Monday, December 12, 2016

Protecting Intellectual Property in Oman

General overview of intellectual property in Oman

Intellectual property (“IP”) protection is considered crucial for every business. Businesses now operate in an increasingly competitive marketplace, thus protecting and securing its IP is essential for a business’s future success. By having knowledge about IP, businesses can shield themselves from infringing others’ IP rights and avoid cost and legal action. Moreover, IP provides individuals with a sense of protection and encourages them to engage in more creative ventures.

The World Intellectual Property Organisation (“WIPO”) defines IP as “creations of the mind, such as inventions, designs, literacy and artistic works, names and images used in commerce.”

While it’s argued that the Omani courts may struggle with IP cases, the Omani government has initiated various steps towards IP protection, from the implementation of domestic laws to the participation in conventions and international treaties. The Sultanate of Oman is a member to several international treaties, conventions and protocols including: The Gulf Cooperation Council, The World Trade Organisation, The World Intellectual Property Organisation, the Berne Convention, the Paris Convention, the Madrid Protocol and the Patent Cooperation Treaty.

In addition to the international treaties and conventions listed above, the Sultanate of Oman has enacted several domestic laws protecting IP rights.

The applicable laws in Oman

The Industrial Property Rights Law (“IPRL”) promulgated by Sultani Decree 67/2008 governs the protection and use of patents, trade marks, trade secrets, utility models, industrial drawings, geographical indicators, topography of integrated circuits and protection against unlawful competition in the Sultanate. Ministerial Decision 105/2008 sets out the Executive Regulations for the IPRL.

Law on trade marks

Article 36(1) of the IPRL provides that the exclusive right to a mark is acquired by registration. Article 36(2) sets out circumstances when a mark cannot be validly registered, which includes inter alia:

  1. if the mark is identical or similar to an extent that creates confusion or is like the translation of a mark or a well-known title in Oman in relation to identical or similar goods or services of another enterprise or if it is known and registered in Oman as regards the goods or services not identical or similar to those for which the registration of the mark is being sought, provided that the use of the mark as regard the goods or services, in the latter case, gives the impression of the presence of a link between these goods or services and the owner of the well-known mark and that such use undermines the interest of the owner of the well-known mark; and

  2.  if the mark is identical with or similar to a mark of another owner already registered or if there is an application that precedes the registration of the concerned mark in respect of the date of deposit or date of priority as regard the same goods or services, or goods or services closely linked therewith or if they are similar to an extent that is misleading and confusing.
Law on patents

Just like trade marks, patents are also governed by the IPRL. WIPO defines a patent as an “exclusive right granted for an invention, a product or process that provides a new way of doing something, or that offers a new technical solution to a problem.” Under the IPRL, an invention is patentable in Oman if it is new, involves an inventive step and is susceptible of industrial application. Moreover, it should not be preceded by any previous industrial technology declared to the public in any part of the world by publication in a tangible form or by verbal communication or by use or any other method prior to the date of the deposit of the application or date of precedence of claim of the right to the invention. In order to protect the patent, the inventor or his agent must submit the patent application to the Ministry of Commerce and Industry’s Department of Agencies and Intellectual Property.

Remedies available under IPRL


The IPRL grants a right to any interested person to request the court/registrar to invalidate/remove a trade mark from the register. A trade mark registration may be invalidated if it is proved that the requirements of the IPRL were not fulfilled. A trade mark may be removed from the register in respect of any of the goods or services in respect of which it is registered, on the ground that up to one month prior to the date of the deposit of the application for the removal, the mark was not used by the owner of the trade mark or the licensee during a continuous period of three years or more, unless it is proved that special circumstances existed that were beyond the control of the owner or the licensee that prevented the use of the mark during the aforementioned period and that the owner has no intention not to use or abandon the mark in respect of those commodities or services.

Civil action

  1. The IPRL provides that civil action for infringement may be initiated within five years from the date the right holder knew or had reason to know of the infringing act. However, there is no time limit to bring a suit in case of infringing use of distinctive signs in bad faith or for unfair competition purposes.

  2. The IPRL sets out the remedies that the court may offer to a party whose rights have been infringed. Article 75 states that the court shall include an appropriate compensation to the possessor of the right for the infringement of his IP property right. The court may, in case of infringement of a trade mark, pass a judgement on the value of the compensation claimed or one specified by it and, while estimating the compensation value, take into account the profits made by the offender. The compensation shall, in all cases, be sufficient to undo the damage caused to the possessor of the trade mark right on account of the infringement. The Court shall, while fixing the compensation for damage for the infringement of the rights prescribed under this Law, keep in view the value of the commodity or service subjected to infringement measured against the proposed retail price or any other legal measure for the value submitted by the possessor of the right.

  3. The court may pass a judgement obliging the offender to pay compensation for damages related to the acts of infringement committed on or after the date on which the decision on the acceptance of the registration application, if any, was issued by publication in the Official Gazette or the date on which the registration applicant notified the offender of the contents of the application or one on which the offender came to know of the contents of the application.

  4. The IPRL provides that the court shall order the destruction of goods involved in infringement except in exceptional circumstances without decreeing any kind of compensation. The court shall order the destruction of substances or equipment the majority which were used in manufacturing the commodities involved in infringement or in exceptional circumstances and their disposal outside the trade channels in a manner that brings the infringement risks to the lowest level without decreeing any kind of compensation.

Criminal action

Deliberate infringement at a commercial level of an industrial property right shall be punishable by imprisonment for a minimum period of three months and a maximum of three years and/or a minimum fine of OMR 2,000 and a maximum of OMR 10,000. The minimum and the maximum penalty shall be doubled in case of repeated infringement.