Intellectual Property - the Gulf perspective
Joycia Young, Partner
WIPO TRAINING OF TRAINERS
PROGRAM
Wednesday 22 December 2010
The Gulf Region
Regional
aspects of IP
laws

Official language is Arabic, all trade mark
documents, court proceedings must be in
Arabic

Laws emanate from the French civil codes

No (common law) of passing off

No official English translation of IP laws

No system of Court precedent

First to file jurisdiction

Impact of legal and non-legal aspects

Limited availability of injunctions

In the UAE, IP laws are Federal and cover trade
marks, copyright, patents and industrial
designs. The laws are enforced at Emirate
level.
International IP
conventions
TRIPS Paris
Berne
PCT
Yes
Yes
Yes
Yes
Bahrain Yes
Yes
Yes
Yes
Qatar
Yes
Yes
No
Kuwait Yes
No
No
No
KSA
Yes
Yes
Yes
No
Oman
Yes
Yes
Yes
Yes
UAE
Yes
Trade marks
IP as valuable
assets

In 2008-09 The Coca Cola Company Limited's
balance sheet highlighted the immense value of
IP assets:
 trade marks with indefinite lives were valued
at USD$6.042m
 goodwill was valued at USD$3.988m
 combined value of these two assets
represented 23% of the company’s total asset
base.

How are a company's valuable IP assets:
 identified?
 protected?
 valued?
 commercialised?
Where does the  On the balance sheet
value lie?
 Through licensing or sale
and transfer
 Used
as security to obtain
debt finance
 Increasing
reliance on IP
assets as a source of
competitive advantage
 Investors
and lenders are
interested in well manage
IP portfolios, a single,
strong patent may present
a number of financing
sources
What is a trade
mark?

In broad terms, a “trade mark” is any sign
capable of being represented graphically which
distinguishes one entity’s goods or services
from those of its competitors.

The US Supreme Court has declared that a
trade mark can be "almost anything at all that is
capable of carrying meaning".
 A trade mark may consist of:
- Words
- GUCCI
- Letters or numbers
- 501, 007, 747
- Designs/logos

In the UAE, Article 2 of Law No. 37 of 1992
incorporating Law No. 8 of 2002 defines a
trade mark as:
“anything which takes a distinct form
comprising names, words, signatures,
letters, numbers, designs, symbols, titles,
stamps, seals, portraits, engravings,
advertisements, packages or any other
mark, or any compilation of these, if this is
used or intended to be used either to
distinguish goods, products or services,
whatever their origin, or to indicate that the
goods or products are attributable to the
owner of the mark by reason of their
manufacturer, selection or trade in them, or
to indicate the provision of a certain
service”
Some
interesting
marks
Intel
Trademark:
The mark consists of a five tone
audio progression of the notes D
FLAT, D FLAT, G, D FLAT and A
FLAT.
Reg. No.
2315261, 16 November 1999
Status:
Registered
Goods and Services:
Computer hardware and computer
operating software,
microprocessors, integrated
circuits and semiconductor devices
Registrant:
Intel Corporation.
Design Phrase:
The mark consists of a five tone
audio progression of the notes D
FLAT, D FLAT, G, D FLAT and A
FLAT.
Twentieth
Century
Fox Film
Fanfare
Trademark:
The mark consists of nine bars of
primarily musical chords in the
key of B flat; the chords
consisting of four, eighth and
sixteenth notes.
Reg. No.:
2000732, 17 September 1996.
Status:
Registered
Goods and Services:
Entertainment services in the
nature of motion picture films.
Registrant:
Twentieth Century Fox Film
Corporation
Design Phrase:
The mark consists of nine bars of
primarily musical chords in the
key of B flat; the chords
consisting of four, eighth and
sixteenth notes.
UPS brown
Trademark:
Design Only (Color)
Reg. No.:
2901090, 09 Nov 2004
Status:
Registered
Goods and Services: Transportation and delivery of personal property by air
and motor vehicle (1920)
Registrant:
United Parcel Service of America, Inc.
Design Phrase:
The drawing is lined for the color brown. The mark
consists of the color chocolate brown, which is the
approximate equivalent of pantone matching system
462c, as applied to the entire surface of vehicles and
uniforms. The mark consists of the color brown alone.
The broken lines indicate the position of the mark and
do not form part of the mark.
Tiffany blue
Trademark:
Design Only (Color)
Reg. No.:
2359351, 20 Jun 2000
Goods and Services:
Jewelry, precious metals (1939)
Leather products (1939)
Registrant:
Tiffany and Company
Design Phrase:
The mark consists of a shade of blue often referred to as
robin’s-egg blue which is used on boxes. The matter
shown in broken lines represents boxes of various sizes
and serves to show positioning of the mark. No claim is
made to shape of the boxes.
Moving Mark
Trademark:
Moving Mark
Reg. No.:
UK no. 2280003
Goods and Services:
Chocolate
Registrant:
Kraft Foods UK Ltd
Design Phrase:
The mark consists of the three-dimensional shape
breaking apart, as shown in the sequence of still pictures.
Copyright
Copyright –
The basics

What is copyright?

There is no copyright in an idea
 Copyright protects the expression of an idea /
facts / news

Copyright is an automatic right
 There is no need to apply to register
- although recordal is possible in many
countries in the Gulf

Requirements:
 Recorded (written or electronic form)
 A work must be “original” (i.e. not copied)
Copyright –
Subject matter

What does copyright protect?

Copyright subsists in:
 literary works (books, report, poems)
 artistic works (paintings, drawings)
 musical and dramatic works
 photographs, sound recordings
 films, software, typographical layout
Ownership of
copyright

Starting point:
 author is the first owner of copyright

Ownership in most countries outside of the
region:
 works owned by employer as a result of:
- statutory provisions; and/or
- assignment provisions in contracts of
employment
 express (or implied) assignment of
commissioned work
Ownership of
copyright

Nuances of regional law
 author is owner of work
 no automatic ownership by employer
- no statutory provision
- no assignment of copyright in (“5 or more or
all”) future works
 assignment must comply with law
- in writing
- specify subject of work …

Retrospective assignments necessary to
transfer ownership from employees / agencies
(after work created)
Copyright –
Practical tips

Diligent use of copyright notices
 © 2010 Joycia Young
 “This work is protected by copyright and may
not be used or reproduced in any form without
the prior consent of the copyright owner”

Copyright recordals
 Ministry of Economy
 A claim of ownership
Copyright –
Photographs
“Anyone who takes a photographs of another has
no right to publish or distribute without
permission of the subject”

Except where the photograph:
 was taken at public event; or
 is of a renowned public or official figure.

Releases should be signed where person being
filmed and/or photographed
“The person in the photograph may permit the
publication of it in newspapers or other
publication media, even without the
photographer’s permission, unless agreed
otherwise”
Franchising
Current
business trends

The IMF predicts solid economic growth of
about 5.5 % expected across MENA region

Decreasing dependence on oil dependence and
the need to diversify economies

Move from a focus on physical asset base to an
intangible asset base

By 2020, GCC population is forecast to grow by
about one third to about 53 million, vast majority
will be under 25

Optimism prevails: US franchisors are still
increasingly looking to the Gulf region for
franchising and growth opportunities
Applicable
Laws









Agency laws
Commercial codes
Companies law
Civil Codes
Judicial Procedural Code
Trade marks law
Trade secrets/unfair competition law
Employment law
Other laws which regulate import of goods, labelling
Local
ownership
requirements

Maximum percentages of ownership in the share capital
of a corporate franchisee by GCC nationals and
foreigners in each country:
KSA
UAE
Oman
Bahrain
Qatar
Kuwait
% of GCC
Ownership of
Franchisee
0
100%
100%
100%
100%
100%
% of Foreign
Ownership of
Franchisee
0
49%
49%
100%
49%
49%
Exemptions

Oman:

100% foreign ownership of an entity is permitted
if the paid up share capital is no less than
Omani Rials 500,000 (US$ 1,300,000) and the
objects of the company aim to develop the
national economy.

Qatar (subject to government approval):

100% foreign ownership of entities is permitted
for certain activities including agriculture,
marketing, advertisement, technology,
education, tourism, healthcare, industrial, or
manufacturing projects.

KSA:

Proposals to allow GCC nationals to own 100%
require enactment by implementing regulations

Proposal to allow foreigners to own 75% are
subject to final approval by Saudi Arabia
General Investment Authority (SAGIA)
Agency laws in
the GCC

Agency laws cover any arrangement in which a foreign
company is exclusively represented by an agent to
‘distribute, sell, offer, or provide goods or services
within geographically defined limits for a commission or
profit’.

Franchise, supply and distribution agreements are often
construed as a commercial agency. Except for in KSA,
failure to register a franchise or supply agreement, is
not an offence and it is preferable for the franchisor if
the franchise or supply agreement is not registered.

Failure to register the agreements in GCC countries
may affect their enforceability against third parties but
not the contracting parties. However, in KSA, failure to
register the franchise agreement is considered an
offence and local Courts will refuse to hear a dispute in
relation to an unregistered agreement.
Registration of
store franchise
& supply
agreements

In order for a store franchise or supply agreement to
be registered under the agency laws of GCC
countries, the following conditions need to be fulfilled:
• the commercial agent must be a National or a
company wholly owned by Nationals of the GCC
country in which the agreement is to be registered;
• the commercial agent must be licensed by the
concerned authorities in the GCC country to
engage in commercial agency activities; and
• the agreement must be notarised, legalised and
legally translated to Arabic.
Implications of
registration

Registration grants certain statutory rights to
commercial agents which cannot be waived or
excluded by contract:
 the agent's right to territorial exclusivity;
 the agent's presumptive right to compensation
in the event of termination even if the term has
been limited by agreement;
 the agent's right to receive commissions on
sales of the products in their designated
territory irrespective of whether such sales are
made by or through the agent;
 the agent may prevent the import of products
into the GCC country where the agent is not
the consignee; and
 effective inability to appoint another agent or
for the franchisor to supply directly until the
dispute is resolved and the existing agency
deregistered.
Governing law
and dispute
resolution

As a general principle, parties are free to
choose governing law.

Courts will apply that law unless inconsistent
with Islamic/Shari’ah law, public order, morals,
or, in KSA, local law.

In KSA, parties are free to choose foreign laws
in relation to agreements that are not subject to
registration (e.g. master franchise/
development agreements). Store franchise, IP
licence and supply agreements that need to be
registered will be subject to KSA law.

Dubai International Financial Centre arbitration
using LCIA rules.
Enforcement
of Foreign
Arbitral
Awards
Enforcement of foreign arbitral awards under
New York Convention:
 All GCC countries are party to the New York
Convention on foreign arbitral awards.
 However, the enforcement of foreign arbitral
awards has not been tested in relation to
franchise disputes.
 Courts will enforce a foreign award only if the
award does not conflict with public order,
morals (including Shari'ah) and in KSA, local
laws.
Countries that
are party to the
New York
Convention
Country
Accession
Entry into force
Bahrain
6 April 1988
5 July 1988
Egypt
9 March1959
7 June 1959
Jordan
15 November 1979
13 February 1980
Kuwait
28 April 1978
27 July 1978
Lebanon
11 August 1998
9 November 1998
Oman
25 February 1999
26 May 1999
Qatar
30 December 2002
30 March 2003
Saudi Arabia
19 April 1994
18 July 1994
Syria
9 March 1959
7 June 1959
United Arab
Emirates
21 August 2006
19 November 2006
Registration of
Trade Mark
Licences

Except for in KSA, the registration of a trade
mark licence is not necessary for the agreement
to be enforceable between the parties.

The primary purpose of registration is so that
the licence may be enforced against third
parties e.g. in the event of infringement by a
third party or a cancellation action based on
non-use, registration will enable the franchisor
to rely on the franchisee's licensed use.

To register a trade mark licence in GCC
countries, the agreement must be signed by
both parties, translated to Arabic and legalised.
Duration of the licence cannot exceed the
validity period of the registered trade mark.
Trade and
corporate
names

Trade names are corporate, or business names
registered by entities often as a legal
prerequisite to carrying on business.

In any given jurisdiction, the ownership and
registration of identical trade marks and trade
names may vest in different parties.
Companies need to protect both.

In the UAE, the trade marks register is
maintained at a Federal level while trade names
may be registered with authorities within each of
the seven Emirates. In Dubai, separate,
unconnected trade name registers are
maintained by DED, JAFZA and DAFZA.

Trade marks registered in service classes (eg
retail services) are often used to challenge
opportunistic trade name registrations
Domain names
Domain names

Domain names are trade marks/trade names in
cyberspace

Arabic domain names launched in October
2010

‫[ مصر‬.egypt in English] in Egypt

‫[ االردن‬.jordon in English] in Jordan

‫[ قطر‬.qatar in English] in Qatar

‫[ السعودية‬.alsaudiah in English] in
Saudi Arabia

‫[ سورية‬.syria in English] in Syria

‫[ تونس‬.tunis in English] in Tunisia

‫[ امارات‬.emarat in English] in the UAE

Domain name recovery actions

UDRP / .aeDRP – arbitration

Complainant must demonstrate that:
 the disputed DN is identical or confusingly
similar to its TM;
 the respondent does not have a right or
legitimate interest in the DN; and
 the respondent registered and used the
domain name in bad faith.
Interesting
decisions
 'ebay.ae' - WIPO held that the use of DN was
an attempt, for commercial gain, to attract
Internet users by creating a likelihood of
confusion with established TM.
 'sonyericsson.ae‘ - WIPO held that the
Registrant, who had not used the DN,
registered it primarily for the purpose of selling
it to the Complainants for more than the outof-pocket costs.
Thanks for
participating.
Any questions?