Design

Law: Decree 2385 of 17 January 1924.

• Design rights are conferred by use and registration is a mere presumption of property.
• Publicity given to a design, including sales which occur prior to filing an application does not impair the validity of a subsequent registration.
• To entitle the rightholder to file a legal action, the design must be registered by the time it is infringed.
• However it has been established by court precedents that if an unregistered design is infringed, a civil action under unfair competition for counterfeit or fraudulent imitation can be filed.
• In case the infringement occurs after registration but before publication, mala fide intention must be evidenced.

Registrability: are protectable designs which present the double character of novelty and originality.

REGISTRATION PROCEDURE
REQUIREMENTS
ENFORCEMENT OF RIGHTS

REGISTRATION PROCEDURE
The conduct of proceedings:
• The date of receipt of the application in the Patent Office is not considered as the filing date and it takes about two to three days thereafter, to secure an effective filing date. The reason is that the filing taxes are not paid upon lodging the application but are deferred until after the Registrar delivers the order to pay taxes to the Ministry of Finances (in a separate geographical location).

• The date filing taxes are paid is considered filing date and registration immediately granted in the absence of the opposition procedure.

• It takes another week to obtain the authorization to pay the publication fees. When publication is secured, the filing date is ratified and the proceedings deemed closed.

Therefore, securing an effective filing date takes between 8 to 10 days. This explains the reason why it takes us about two weeks at best, to finalize an operation and send out filing reports to our correspondents.

Considering this situation, we recommend to our Associates and Clients to send us their instructions reasonably in advance to allow us complete the filing exigencies within delays, if any.

Multi-item application: up to 100 items can be included in a single application. A separate fee is paid by item.

Examination: Not provided for.

Search: is not available.

Opposition: the administrative opposition procedure is not provided. Conflicts must be brought before regular Courts.

Confidentiality: Partial or total secrecy can be requested for 5 renewable years and publicity deferred accordingly.

If disclosure is not requested within 5 years or if the design is not renewed at its expiry, the Patent Office can dispose of it and give it to an interested trade corporation.

Registration: is obtained immediately at filing date, in the absence of examination and the opposition procedure.

Publication: is carried out by the applicant after a filing date is secured. The registration is published in the Official Gazette about 2 to 3 months after filing date.

Term: 25 years renewable once for a further period of 25 years.

Renewal: amounts to a re-registration and abides by the same requirements as for a basic application. It is due at anniversary date of filing.

Recordal: Transfer of property must be recorded to be opposable to third parties. Late recordal is liable to a penalty.

A 3 per mil stamp duty is payable in respect of consideration paid for transfer. A symbolic consideration can be stated. Despite a specific provision in the law, the same applies to licenses, in compliance with the general principles of law.

Use: is not required to keep a registration in force.

REQUIREMENTS:
• Power of attorney: To expedite filing, the Patent Office accepts that a faxed power be filed pending receipt of the original form which must follow immediately. The power must be simply signed and indicate the name and capacity of signatory. A general power serves for continuous applications. A suitable form is available on this site.

Description: A short description of the model must be filed with the application and translated into Arabic.

Supporting documents: Originals are required and must be translated into Arabic and filed together with the application, except for the power (vide here above)

For Lebanese applicants: the following is requested in addition to the remaining requirements:
• Notarization of the power of attorney
• Copy of the circular letter
• Extract from the Registry of Companies

Registration/Renewal:
• Simply signed power of attorney stating name and capacity of signatory.
• 3 sets of drawings with legends therefor.
• a short description of the design
• True copy of Home registration when claiming priority. Must be filed within three months from Lebanese filing date.
• Assignment of designer’s rights if Home application is filed in his name, legalized. Must be filed within three months from Lebanese filing date.

Assignment/Merger:
• Simply signed power of attorney stating name and capacity of signatory.
• Evidencing document mentioning effective date of transfer, legalized up to the Lebanese consul.
• Assignment of goodwill is not required.
• A symbolic financial consideration can be mentioned . It is to be noted that a 3 per mil stamp duty is payable in respect of consideration paid for property transfer.
• Late recordals are subject to a penalty, for foreigners after three months from effective date for locals after one month,

Licence:
• Simply signed power of attorney stating name and capacity of signatory.
• License contract signed by both parties or preferably an extract thereof (to avoid substantial translation costs), legalized up to the Lebanese consul.
• Three per mil stamp duty is perceived on sums mentioned in the document. A symbolic financial counterpart can be mentioned.

Change of name:
•Simply signed power of attorney stating name and capacity of signatory.
• Evidencing document indicating old and new name, legalized up to the Lebanese consul.

Change of address: No document is required, only the old and new address.

Cancellation: Special power of attorney, notarized and legalized at the Lebanese consul.

ENFORCEMENT OF RIGHTS
Remedies:
• Rightholders can file a legal action before criminal or civil courts. First Instance judgments can be appealed before Courts of Appeal and subsequently the Supreme Court.
• Before a final decision is reached, courts can order, with or without guarantee, interim impoundment and prohibition from using the infringing goods until a final decision is issued on the merits. To obtain these measures, the counterfeit and prejudice must be blatant.
• Plaintiffs generally seek remedy before civil courts,because criminal courts apply the law in a restrictive way and require to bring forth the evidence of bad faith. In addition, imprisonment is not provided except in case of repetition by the infringer or if the infringer is a co- worker or employed by the plaintiff.
• Courts generally take into consideration French court precedents and doctrine.
• To assess likelihood of confusion, Courts adopt the internationally admitted criteria, taking into consideration the overall aspect of conflicting designs.

Temporary measures:
• The Public Prosecutor or the Head of the Patent Office can order inventory and sampling. Under penalty of annulment, these measures must be followed by a legal action before civil or penal courts within 15 days from the date the order is carried out.

• Prior to filing a legal action, interim measures including impoundment, can be sought from the Judge of urgent matters and may be granted ex parte, with or without guarantee. To convince the judge deliver these orders, the counterfeit and prejudice must be blatant.

These temporary measures imply that an action on the merits will be filed within a delay fixed by the judge, failing which the interim measure is cancelled.

Penalties: design infringement is liable to a fine only. If the infringer is or has been a fellow worker or employee of the plaintiff, imprisonment is sentenced.

Time frame for obtaining judgments: It takes between 18 to 24 months at best to obtain a judgment civil or criminal ,in each degree of jurisdiction, Fist Instance, Appeal and Supreme Court. Judgments are notified to the Patent Office.