Design Protection In GCC Countries- Part I
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)
All countries in the GCC afford industrial design protection except for Qatar.
This blog will be dealing with the design registration in the 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”.
Federal Law No. 44 of 1992 which creates 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 together constitute 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.
There exists three basic requirements which a design must meet in order to afford protection in the UAE-
- Industrial Applicability
- Original Power of Attorney which should be legalized 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 legalized 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 a 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 legalized 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 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.
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 published in the Official Gazette.
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.
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.
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, Industrial design is considered to be one which is composed of two-dimensional lines or colors or any three-dimensional shape which constitutes an industrial product or a product of traditional crafts, a special appearance which is not only for functional or technical purposes, this is inclusive of textile designs.
This a prerequisite that 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.
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.
- 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, application number, filing date of the priority application (if in case, any.)
- Original Power of Attorney which should be legalized 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.
Where design applications claim conventional priority- such applications must be filed within six months from the priority date.
Provided that all designs are included in the same class of International Classification of Industrial Designs, multiple design applications are possible in Saudi Arabia.
Just like the UAE, design applications in Saudi Arabia are subject only to formal examination and do not have to undergo a substantive examination. On the fulfillment of formal requirements and payment of the registration fee, the design is registered. There exists no system for publication of the design application.
In case the requirements are not met, opposition proceedings or invalidation trials can be initiated.
In Saudi Arabia, industrial designs are protected for a period of 10 years from the date of filing. Such a term cannot be renewed.
Registration process duration
An average of 10 to 12 months is required to obtain a certificate for design.
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.]