GlobalReport

Global Report: Middle East
Learn About Enforcement Laws in Saudi Arabia with
INTA’s New Practice Guide
INTA’s Publications Committee launched a new
searchable practice guide on November 15,
2016,titled Enforcement: An International Litigation
Guide. Its purpose is to assist attorneys
in addressing and answering straightforward
client questions about basic litigation issues in
their jurisdictions.
Mohammad Jomoa (Kadasa & Partners, Saudi
Arabia), a member of the Middle East Global
Advisory Council, participated as the contributor
for Saudi Arabia. That particular chapter
deals with the new Gulf Cooperation Council
(GCC) trademark law, which was adopted in
Saudi Arabia on September 27, 2016. Subject
to the procedure in each member state for legislative
adoption, the law is equally applicable
in all of the GCC member states (Saudi Arabia,
Bahrain, Kuwait, Qatar, Oman, and the United
Arab Emirates).
Among other changes, the GCC trademark law
specifically:
• Recognizes and extends the right over prior
In the News
use of trademarks to disputes over ownership;
• States that enforcement of a registered
trademark may be challenged by defendants
on a plea of unlawful registration; and
• Establishes cause of action to file a cancellation
action against trademarks registered
unlawfully.
It is expected that infringement cases in the
future may be challenged via counterclaims
within the region. Before September 27, 2016,
such rights or causes of action were not recognized
by Saudi courts.
The law presents many challenges from an
enforcement perspective for trademark rights,
so the practice guide is a timely and useful
contribution.
Members may view the full database in the
Member Resources section of INTA.org, under
Searchable Practice Guides/Enforcement
Guides.
Middle East Global Advisory Council
Co-Chairs
Hoda Barakat (Chair), Hoda Barakat Legal
Consultancy, United Arab Emirates
Charles Shaban (Chair), Abu-Ghazaleh
Intellectual Property (AGIP), Jordan
Council Members
Motasem Abu-Ghazaleh, Abu-Ghazaleh
Intellectual Property (AGIP), United Arab
Emirates
Ghaida Ala’Eddein, Saba & Co. IP, Jordan
Elie Atallah, Brand Owners’ Protection
Group, United Arab Emirates
Faisal Daudpota, Daudpota International,
United Arab Emirates
Mohammad Jomoa, Kadasa & Partners,
Saudi Arabia
Hady Khawand, Saba & Co. IP, United Arab
Emirates
Alireza Laghaee, Dr. Laghaee & Associates
Inc. International, Iran
Omar Obeidat, Al Tamimi & Company,
Advocates & Legal Consultants, United
Arab Emirates
Staff Liaison
Bruce MacPherson, Chief Policy Officer
bmacpherson@inta.org
IRAN: Judiciary Starts to Enforce New
Criminal Procedure Law
On April 1, 2016, the Iranian judiciary began
enforcing the Iranian law of criminal procedure,
which was passed two years ago and
introduced important changes to criminal
procedure that will have consequences for
IP cases.
According to the Iranian Criminal Procedure
Law, issued on February 23, 2014 (Articles
22, 294, 426), due process of criminal law
has three stages: (1) a preliminary investigation
in the prosecutor’s office (under the state
attorney), which may end in issuing an indictment;
(2) proceedings before the court of first
instance primary court, which issues a ruling in
either sentencing or acquittal; and (3) proceedings
before the court of appeal.
The new Islamic Penal Code, Article 19, issued
on April 21, 2013, has classified all punishments
into eight categories based on their
severity. Article 19 of the new Islamic Penal
Code defines category 7 in the following terms,
“imprisonment from 91 days to six months;
fines ranging between 10 million Ryials and 20
million Ryials; between 11 and 30 lashes; deprivation
of social rights for up to six months.”
Article 61 of the Patents, Industrial Designs and
Trademarks Registration Act (issued in 2008)
prescribes the following punishment for all IP
cases dealt with in this law: a fine of between
10 and 50 million Ryials, or imprisonment of
between 91 days and six months, or both.
Taking the new classification into consideration,
this punishment falls under category 7
of the Islamic Penal Code described above,
although lashes will not apply in IP cases.
Under Article 340 of the Criminal Procedure
Law, crimes subject to punishments in categories
7 and 8 will be directly investigated by the
primary court, including all IP cases. The judge
in the primary court will also issue orders for
seizure and detention if necessary. Then an appeal
can be filed in the Appellate Court. As the
prosecutor’s office no longer has jurisdiction in
IP cases, the due process of law in these cases
is effectively reduced from three to two stages.
This legislation passed three years ago, but
only recently began to be implemented. The
goal of the legislator was to reduce the workload
of the prosecutor’s office, and to accelerate
the process of law when the crimes are not
that serious.
The other reform that affects the length of the
process in criminal prosecution is Article 450
of the Criminal Procedure Law, according to
which, if the Appellate Court wants to sentence
in a given case or to approve a sentence issued
in the primary court, it must schedule a hearing
and invite the parties to the court. In the
former version of the law, this was optional, but
it is now mandatory. This new requirement will
give more precision to the court hearing and
more effectively protect the defendant’s rights,
but it may add several months or even a year to
the length of the criminal process.
Contributor: Hossein Badamchi
Reza Badamchi & Associates, Tehran, Iran
Verifier: Kerem Gokmen
Dis Patent, Istanbul, Turkey
28 INTA Global Report, February 2017