Abu-Ghazaleh Intellectual Property Bulletin, June 1997

UAE: First Infringement of a Granted Patent

"A Taiwanese filches the idea of the "Godpraiser Electronic Device" and manufactures it in his home country."

The Dubai Public Prosecutor's Office has finished with investigating an infringement by a Taiwanese national upon a patent registered in the United Arab Emirates since 1994 and causing big losses for the patentee as a result of the infringement, manufacture and sale of the lower-quality product in the markets.

In this issue
l AGIP Silver Anniversary -page 1
l UAE: First Infringement of a Granted Patent -pages 1-2
l In Brief, From our International Office -page 3

Legal Angle

l Arab Licensing & Technology Transfer Society (ALTTS) -page 4
l Jordan: A New Companies Law -pages 4-5

UAE: First Infringement of a Granted Patent continued from page 1

The Public Prosecutor's Office released the defendant under a bail of Dirham 200,000.00 and referred the case file to the court for review under the provisions of the Penal Code and Patent & Designs Law.

Engineer Mohamed Abdul-Razzaq Matar of the Iraqi nationality filed a complaint with the Public Prosecutor's Office of Dubai regarding the imitation of a product and patent infringement. Mr. Matar claimed that he is the inventor and designer of the Godpraiser Device. The device is an electronic piece inserted in the socket of the car lighter and which recites the riding God-invocation praise when the car is started. It automatically stops when the praise is over.

Mr. Matar added that he designed the device and registered it as a patent with the Industrial Property Administration in Dubai on June 19, 1997 under No. 34/94 since there was no precedence of such an invention. The inventor made the final design and manufactured it in Japan and then marketed it in the United Arab Emirates and the rest of the other countries about a year and a half ago.

The patentee said that he was surprised when he found a spurious product containing the infringed design, ornaments and writing on the genuine product even the voice of the reciter of the invocation-praise who is a well-known Imam in Dubai's Mosques. The spurious product was being marketed at lower prices which are a lot less than those of the genuine product.

Mr. Matar reported that to the Ministry of Finance & Industry. One of the officials in-charge of the Ministry confirmed that this type of infringement took place for the first time and that they do not have a body for such misdeeds. Afterwards, he resorted to Dubai's police who directed the issue to the Trade Department. In turn the officials in-charge requested a commission by a higher authority like the Public Prosecutor's Office so that they may seize the spurious product, and so he went to the Public prosecutor's Office and filed an official complaint report.

Mr. Ali Shamiss, the Attorney General, said that Mr. Abdul-Razzaq Matar reported to the office that he is the inventor of the device and that its factory is in one of the countries of South East Asia. It is being manufactured at his own account under the sponsorship of a company and has been marketed in amounts up to several thousands since 18 months. The genuine product is being sold at a price of Dirhams 50 a piece. A couple of months ago he was surprised to find a similar device in the market manufactured for the same purpose, carries the same name and sells at a price of Dirhams 18 only. He pointed out that as soon as the Public Prosecutor's Office received the inventor's complaint and verified his claims through official documents, the owners of the stores who promoted the spurious product confessed after questioning that there was a person called Kony H of 46 years and Taiwanese nationality who markets the product among car accessories stores. With coordination with Dubai police he was ambushed, apprehended and questioned.

He confessed that he is manufacturing the device in his home country after he took the idea of the invention from a Gulf national who offered him the idea of the device and how it looks and asked him to manufacture it at a lower cost. The defendant denied that he knew that the device is linked to a patent of invention or that it is registered with the Industrial Property Office.

The Attorney General added that the Department for Economic Development carried out a campaign against the stores and seized large quantities of the spurious product.

The defendant was unable to prove his claim that he is manufacturing the device on a request by a Gulf national. The defendant was also unable to determine the name of this person in all frankness or how to contact him.

The Dubai Police Forensic Lab report confirmed that the spurious device is similar in shape and content to the genuine device and that it is difficult for the ordinary person to distinguish the spurious device from the genuine one. The defendant admitted that he manufactured 2500 devices in his home country and exported them to a neighbouring Gulf state and that some stores in Dubai requested some quantities.

The Public Prosecutor's Office charged him with infringing a protected right and selling the object of the patent without prior permission from its owner. The penalty of this crime could be the imprisonment for a period between a month and three years and a fine of no less than Dirhams 50,000.00 or by either of those two penalties.

The owner of one of the big companies in the field of import, export as well as trade of spare parts and car accessories in the state has submitted a guarantee and paid the required bail for the defendant so that he may be released. Also, the owner undertook to bring back the defendant when he is summoned by the Public Prosecutor's Office or the competent court.

Al-Khalij Newspaper, Issue 6573, May 18, 1997

In Brief , From Our International Office

MALAYSIA

At last, the Trade Marks (Amendment) Act 1994 will come into force on July 1, 1997. Service Mark Registrations will be possible in Malaysia. Accordingly, Malaysia will adopt and follow the International Classification of Goods and Services.

BOTSWANA

A new consequence to the new Botswana Industrial Property Act (1996) is that the United Kingdom patents and designs will no longer extend automatically to Botswana. For protection to continue in Botswana, it is now necessary to apply for an extension of granted UK patents or registered UK designs to Botswana within a period of 12 months of the date of entry into force of the act (August 27, 1996). Therefore, the deadline for such filing is AUGUST 27, 1997.

Extension provisions apply to pending UK patent and design applications as well as pending European patent applications designating the United Kingdom.

HUNGARY

The new Trademark Act XI will enter into force as of July 1, 1997. This act will replace the current act which has been effective since 1970. This new act is in line with the Trademark Directive of the EU. The Madrid Protocol will be effective together with the enactment of this new law. Important amendments will come into force in the Patent, Utility Model and Design Laws.

A new definition of the trademark was included in this new law and reads as follows:

"The trademark may consist of any signs capable of being represented graphically, particularly words, including combination of words of personal names, slogans, letter, numerals, design, picture, two or three dimensional device, the shape of the goods, colour, colour compound, light, hologram, sound, provided that such elements or combination of elements are capable of distinguishing the goods or services marked thereby from those of others".

In case of filing applications for letters and numerals, prior use is not a requirement any more.

SINGAPORE

Priority Claim Based on Community Trade Mark (CTM)

The Registrar of Trade Marks Singapore confirmed that a priority may be claimed on an application in Singapore based on a CTM application. The CTM applicant must be from a state to which the convention applications are extended under the relevant provision in the Trade Marks Act. All member countries in the Paris Convention may claim priority.

Applications Based on Benelux

The Registrar confirmed that applications filed in Singapore claiming priority based on a Benelux application will continue. Such application should be filed in Singapore within six months from the date of filing the Benelux application.

INDONESIA

According to an announcement by the Director of the Trademark Office, as of February 1, 1997 renewal applications of trademarks must be accompanied, along with the already requested documents, by a statement issued by a related government office declaring that the trademark is still being used.

This is the usual Statement of Use prepared by the registered owner and legalized at an Indonesian Embassy or Consul.

ARIPO Trade Marks

The African Regional Industrial Property Organisation (ARIPO) Banjul Protocol on Trade Marks came into force on March 6, 1997.

This protocol will allow trade mark applications to be filed with ARIPO, based in Harare, to be extended to any of the designated States in a manner similar to ARIPO Patents.

Currently, only Malawi, Swaziland and Zimbabwe are designated states. Kenya and Zambia hopefully will be joining shortly and eventually all fourteen of the member States of ARIPO.

ALLTS

Founders' Meeting & Seminar

Previously scheduled to take place in Bahrain on the 23rd of April, 1997, ALLTS ( Arab Licensing & Technology Transfer Society) founders' meeting and seminar took place in Amman, Jordan, on May 18, 1997 and was chaired by Mr. Talal Abu-Ghazaleh, the Chairman of Abu-Ghazaleh Group and elected Chairman of ALLTS.

The meeting and seminar proved to be a success with nine countries represented; namely, Egypt, Jordan, Kuwait, Lebanon, Palestine, Saudi Arabia, Syria, United Arab Emirates, and Yemen with foreign participants from Canada, France, Germany, and the United States of America.

The Founders have agreed on a constitution for the ALLTS which closely corresponds with that of LES Germany in order to create the necessary conditions for an application for membership in LES which will be met soon. The Founders have also discussed and approved an action plan which aims at having more than one hundred members of the society no later than October of this year prior to the next ALTTS meeting, which is scheduled to take place in Al-Sharjah, UAE. The aim is to have the rest of the Arab countries not present at this meeting to be represented in the society. The main objective is to have the majority of the members from the industry and around 40% from the legal profession.

The attendees of the meeting, 50% of which were from the legal profession and 50% from the industry sector, universities, research centers, and state societies, showed the highest levels of interest. Discussions took place regarding creating an active dialogue and development of an improved technology transfer system both within the community of the Arab countries and in relation to the outside world. This discussion was an elaboration on one of the major goals of the society which clearly emphasizes entering into extensive reciprocal dialogue on technology transfer questions with licensing experts all over the world and to provide for sufficient educational assistance in order to improve the professional expertise in technology transfer in the Arab Countries.

Jordan: A New Companies Law continued from page 4

Jordan: A New Companies Law

On May 15, 1997 a new Companies Law was issued in Jordan, which will be effective as of June 15, 1997. This new law will supersede any provisions of the previous Companies Law of 1989. It is considered as one of the new laws which aim at encouraging international and local investors to invest in Jordan.

The new important provisions of the new law can be best summarized as follows:

1.The possibility of setting up a new non-profit company.

2.The Article & Memorandum of Association can be signed not only before the Companies Controller but also before any Licensed Lawyer in Jordan.

3.The heirs cannot inherit the tradename of a General Partnership unless the tradename is well-known. continued on page 5

A General Partnership company must have an accountancy system if its capital is more than JD 10,000 (Ten Thousands Jordanian Dinars).

However if its capital is more than JD 100,000 (One Hundred Thousands Jordanian Dinars) which is equivalent to US $140,000 (One Hundred and Forty Thousands US Dollars), then an Auditor shall be appointed.

Upon the approval of the Companies' Controller, the Limited Liability Company can be formed as a "ONE Founder Partner". This concept is considered to be the same as the concept of a "One-Man Company".

A new penalty to be imposed on the Manager of a Limited Partnership Company, if this manager simultaneously holds more than one company with the same objectives. The penalty is between JD 1,000 to JD 10,000 (One Thousands Jordanian Dinars to Ten Thousands Jordanian Dinars which is equivalent to US $ 1,400-14,000.

The number of partners in a Limited Partnership Company must be no less than three partners.

In general, the new law adopted simple procedures in terms of setting up the public share holding companies, as follows:

1. The feasibility study is no longer a compulsory document which should be submitted along with the application form of the company.

2. The Companies Controller has a maximum of 30 days as from the application date of registering the company to give his recommendation to the Minister of Industry and Trade regarding the establishment of the company. Then the Minister of Industry and Trade must give his final decision within 30 days after the controller's recommendation; otherwise, the founders will have the right to consider the company as duly registered.

3. The Founders of the Partnership Company shall elect from among themselves a committee which shall undertake the responsibility of supervising the matters related to the formation of the company.

4. The Founders of the Partnership Company shall pay no less than 20% of the capital and/or no less than JD 100,000 (One Hundred Thousand Jordanian Dinars).

5. The rest of the capital must be paid within three years.

6. The Founders of the banks and the financial institutions must be more than 50 persons.

7. The new law cancelled the capital tax which was mentioned in the Companies Law No. 1 in 1989.

8. The new law did not include any provisions in relation to the trading of the shares, due to the fact that this matter is stated in the Law of the Amman Financial Market.

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.