Design Protection In GCC Countries- Part I

Date : January 11, 2020

In the case of the Gulf Cooperation Council (GCC), there exists no cooperation treaty with regard to design protection. This leaves the applicants with the only other alternative, which is, seeking protection by filing separate applications through national patent offices in each of those countries which form a part of GCC. The following countries form the GCC-

  • United Arab Emirates (UAE)
  • Kingdom of Saudi Arabia (KSA)
  • Kuwait
  • Oman
  • Bahrain
  • Qatar

 

All countries in the GCC afford industrial design protection except for Qatar.

This blog will be dealing with the design registration in United Arab Emirates (UAE) and the Kingdom of Saudi Arabia.

Country-Wise Design Registration Details

I] United Arab Emirates (UAE)

In the UAE, industrial designs cover- “any innovative three-dimensional shape that can be used in industry or craft” or “any innovative creation of lines or colors that generates a product that can be used in industry or craft”.[1]

Federal Law No. 44 of 1992 which creates to the Industrial Regulation and Protection of Patents, Industrial Drawings and Designs, protects designs, patents and utility models in the UAE. This law was then replaced by Federal Law No. 17 of 2002 and was further in time amended by Federal Law No. 31 of 2006.

All seven Emirates which together constitute as the UAE (Dubai, Abu-Dhabi, Ajman, Sharjah, Ras al-Khaimah, Umm Al-Quwain and Fujairah) are covered under this Federal Law. If a design is granted under such law, it is protected in all of these seven Emirates.

Design Requirements

There exists three basic requirements which a design must meet in order to afford protection in the UAE-

  • Novelty
  • Inventiveness
  • Industrial Applicability

 

Filing Requirements

  • Original Power of Attorney which should be legalised up to the Consulate of UAE. The same should be filed within 90 days from the filing date.
  • If in case, the applicant is a company or a body corporate, there is a requirement of submitting an extract from the Commercial Registrar of the Memorandum of Association. The same must be legalised up to the Consulate of UAE.
  • For the applicant to obtain a filing date, his/her design application must contain two copies of the design (if it is a two-dimensional design) or two copies of each view (if it is a three dimensional design) along with a request to grant patent.
  • In the case where the applicant is not the designer, a Deed of Assignment from the designer must be submitted and the same must be legalised up to the UAE Consulate.
  • The Priority Document’s certified copy must be filed. The same must be translated into Arabic if the application is in English and it must be translated into both Arabic and English if in case it is in any other language.

 

Priority

Priority rights can be claimed under the Paris Convention within a period of six months from the date of the first filing of the priority application.

 Multiple Applications

There is no possibly of filing multiple design applications. But, one application can include more than just one industrial drawing or design. These drawings or designs must be interrelated in terms of uses and manufacturing. The total number of these drawings or designs must not exceed 20.

 Examination of the Application

 There is no substantive examination of Industrial Designs. Only a formal examination is carried out in this case. Once the application is accepted, it will be publishes in the Official Gazette. 

Opposition

From the date of publication, there is a 60 day period within which any interested parties may oppose the published application. Where no opposition is filed within this period, a certificate of registration is issued comprising of the registration number and the date.

 Validity

A design is protected in the UAE for a period of 10 years. This term is not extendable.

 Registration process duration

In the instance of a smooth registration process, an average of 4 years are required in order to obtain registration.

 Representation

Where the applicant is a foreign applicant, he/she must be represented by a registered Emirati Patent Attorney.

II] Kingdom Of Saudi Arabia (KSA)

In Saudi Arabia, an Industrial designs is considered to be one which is composed of two-dimensional lines or colours, or any three dimensional shape which constitutes an industrial products or a product of traditional crafts, a special appearance which is not only for functional or technical purposes, this is inclusive of textile designs.

Design requirements

Novelty-

This a prerequisite which requires that the design must have not been disclosed to the public in any which way including an obvious display before the filing date or the priority date.[2]

In a situation where the design has been displayed at an international exposition and such exposition is in a country which is a signatory to the Paris Convention, the same must have occurred in the six months preceding the filing date.[3]

 Filing Requirements

  • The Application documents must contain a request for application, industrial design data ( explanations of the industrial design, product types based on Locarno Classification, etc.) and all other related documents.
  • The application must contain details of the applicant a well as the designer. It must include the type of products to which the industrial design will be applied, representation of the design, titles, description and classes according to International Classification of Industrial Designs, country, applications number, filing date of the priority application (if in case, any.)
  • Original Power of Attorney which should be legalised up to the Saudi Consulate. This should be submitted within 3 months from the filing date.
  • An Assignment Deed must be submitted in case the person filing the application is not the designer.
  • The Priority Document’s certified copy must be submitted within 3 months from the date of filing.

 

Priority

Where, design applications claim conventional priority- such applications must be filed within six months from the priority date.

Multiple Applications

Provided that all designs are included in the same class of International Classification of Industrial Designs, multiple design applications are possible in Saudi Arabia.

Examination

Just like the UAE, design applications in Saudi Arabia are subject only to formal examination and do not have to undergo substantive examination. On the fulfilment of formal requirements and payment of the registration fee, the design is registered. There exists no system for publication of the design application.

Opposition

In case the requirements are not met, opposition proceedings or invalidation trials can be initiated.

Validity

In Saudi Arabia, industrial designs are protected for a period of 10 years from the date of filing. Such term cannot be renewed.

Registration process duration

An average of 10 to 12 months are required to obtain a certificate for design.

Representation

Where the applicant is a foreign applicant, he/she must be represented by a registered Saudi Patent Attorney.

[The content of this article is to provide a general insight into the laws pertaining to design in GCC countries as per the research conducted and sources referred to. Specialist advice should be sought with regard to your specific circumstance.]

Author:  Sanika Chandekar- Student of 4th Year BA LLB – Symbiosis Law School, Hyderabad, intern  at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References:

[1]Chapter 3  of the UAE Federal No. 17 of 2002 (“UAE Patents and Design Law”)

[2]Patent Law, Article 59.

[3]Patent Law implementing by-laws, Article 30.

[4]https://www.rouse.com/magazine/news/qatars-approval-of-new-designs-law-and-implementing-regulations/

[5]http://www.mondaq.com/x/4011/Trademark/Summary+of+the+Design+Registration+System+in+Qatar

[6]https://www.tamimi.com/law-update-articles/kuwait-industrial-design-applications-being-processed/

[7]Five-year period for industrial design protection

[8]http://www.mondaq.com/x/117774/Oman+Industrial+Design+Registrations+Are+Now+Available+Finally

[9]http://www.agip.com/Agip_Country_Service.aspx

[10]https://www.tamimi.com/law-update-articles/design-protection-what-businesses-need-to-know/

[11]http://www.kadasa.com.sa/publications/101?type=A_Saudi_Industrial_Design

[12]https://www.ip-coster.com/IPGuides/industrial-design-saudi-arabia

[13]https://www.alhiba.com/countries/kuwait/

[14] http://njq-ip.com/country/kuwait/industrial-designs/general-information/