The now and future of MENAP IP: a roundtable discussion
To conclude our series on Intellectual Property (IP) topics in the MENAP region, our three authors, Jan Wrede (Dubai), Shaukat Ali (Lahore) and Yasir Masood (Dubai), held an open panel discussion hosted by Othman Altamimi (Riyadh). Mr. Altamimi is a Saudi lawyer and holds a Master of Laws in IP from the University of New York. He heads the law firm Othman Altamimi & Partners in cooperation with Dennemeyer & Associates in Riyadh, Kingdom of Saudi Arabia (KSA).
Advances and backlogs
Marhaban, welcome, everybody! Reading through your articles, my first impression is that IP in MENAP has been improving at a fast pace yet still has a long way to go.
Yes, we continuously witness improvements in IP laws and practice, triggered by the need to attract investors and pave the way for the local economy, especially budget-sensitive startups. A big milestone is a switch to online filings almost everywhere. Other merits can be seen in modernized trademark laws, which include expanded concepts of registration eligibility and likelihood of confusion. Patent reforms are done at a slower pace, starting with administrative tasks like faster examination, which is, of course, already an excellent point. It is only natural that substantial changes, for instance, in the definition of computer-implemented inventions or the ownership of AI-drafted applications, need their time for due consideration.
On the other hand, there is still far too much red tape: from legalizing documents to required powers of attorney to lengthy procedures and, especially in the Gulf, rather high fees. Some law reforms start well but seem to be finished halfway; we would like to see a decisive, balanced IP strategy protecting investments and startup "zebras" in a new sustainability-based economy.
As it relates to trademarks in the UAE, I can really second the point about the tremendous pace at which we have seen changes. I came here around six years ago and have seen a number of far-reaching advances, such as the mentioned digitalization. A few years ago, one still had to submit a physical file at the trademark office and later on collect physical certificates. Now, the whole procedure can be completed from the comfort of one's desk. Moreover, the requirement of publishing applications in local newspapers has been canceled, multi-class filings have been introduced and the UAE has joined the Madrid System. The enforcement regime is also very efficient and brand-owner-friendly. For instance, the Dubai Department of Economic Development has developed an app where trademark owners can register their trademarks and file complaints. All in all, rights holders can be very confident about the protection of their trademarks in the UAE.
In Pakistan, there are developments in IP laws and practices, especially in trademarks. Pakistan recently joined the Madrid Protocol, which helps both international and local businesses protect their trademarks. Pakistan also started receiving trademark applications online, but it is limited to registered IP practitioners in the country. Soon, the national IP office will implement the remainder of the online registration procedure so that applicants and their attorneys can receive and submit responses, etc. The national IP office is also planning to introduce an online trademark search facility to the general public in the near future.
I completely agree with the fact that we are continuously witnessing improvements in IP laws and practice. The government of Saudi Arabia recently established the Saudi Authority for Intellectual Property (SAIP) as the sole competent IP body. This important move is fueling the progress of building an innovation culture in Saudi Arabia. As an independent authority with global perspective, SAIP is also working to establish itself as a leading IP hub in the Middle East and North Africa. SAIP is also responsible for developing the country's IP strategy – including the proposal of new rules and regulations relating to IP rights – to ensure national legislation keeps pace with the rapidly evolving global technological landscape. In line with its mission to strengthen the nation's IP system, SAIP is working to boost Saudi Arabia's profile within the international IP community. To this end, SAIP is preparing the groundwork for Saudi Arabia to join various WIPO-administered international treaties.
In due course, the KSA is expected to join the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure and the Strasbourg Agreement Concerning the International Patent Classification. Accessions to the Madrid Protocol and the Hague Agreement, separately, are also under review. These developments will further strengthen Saudi Arabia's national IP system, bringing it into line with international best practice. SAIP has also signed Patent Prosecution Highway (PPH) agreements with the United States Patent and Trademark Office (USPTO), Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO). Such agreements allow fast-tracked patent procedures through the sharing of patent information between participating offices, thereby reducing the workload of patent examiners while improving patent quality. As several initiatives are taking place at once, the Saudi IP National Committee has been formed to coordinate the IP enforcement efforts of various government departments. The Committee will ensure broad compliance with IP laws and regulations across the Kingdom.
This brings me to another highly important topic: IP litigation. What is your experience here?
Generally, as you know, in all MENAP, IP litigation is still in its infancy. This is not necessarily so because the markets are relatively small. It is probably more due to the fact that potential litigators, i.e., IP right (IPR) owners from Europe and the United States, are not confident enough with the local situation. They do not know the language and litigation procedures, rules of evidence, possible damages and effectiveness of court measures. Yet, disregarding litigation is simply a misconception inherited from the past. Nowadays, you can enforce trademarks and patents in many foreign countries very well, within time frames, at costs and with efforts comparable to a trial at home. Or even less... Indeed, we have heard about IP owners relinquishing their rights because they thought enforcement was impossible. This means inviting parasites to eat your fruit instead of using the available insecticides. Consider that there are over 20 MENAP countries, but only three are currently on the U.S. Watch List for weak IP protection.
With regard to IP litigation and other proceedings related to the infringement of IPRs, not long ago, there was a milestone achieved by the Pakistani judicial system. In 2015, Pakistan formally announced the formation of IP courts under the Intellectual Property Organization of Pakistan Act, 2012. Previously, IP litigation was under the civil courts of Pakistan. IP tribunals are being formed accordingly in all provincial jurisdictions; as of now, three IP tribunals are working. Only technical patent litigation still needs some improvement in the training of judges – so that they can conclude and decide such matters by themselves without having to rely on outside experts.
First off, we do not deal with many litigation matters in our practice. Cases are relatively rare in the UAE, and there is not yet a large body of jurisprudence. In general, we try to resolve our clients' cases out of court. On a more comprehensive note, access to justice has become more and more available in the UAE. Also, court fees are comparatively reasonable in the country.
And as a trademark lawyer, I can particularly refer to the recent changes in UAE trademark law: The Grievance Committee to appeal trademark office decisions has been changed and now consists of a judge and two IP experts, thus increasing the competency of and trust in the Committee. Moreover, decisions of the Committee can now be appealed directly to the Court of Appeals and no longer the Court of First Instance, removing one instance and thereby making the process faster and less costly. Additionally, preliminary measures have been added in the new trademark law and can be obtained even ex parte in urgent matters. Penalties for infringers have been increased as well. I hope this provides some assurance to trademark owners that their rights are well protected and legal remedies are accessible in the UAE.
In a remarkable development in the Saudi judicial system, all IP cases and disputes involving patents, copyrights and trademarks have been transferred to the commercial courts. This is based on the decision of the Supreme Judicial Council of January 21, 2020, on jurisdiction over IP cases. Disputes are considered by chambers of three judges specialized in IP. The Ministry of Justice, to which the administration of these courts belongs, was eager to subject judges to intensive and in-depth courses on IP. The commercial courts, comprising three judges, will hear infringement and invalidation cases. This is a welcome and long-awaited booster to the efficiency of IP enforcement in the Kingdom.
It is worth noting that in the recent past, disputes related to IP were considered by quasi-judicial committees, the judgments of which could have been appealed to the Board of Grievances, considering that this is a body authorized to challenge administrative decisions.
Many thanks to everyone.
The preceding discussion has been edited for clarity.