Abu-Ghazaleh Intellectual Property Bulletin, March 1997

UAE: Winning a Trademark Case on the Basis of Local Registration

When you are about to believe that there will be no more intellectual property cases, thanks to the increasing awareness of the importance of protecting intellectual property, a case upsets you simply because the owner of a trademark did not think seriously of registering it, perhaps as a result of high registration costs.

And if you were satisfied with the outcome of the first case under the new trademark law of the United Arab Emirates (UAE) about a year ago, here is a case for contemplation. The "PRC Company" of Thailand adopted the trademark "PEACOCK word and device" and registered it in 1985 in Thailand as well as in a number of other foreign countries, not including the UAE. Since then, PRC exported rice under the peacock trademark to "Importer 1", a company with a similar trade name registered in the UAE.

The "SBR Company" also from Thailand, did not register the peacock trademark, but exported rice under such a trademark to "Importer 2" in the Emirates. The latter was aggressive enough to claim ownership of the mark and to initiate a case with the Court of First Instance against "Importer 1" for unauthorized sale and stocking, of rice under the peacock trademark.

Although "Importer 2" lost the case, they proceeded to register the trademark in the UAE which was in fact registered in 1993 without any opposition. On this basis, "Importer 2" succeeded in appealing the initial case and won the appeal against "Importer 1" at the Court of Appeals. Prejudiced by the verdict of the court, and confident of a just case, "Importer 1" approached the Court of Cassation for a judgement. Depending only on the evidence in the dockets of the first instance and appeal cases, the court ruled in favour of "Importer 2", who registered the trademark and used it in the country. The court did not heed registration and use of the trademark in foreign countries.

This case proves that local registration of a trademark supports use by the registrant and leads to winning a trademark case in the U.A.E. But would "Importer 2" contest the ownership of the trademark within the 5-year period open by the law for initiating a trademark registration cancellation action?

AGIP Managing Partner, Luay T. Abu-Ghazaleh will attend the Pharmaceutical Trademark Group conference (PTMG) in London scheduled March 17-18, 1997. He will also attend the Institute of Trademark Agents (ITMA) conference to be held from March 19-22, 1997.

AGIP SILVER JUBILEE

You should be receiving invitations to our 25th anniversary celebration to be held in London, England, on July 14th, 1997, featuring a comprehensive intellectual property seminar, roundtables and live classical music concert. For more information or enquiries, or if you have not received an invitation and wish to attend, please contact our regional office in Amman, Jordan, at the address, fax or e-mail printed on the back page of this bulletin.

In this Issue:

UAE: Winning a Trademark Case on the Basis of Local Registration - page 1
Bahrain IP Conference - page 1
Eid Al-Adha - page 2
DOMINICA Registration Requirements - page 2
CALENDAR - page 2
AGIP visits New Zealand, Korea and Japan - page 3
AGIP Managing Partner to attend PTMG and ITMA Conferences - page 3
AGIP Silver Anniversary - page 3

Notice of Holiday

The Moslem World will be celebrating EID AL-ADHA next month, marking the end of the Pilgrimage of Moslems in Mecca. Our offices throughout the Arab world will be closed from April 17th until April 20th, 1997.

Legal Angle

SAUDI ARABIA'S Intellectual Property Laws - page 4
DUBAI: A Fax is an Acceptable Proof Document! - page 5

Registration Requirements for DOMINICA

AGIP's Registration Requirements Worldwide, 1997, was distributed to clients at the beginning of the new year. We would like to make a correction, kindly pointed out by an associate firm. In the index page, the Dominican Republic has been mistaken for Dominica. While the registration requirements are featured for the Dominican Republic, there is no mention of requirements for Dominica. AGIP regrets the error. The registration requirements for Dominica are:

TRADEMARKS

1. A power of attorney simply signed by the applicant.
2. A statement of use or intent to use.
3. An affidavit as to entitlement to use the trademark.
4. In case of confirmation, a certified copy of a UK registration certificate.

PATENTS

1. A power of attorney signed by the applicant.
2. A notarized declaration by the applicant.
3. Specification and claims in triplicate in English.
4. Drawings in triplicate.

For confirmation of a UK Patent

1. A power of attorney signed by the applicant.
2. An application including a notarized declaration or an affidavit signed in the UK or any UK dominion.
3. A certified copy of the UK patent including the specification and drawings.
4. Certification of the Comptroller of UK Patent Office giving full particulars of the UK Patent.

Calendar

New Zealand Visit Feb 27 - Mar 4, 97
LES Symposium, KOREA Mar 17-21, 97
PTMG Conference Mar 17-18, 97
ITMA Conference Mar 19-22, 97
JAPAN Visit Mar 22 - Apr 5, 97
EID AL-ADHA Apr 17-20, 97
BAHRAIN IP Conference Apr 21-24, 97
AGIP 25th Anniversary Jul 14, 1997

AGIP Visits...

...NEW ZEALAND...

Following a visit to Sydney, Melbourne and Brisbane Australia last month, AGIP Communications Comptroller, Ms. Sana Al-Fahoum, has headed for Auckland and Wellington, New Zealand where she will remain until March 4th, 1997. She will be meeting clients, old and new, in order to assess the efficiency and quality of our services, and determine whether there is room for improvement.

...KOREA...

Ms. Al-Fahoum will attend the LES International Symposium on Technology Transfer and Intellectual Property, to be held in Seoul from March 17-21, 1997.

...and JAPAN...

Ms. Al-Fahoum will then visit Tokyo on March 22, where she will meet with clients until April 5, 1997.

Contact our Regional Office in Jordan if your office, in any of the above countries, wishes to meet with our representative.

DUBAI: A Fax is an Acceptable Proof Document!

The Dubai Appellate Court Lays Down a Legal Principle

The Appellate Court of Dubai has laid down an important legal principle in the field of commercial transactions which dictates that sending a fax is similar to sending telegrams and is therefore considered evidence in the laws of Evidence and Proof.

One can no longer claim that a fax is a copy in order to reject its value. This would otherwise conflict with the need to use such messages in internal and external trade which the legal legislator aims to develop in this modern age of telecommunications.

SAUDI ARABIA's Intellectual Property Laws

Copyright Law No. 30

According to this law, protection is obtained as from the date of registration. Part (6) of this law contained the penalties imposed in case of infringement. Article (28/1) provided that an infringer on copyrights shall be punished with a fine not exceeding SAR 10,000 together with closing the commercial shop or printing press which participated in copyright infringement for a period not exceeding (15) days, or with one of those penalties. If the crime is recommitted, paragraph (2) of the same Article provides that a person who recommits such a crime shall be punished with a penalty not exceeding the penalty provided for in Article (1) and with closing the commercial shop or printing press for a period not exceeding (90) days or with one of those penalties. In both cases, a financial compensation shall be granted to the author.

Paragraph (3) of the said Article also provides that the committee, formed according to Article (30) under the Minister's decision to investigate the violations and composed of a number of members not less than three, among whom there shall be a legal counsel, shall have the authority to issue an order at the author's request, to confiscate and destroy all copies of the work and other products considered by the committee to have been intended for committing infringement.

The Committee may also issue a precautionary decision to put an end to publication or any other order it deems necessary for protecting copyrights. This procedure is precautionary pending the issuance of a final decision on the infringement.

Article (30/2) provides that Committee decisions are adopted by the majority of votes. A Committee decision shall not be enforceable except after being sanctioned by the Minister. A convicted person may appeal the Committee's decision within (60) days as from the date of being notified of the decision.

Article (29) of the same law provides that the control and execution of penalties shall be according to the provisions of the Implementing Regulations of this law.

Patents of Invention Law No. 38

Patents of invention acquire legal protection as from the date of registration. Article (22) of the said law provides for the right of the patent owner to file a suit against any person who utilizes his patent without permission. Utilization includes manufacturing, sale, offering for sale, or using a product or holding it for sale.

Article (47-55) of this Law provide for the penalties related to patent infringement and the trial procedure. It provides that any act committed under Article (22) without the approval of the patent owner in relation to ownership is considered an infringement. The Committee (formed according to Article (48) and consisting of three lawyers and two technical experts whose grades are not below (grade 12) investigates any lawsuit filed by the patent owner and determines the amount of damages. The Committee can impose a penalty not exceeding SAR 50,000 which can be doubled in the event that such an act is repeated. The Committee can also take any measure it deems appropriate to prevent damage resulting from infringement. The decision issued by the Committee shall be published in two local daily newspapers at the expense of the losing party.

Article (49) provided for the Committee's authority to investigate all disputes and resolutions issued in respect of patents. The Committee also investigates penal lawsuits relating to the violations of this law, and may seek expertise to assess the damages resulting from any infringement. The Committee's decisions are issued by the majority of votes as per Article (55) of the law, and has jurisdiction over any violation or infringement nor provided for in the law, so that it implements the general principles of the laws in force in the Kingdom. The Committee's decision can be appealed within 60 days as from the date of notifying the party concerned of the decision.

The Marks Law Issued under Royal Decree No. M/5

Trademark matters in the Saudi Arabia are governed by the Trademarks Law and its Implementing Regulations issued under Ministerial Order No. 94.

Trade Names

There is no law which deals with, and regulates, the trade names in the Kingdom of Saudi Arabia. Only some matters related to trade names were dealt with the Companies Law and in the Saudi Commercial Register Law issued under Royal Decree No. 21/1/4470 and its Implementing Regulations which rendered the registration of trade names obligatory, and regulated some issues relating thereto.

In addition, there are some laws which deal with infringement, among which is the Commercial Counterfeit Law issued under Royal Decree No. (11) to curb imitated goods in shape, colour or mark similar to the original goods. Article (1) of this law provided that among deceitful and misleading methods is describing a commodity, advertising it or exhibiting it through a method which demonstrates untrue or misleading data, in addition to cheating or counterfeit in the commodity itself, its nature, type, components, or essential qualities, and deceiving as to the source of commodity and using means or methods which make this untrue.

A person who violates the provisions of Article (1) of this law shall be punished with a fine of SAR 5000-100,000, together with closing the shop for period not less than one week and not exceeding 90 days, or with those two penalties.

Any person who imports any counterfeit or spoiled goods, shall be punished with the same penalty, and the importer shall be ordered to re-export such goods unless he removes the counterfeiting. Article (12) also provides that the commercial counterfeiting law supposes that the infringer knows that the goods are counterfeit if he is a merchant , unless he proves his good intent. The buyer's knowledge of this does not prevent imposing the penalties provided for in this law on the violator.

In addition, the principle of unfair competition set forth in the general principles of law can be relied on, where filing a lawsuits is on the basis of unfair competition in the absence of legal registration of intellectual property rights, such as registration of patents, marks and copyrights at the competent departments, and also when there are no committees specialized in the dispute settlements.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.