Qatar has recently introduced Law No. 10 of 2020 (the Designs Law) giving wide-ranging protections to industrial designs (which are effectively the 'get-up' of products, as detailed below). Previously, only limited provision was made for industrial designs in Law No. 9 of 2002 (the IP Law), which provided that industrial designs would have the same protections as trade marks ("in so far as they are no in conflict with their special nature") as the IP Law largely focussed on trade marks. Additionally, the IP Law did not define what an industrial design was, whereas the new Designs Law does. Below we provide an overview of the provisions of the Designs Law.
What is an Industrial Design
The Industrial Designs Law defines 'Industrial Designs and Models' as "any two or three-dimensional composition of lines and colours that gives any industrial or craft product a specific appearance that is not only for a functional or technical purpose" (an Industrial Design).
Who makes an application (and how)
An application for the registration of an Industrial Design needs to be submitted by the creator or the holder of the rights therein to the Industrial Property Protection Office (IPPO) as per the conditions and rules stipulated in the implementing regulations (yet to be published).
If the IPPO approves the registration of an Industrial Design, it will prior to registration publish it in media stipulated in the implementing regulations to the Designs Law (at the expense of the applicant). Concerned parties may, within sixty days, submit to the office a written objection to the registration of the industrial design or model.
The IPPO established by the Ministry of Commerce and Industry is required pursuant to Article 3 of the Designs Law to establish a register to record all Industrial Designs and containing information such as:
- owners' details;
- title assignments or transfers;
- issued licenses and license beneficiaries;
- renewal and deletion information;
- judgments; and
- all other matters in accordance with the rules and procedures stated in the implementing regulations to the Designs Law.
The Designs Law provides that any person shall have the right to view the register of Industrial Designs or request information or extracts therefrom after the payment of certain fees.
Industrial Designs that cannot be registered
None of the following are capable of being registered:
- designs or models serving the technical and functional features of a product;
- designs or models comprising religious symbols and logos, or seals, emblems, symbols or flags relating to any country or international organization or contrary to public order; or
- designs or models identical or similar to a registered or famous trade mark.
Rights granted by the registration of an Industrial Design
The owner of a registered Industrial Design has the exclusive right to prevent third parties from making, selling, importing or distributing any products bearing the Industrial Design, unless the owner has marketed said products in another country or licenses a third party to do so. The protection is granted for five years starting from the date of submittal of the application in Qatar, but is only renewable for two more similar time periods.
Breach of such rights by a third party can give rise to:
- the seizure of infringing projects (with a court order);
- imprisonment of up to three years and/or up to a million Qatari Riyal fine (as well as publication of the judgment at the expense of the convicted person) (or double these penalties in respect of a repeated infringement); and
- a claim for compensation for direct damages incurred by the owner as a result of the violation, including profits made by the third party.
In Qatar typically foreign judgments may be recognised and enforced in Qatar on the same conditions that exist under the laws of that country, reflecting a primary emphasis on the principle of reciprocal treatment. In terms of enforcing foreign registered Industrial Designs, Article 2 of the Designs Law provides that non-Qataris having a true and actual place of business in a country that is a member of the World Trade Organization (a WTO Country) will have the same rights that the Designs Law provides for Qataris as long as they are citizens or residents of countries treating Qataris and residents on the same basis. Essentially, the key requirements for the enforcement of an Industrial Design are membership of the WTO and reciprocity.
Where an application is submitted to register an Industrial Design in a WTO Country, the applicant or the holder of the rights therein can, within six months from the date of submittal thereof, resubmit a similar application for the same subject matter to the Ministry of Commerce and Industry as per the conditions and rules stipulated in the Designs Law and its implementing regulations (yet to be published). The priority of an application will be determined according to the date of first submittal in a WTO Country.
Where an applicant for the registration of an Industrial Design does not reside in Qatar, the application for registration needs to be submitted through an attorney residing in Qatar, together with a legalized power of attorney.
An agreement licensing the use of an Industrial Design needs to be in writing and registered at the IPPO in order to have effect.
The Designs Law provides for the creation of a committee by a decision from the Council of Ministers to study the issuance of compulsory licences for the purposes of exploiting certain Industrial Designs for the purpose of achieving a public benefit. Upon the approval of such a licence, the committee would determine the financial rights of the owner of the Industrial Design.
As is usual, the implementing regulations will clarify a number of provisions of the Designs Law (and until they are published, the provisions of the IP Law will continue to have effect), however the provisions of the Designs Law indicate it will provide strong protections to the owners of Industrial Designs and marks Qatar out as fostering a safe market for the protection of intellectual property and the owners of the same.
For further information in relation to the Designs Law and licensing/protecting an Industrial Design, please contact Ahmad Anani and Alistair Stewart.