Protection of Industrial Designs in Law

Introduction

His Highness the Amir Sheikh Tamim bin Hamad al-Thani issued Law No. (10) of 2020 on the Protection of Industrial Designs. The law stipulates its implementation and is to be published in the Official Gazette.

The law stipulates that having perused the Constitution, Law No. (13) of 1990 issuing the Civil and Commercial Procedure Law, and amendments thereof;

Law No. 9 of 2002 regarding Trademarks, Trade Indications, Trade names, Geographical Indications and Industrial Designs and Templates;

Law No. (7) of 2014 promulgating the Law (Regulation) of Trademarks in the GCC Countries;

Agreement establishing the World Trade Organization and the attached Multilateral Trade Agreements, which the State of Qatar joined by virtue of Decree No. (24) of 1995;

Paris Convention for the Protection of Industrial Property, which the State of Qatar joined by virtue of Decree No. (31) of 2001;

The proposal of the Minister of Economy and Commerce;

The draft law submitted by the Council of Ministers; and

After consulting the opinion of the Shura Council; Law No. (10) of 2020 on the Protection of Industrial Designs was promulgated.

Our Remarks on the Law

After legal and technical scrutiny, and thorough examinations of the texts and articles of the aforementioned law issued by His Highness the Amir Sheikh Tamim bin Hamad Al-Thani, through his authority to pass legislations and legal controls, we find that he has correctly promulgated this law, which is considered preventive measures and legislative controls regarding the protection of Industrial Designs and Templates, all within the scope of implementing the related laws mentioned above.

As law experts, it was imperative to commend these recent legislative controls regarding the protection of Industrial Designs and Templates, as by examining this law we find that it has established principles, controls and criteria that the relevant parties must adhere to and comply with according to the implementing regulations of this law.

Definition of Industrial Designs and Templates

Any two-dimensional or three-dimensional formation of pattern or colors that gives any industrial or handicraft product a new and special shape, and not merely determined by technical or functional necessity.

Industrial Designs are applied to a wide range of industrial and handicraft products: from watches, jewelry and other luxury items to technical or medical tools; from household appliances and electrical appliances to car bodies and buildings structures; and from textile designs to recreational goods such as toys and pet accessories... etc.

An industrial design is primarily, of not exclusively, of an aesthetic nature , which distinguishes them from other design. The actual design itself, as opposed to the article to which it is applied, cannot be dictated, at least solely or essentially, by technical or functional consideration.

In general, Industrial Design must be reproducible by industrial means, otherwise it would constitute a "work of art", protectable by copyright.

Difference Between Industrial Designs and Patent Protection

The object of protection of an industrial design is to be distinguished from that of a patent, primarily because the former relates to the appearance of an article. An industrial design consists precisely of that aspect of an article which is ornamental or aesthetic and which is not determined by technical or functional necessity. The object of patent protection, to the contrary, whether it is a product or a process, must first and foremost constitute an “invention”, which generally means that, among other requirements, it must be of practical use.

Difference Between Industrial Designs and Trademark

An industrial design is to be distinguished from a trademark, primarily because it must not necessarily be distinctive. A trademark, to the contrary, although it may consist of different elements which may or may not be ornamental, must always be distinctive, since a mark must be capable of distinguishing the goods or services of one enterprise from another. The functions of and therefore the requirements for protecting industrial designs and marks are quite different.

Therefore, industrial designs can only be protected for a fixed period of time depending on the particular national law.

Advantages of Issuing Industrial Designs Protection Law

Article No. 2 of the same Law stipulates the following:

Without prejudice to the provisions of international or bilateral treaties and conventions effective in Qatar, non-Qataris (foreigners), who have a real and effective activity in one of the member states or entities in the World Trade Organization or affiliated with it, shall have the same rights under this Law as nationals of the State of Qatar, provided that they are nationals of or residents in states that grant the nationals of and residents in Qatar reciprocal treatment.

If an application for the registration of an industrial design is submitted in one of the member states or entities in the World Trade Organization or that grant the nationals of and residents in Qatar reciprocal treatment, the applicant or his successor in title may, within six months from the date of submitting the application, submit a similar application to the Department of Commercial Affairs on the same subject in accordance with the conditions and rules stipulated in this law and its executive bylaw. The right of prior use shall be determined based on the date of the first application in the foreign state.

Industrial Designs that cannot be Registered

Article No. 7 of the same Law stipulates the following:

The following shall not be registered as an industrial design:

  1. The industrial design that usually requires the technical or professional considerations of the product.
  2. The industrial design that includes religious symbols, or seals, or flags of the States or international organizations, or violates the public law or the rules of conduct.
  3. The industrial design that is identical or similar to a registered trademark or a well-known mark.

 

Certificate of Registration Completion

Article No. 11 of the same Law stipulates the following:

The registration of an industrial design shall be effective from the date of submission of the application and shall be accompanied by a certificate reflecting the following data:

  1. Industrial design registration number.
  2. Number and date of priority and the state wherein initial application was submitted, if any.
  3. Date of submission of application, date of registration of the industrial design and date on which protection will expire.
  4. Name, surname, domicile and nationality of the owner of the industrial design, and name and domicile of the agent, if any.
  5. Name and domicile of the inventor and brief description of product on which the industrial design shall be used.

Owner's Exclusive Right

Article No. 13 of the same Law stipulates the following:

The owner of the registered industrial design shall have the exclusive right to use the industrial design and to pan third parties from the manufacturing, selling, or importing of products, which take the form of this industrial design, unless he has marketed these products in any state or licensed others to do so.

 

Term of Industrial Design Protection

Article No. 15 of the same Law stipulates the following:

The term of protection for the industrial design shall be five years as of the date of filing the registration application in the State of Qatar and can be renewed for two similar terms only.

If the owner wishes to continue such protection for similar periods, he shall submit an application for renewal during the last year, provided that such application is submitted in accordance with the conditions stipulated in the executive bylaw after paying the due fee.

Though, the proprietor may file a renewal application during the six months following the original period expiry date after paying the due fee plus an additional fee, if he submitted convenient excuse accepted by the Office.

Renewal shall not be subject to any further inspection or to any opposition from third parties and shall be advertised in any publishing means prescribed by the executive bylaw.

If a period of six months has elapsed after expiration of the registration and the owner has not applied for renewal thereof, the Office may delete the industrial design from the register.

Licensing the Industrial Design from the Owner to Natural or Legal Persons

Article No. 18 of the same Law stipulates the following:

The owner of the industrial design may license the use thereof to any natural or legal person for all or part of the registered goods or services. The owner of the industrial design shall simultaneously have the right to license the use of the same industrial design to other persons. He shall in any event be entitled to use the same for his own purposes, unless otherwise agreed.

In all cases, the term of the license shall not exceed the term of protection of the industrial design.

Restrictions imposed on the Licensee under the License Contract

Article No. 19 of the same Law stipulates the following:

No restrictions shall be imposed on the licensee of an industrial design other than those arising from the registration thereof. Nevertheless, the license contract may contain the following restrictions:

  1. Determination of the territory and term for the use of the industrial design.
  2. Conditions governing the effective control over the quality of the goods or services related to the industrial design.
  3. Commitments imposed on the licensee to refrain from all acts detrimental to the industrial design.

Penalties for violating the Provisions of this Law

Article No. 30 of the same Law stipulates the following:

Without prejudice to any more severe sanction provided for by any other law, a penalty of imprisonment not exceeding three years, and a fine of not more than one million riyals, or either of these penalties, shall be imposed on any person who does one or more of the following actions:

  1. Forges or imitates a registered industrial design under the provisions of this law.
  2. Fraudulently uses a forged or imitated industrial design. 
  3. Fraudulently affixes to his goods or uses in connection with his goods or services an industrial design belonging to another person.

The court shall rule for the publication of the judgement at the expense of the convicted person and the closure of the enterprise for a period not exceeding six months.

The executive bylaw shall specify the manner in which the judgement shall be published.

Article No. 31 of the same Law stipulates the following:

Without prejudice to any more severe sanction provided for by any other law, a penalty of imprisonment not exceeding one year, and a fine of not more than one hundred thousand riyals, or either of these penalties, shall be imposed on any person who does one or more of the following actions:

  1. Unrightfully and knowingly sells or offers for sale or trade, or holds for the purpose of sale, goods bearing a forged, imitated or fraudulently used industrial design.
  2. Unlawfully inscribes upon his products, papers or commercial documents anything that might lead to the belief that he has obtained registration of such industrial design.
  3. Fails in bad faith to indicate the registered industrial design on goods or services related to it.
  4. Knowingly possesses tools or material intended to be used in the imitation of registered industrial design.

The court shall rule for the publication of the judgement at the expense of the convicted person and the closure of the enterprise for a period not exceeding six months.

The executive bylaw shall specify the manner in which the judgement shall be published.

Article No. 32 of the same Law stipulates the following:

In the case of repetition, the penalties provided for in Articles No. 30 and 31 of this Law shall be doubled. An offence described in Articles No. 30 and 31 shall be considered repeated if it is committed by the accused within three years from the date on which the sentence for the previous offence was imposed or lapsed by time.

The court shall rule for the publication of the judgement at the expense of the convicted person and the closure of the enterprise for a period not exceeding one year.

The executive bylaw shall specify the manner in which the judgement shall be published.

 

Article No. 33 of the same Law stipulates the following:

The Court, in all cases stipulated in Articles No. 30, 31 and 32, may rule to confiscate or destroy tools or material used in the imitation or forgery, as well as the imitated or forged products.

 

Can an Owner of an Industrial Design Claim Compensation, if affected directly by Infringement on any of his rights?

Article No. 34 of the same Law stipulates the following:

The owner of the industrial design, if affected directly by infringement on any of his rights under the provisions of this Law, may file a claim requesting a judgment for adequate compensation to redress the damage affected him as a result of the infringement, including profits earned by the infringer.

The Court may, when considering the claims relating to the rights prescribed under the provisions of this Law, order the following:

  1. Seizing goods which are suspected to be involving an infringement of any of the rights prescribed under the provisions of this Law, and seizing any materials or tools related thereto.
  2. Obligating the infringer to stop the infringement.
  3. Preventing the export of goods that involve the infringement of any of the rights prescribed under the provisions of this Law and preventing the entry of imported thereof.
  4. Obligating the infringer to submit to the Court and to the Owner all the information he has on all those persons or entities that contributed in any aspect of the infringement, and on the methods of production and distribution channels of such goods, including the identity of all those who participated in the production or distribution of goods or services and determining his own distribution channels.

Why was the Industrial Designs Protection Law issued and what is its Importance?

When an industrial design is legally protected through its registration, the owner is ensured an exclusive right against its unauthorized copying, imitation, manufacturing, selling, importing or distributing the related products by third parties in any State without an authorization.

Since industrial designs are that aspect of an article which makes it aesthetically appealing and attractive, they do not merely constitute an artistic or creative element; they also serve to add to the commercial value of a product and facilitate its marketing and commercialization.

As such, an Industrial Designs Protection Law benefits: 

  • Owner, this Law was issued to protect and benefit the owner of the industrial design to contribute to the market development of his products and helps ensure a fair return on his investments.
  • Consumers, and the public at large, as industrial designs protection is conducive to fair competition and honest trade practices and encourages creativity, thus leading to more aesthetically attractive and diversified products.
  • Economic Development, as industrial design protection injects creativity in the industrial sector, contributes to the expansion of commercial activities, and enhances the export potential of national products. Another interesting feature of industrial designs is that they can be relatively simple and inexpensive to develop and to protect;therefore, they are reasonably accessible to small and medium-sized enterprises, individual artists and craftsmen, in both industrialized and developing countries.

As a general rule, industrial design protection is limited to the territory of the State or the region where protection is sought and granted. Instead of filing separate national and/or regional applications according to different national/regional procedures, under this Law, nationals and residents of, or companies established in, a Contracting Party to the Agreement, may obtain industrial design protection in a number of States through a simple and inexpensive procedure: a single “international” application, upon payment of a single set of fees, and filed with one office. Once the industrial design is recorded in the International Register, it enjoys, in each Contracting Party designated in the international register, the protection that is conferred on industrial designs by the law of that Contracting Party. The international registration is thus equivalent to a national/regional registration. At the same time, the international registration facilitates the maintenance of industrial designs protection.

Conclusion

In addition to all of the above, this Law No. (10) of 2020 on the Protection of Industrial Designs indicated the legal controls for the protection of industrial designs, and the industrial designs that cannot be registered under the provisions of Article. No. 7 of the same Law. It also regulated the term industrial design protection under the provisions of Article. No. 15 of the same law; the appropriate precautionary measures that may be taken regarding the industrial designs under the provisions of Article. No. 29 of the same law; and the penalties for those who violate the provisions of this law or all infringements of rights under the provisions of Articles No. 30, 31, 32, 33, 34 and 35 of this law. The contents of these controls, in their entirety, are a mechanism and controls to protect industrial designs, which will impact positively on the economic renaissance in the State of Qatar and places the State among the top economically rising nations.

Based on the foregoing, we find that the issuance of such a law came within a series of legislations related to serious preventive controls, measures, procedures and instructions to achieve general deterrence to maintain the financial and economic stability of the State, in addition to achieve economic advancement and provide maximum protection for industrial designs.

In view of the above, we felt obliged to commend the issuance of this law, which we will all reap its bountiful fruits in the near future, God willing.