks and Patent Department of the Ministry for Commerce and Industry at PO Box 2944, Safat 13030, Kuwait City, Tel +956 22 42 44 26. That Ministry is also responsible for copyright policy.

The GCC Patent Office is at the GCC Offices, PO Box 340227, Riyadh, Saudi Arabia 11333 (see Patents: Gulf Co-operation Council 20 Jan 2011).

Further Information

Anyone requiring further information about this article should call me on 0800 962 0055 or use my contact form. I have two contacts in Kuwait to whom I shall be glad to refer any enquiries on any substantial issue of Kuwaiti law.

Saudi Arabia: Overview of Intellectual Property Law

Saudi Arabia has been party to the Berne Copyright and Paris Industrial Property Conventions since the 11 March 2004 and a member of the World Trade Organization since 11 December 2005.

Its basic intellectual property statutes are:

• the Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs;
• the implementing regulations on copyright; and
• the Law of Trade Marks

Unofficial translations of these statutes and other legislation are to be found on the Saudi Arabia resources page of the WIPO website.

There is no intellectual property office as such. Patents, industrial designs, chip topographies and plant varieties are registered by the The King Abdulaziz City for Science and Technology ("KACST") which is also the Saudi Arabian national science agency, national laboratory and internet authority for the .sa country code top level domain. Trade Marks are registered by a department of the Ministry of Commerce known as the Trademarks Register while copyright and related rights are the responsibility of the Ministry of Culture.

According to the statistics page of the KACST website, there were 931 patent and 493 industrial design applications in 2010 and 262 patents and 412 design registrations were granted in that year.

Further information on Saudi Arabian intellectual property law can be obtained from Jane Lambert