Nermien Al-Ali and Robert Mihail
Zaki Hashem & Partners, Attorneys at Law
Egypt
Renewed enthusiasm for IP protection
Over the past year the government – particularly the
Ministry of Trade – has paid much attention to the issue
of IP protection, giving rise to optimism in the area of IP
enforcement. There has been unprecedented enthusiasm
for the discussion of IP law reform among ministries,
industry, interest groups and foreign trade delegations.
Part of this renewed enthusiasm was fuelled by the
negotiations over a free trade agreement (FTA) between
the United States and Egypt, which would bring with it
the promise of further economic prosperity. However, the
major changes have resulted from the great efforts made
by IP owners in consumer industries. In addition, training
programmes have been offered to familiarise judges and
enforcement officers with the unique issues of IP law.
Laws and regulations
IP Law
The Intellectual Property Law (82/2002) replaced a
collection of laws enacted over 50 years ago with a
unified body of laws that brings Egyptian IP legislation
into line with most of the developed world and the
various IP treaties to which it is a party. Two sets of
executive regulations enacted in 2003 and 2005 provide
detailed guidance on the application of specific areas of
the IP Law. One major change introduced by the IP Law
is the provision of patent protection for the composition
of pharmaceuticals. Under the old laws only production
methods for pharmaceuticals were granted patent
protection. Other changes include the introduction of
protection for undisclosed information in order to protect
the confidentiality of commercially valuable information
and protection for plant varieties.
The IP Law mirrors the provisions of the World Trade
Organisation Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPs), which is part of the
General Agreement on Tariffs and Trade; therefore, to a
large extent Egyptian IP law is now harmonised with IP
legislation in the United States and Europe. The TRIPs
Agreement left various grey areas with the expectation
that each member country determine the specific
provisions applicable in that area – for example, it
stipulates that member countries should provide for
border and enforcement measures and the protection of
famous marks, without detailing exactly how. With the
exception of general rules regarding IP enforcement, the
IP Law does not set down any border measures or
provide a definition of a ‘famous mark’ under the law.
These grey areas of the IP Law leave room for
considerable interpretation by judges, as well as inaction
by the enforcement authorities. When coupled with
limited understanding of the IP Law, this creates a
situation where the actual protection given is far less than
is possible under the law. In most cases the administrative
authorities are reluctant to act without clear ministerial
guidelines on applying the law, which sometimes results
in the denial of protection. Despite lobbying by IP owners
and training by delegations of foreign experts, no changes
have been made to the IP Law in 2006. Change has,
however, been taking place in the practice, rather than the
letter, of the law. Two major areas of change are
provisional measures and border controls.
Provisional measures: training the judiciary
Article 50 of the TRIPs Agreement requires members to lay
down provisional judicial measures to prevent the
occurrence of IP rights infringement and preserve
evidence of such infringement. The need for these
measures is greatest in cases where the IP owner tries to
prevent the production or distribution of counterfeit
goods. Therefore, Articles 33 (patents), 115 (trademarks)
and 179 (copyrights) of the IP Law allow the judge to issue
provisional measures to seize suspect goods, preserve
evidence and halt publication or distribution of a work.
Despite the clear provisions set out in the IP Law,
judges are reluctant to issue any provisional measures.
This reluctance may be based on the fact that the law
does not require the plaintiff to pay a bond, making the
judge wary of damaging the interests of the alleged
infringer before a thorough examination of the evidence.
Another reason is the unfamiliarity of judges with the
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 Egypt Zaki Hashem & Partners, Attorneys at Law
unique nature of IP rights and their enforcement. This
has been addressed recently by a comprehensive training
scheme delivered by the US Agency for International
Development IP Assistance Programme. The scheme
encourages IP owners and their lawyers to apply for
provisional measures in order to help the judiciary build
experience in this area. It is yet to be seen whether the
provisional measures provisions will be used.
Border controls: no formal rules
Article 51 of the TRIPs Agreement requires member
countries to enable IP owners with valid grounds for
suspecting the importation of infringing goods to lodge a
complaint with the competent authorities. This is
designed to enable the customs authorities to prevent the
release of the goods onto the market. Member countries
may also enable IP owners to suspend not only the
import, but also the export, of infringing goods. Egypt
has so far enforced only the export-related part of this
provision. Thus, if the export control authorities have
reason to believe that the products being exported are
counterfeit, they will try to obtain a declaration from the
trademark owner that the exported products are
genuine. To date there is no law or regulation dealing
with border control for imports of infringing products.
The enactment of clear rules governing IP border
controls was expected at the beginning of 2006, but has
been delayed due to ministerial shuffles. More recently,
the Ministry of Internal Trade and the Ministry of
Foreign Trade have merged, resulting in the Ministry of
Trade. The new ministry supported an economic impact
study on the effects of counterfeiting by the Brand
Protection Group. At the same time, foreign aid
delegations from the United States and the European
Union are helping Egypt to put in place the
infrastructure necessary to create and implement border
controls in the near future.
Copyright Executive Regulations
The strongest criticism of the Copyright Executive
Regulations is their failure to clarify which authority is
competent to enforce copyright. The regulations currently
spread competency across various ministries, as follows:
• the Ministry of Culture for artistic and literary works;
• the Ministry of Media for broadcasting rights;
• the Ministry of Information and Communications for
software;
• the Ministry of Trade for counterfeits; and
• the Cyber Investigation Unit of the Ministry of
Interior Affairs for infringement on the Internet.
The work of these ministries and agencies overlaps,
246 Building and enforcing intellectual property value 2007
with little if any coordination. Consequently, copyright
owners must contact various authorities to achieve the
desired results. No change to this situation is envisaged
in the near future. Despite this, in 2004 Egypt managed to
reduce the piracy rate of business software from 60 per
cent to 50 per cent.
Consumer Protection Bill
Counterfeiting is a major problem both in Egypt and
worldwide, with an estimated annual revenue of $400
billion. In Egypt, the only recourse against counterfeiting
is through the IP Law, which sets down a number of
penalties, including prison terms, for persons making or
selling counterfeit goods. Monetary penalties range from
E£500 to E£50,000 (approximately $90 to $9,000), and
terms of imprisonment range from two months to three
years. Prison terms are mandatory only for repeat
offences. These penalties have been criticised by some as
having insufficient deterrent effect and, as a result,
Parliament has moved to introduce new legislation
focusing on consumer protection – the Consumer
Protection Bill. The bill has been approved by Parliament
and is expected to be enacted soon.
Courts and IP disputes
The greatest IP challenge in Egypt lies in litigation. Only
decisions issued by the Cassation Court are published;
no record is kept of decisions issued by the appeal and
first instance courts. The Cassation Court can take up to
eight years to rule on an appeal, so parties rarely resort to
this court.
Criminal action against counterfeits
The IP Law allows IP owners whose rights have been
infringed to file a complaint with the authorities. If the
authorities find evidence of infringement, the matter is
transferred to the district attorney, who will press
charges. Unlike in other legal systems, all incidents of IP
infringement are deemed to be criminal misdemeanours
that may be prosecuted following a complaint by the IP
owner. If convicted, the accused faces:
• a monetary fine;
• imprisonment;
• confiscation of the goods;
• closure for up to six months; and/or
• publication of the decision in the press.
A unique feature of Egyptian law is that the
trademark owner can join the criminal proceedings as a
civil claimant and may present evidence of harm. Playing
a proactive role in criminal proceedings gives IP owners

several advantages, as follows:
• It allows the plaintiff to support the prosecution’s
case if the prosecution takes too passive a role;
• If obtained, the conviction can be used as evidence in
a civil claim for damages; and
• It affirms the public image that IP owners are
aggressive in pursuing infringers, creating a
deterrent effect.
This course of action is preferable to a civil action as
it is quicker (lasting between six and 12 months) and has
a stronger deterrent effect on potential offenders.
There have been numerous such cases recently,
involving mainly copyright and trademark infringement,
in which the courts have found in favour of the IP owner.
This trend will continue as long as the relevant
enforcement authorities receive the help they need to
issue investigative reports. The only cases with a low
success rate are those involving the unauthorised display
of a trademark on a shopfront. In most cases, the
Egyptian courts have held that this practice should not
be penalised if the shop sells genuine products bearing
the same trademark.
Civil actions for compensation for IP infringement
Civil actions seeking damages for IP infringement are
carried out under the general legal principle that a
wrongdoer should compensate the aggrieved party for
the actual losses, lost opportunities and moral harm
sustained as a result of the wrongdoing. However,
despite this clear procedure parties seeking civil
damages face the following hurdles:
• The Egyptian courts often refer IP matters to
government experts, who then write their own
analysis and make the appropriate recommendations
to the court. This procedure delays the judicial
process and is highly susceptible to corruption. In
addition, in most cases the court simply affirms the
order recommended by the report.
• Courts usually award very low damages compared
to the sums requested. In one case the court awarded
E£20,000 in damages, despite the submission of
documents proving actual losses of E£200,000.
• It may take up to four years for a decision to be
rendered.
• It is very difficult to execute civil judgments relating
to the confiscation or destruction of infringing goods,
since the court bailiffs often refuse to do so due to a
lack of resources.
In addition, the police will refuse to execute a civil
Zaki Hashem & Partners, Attorneys at Law Egypt
court judgment that they do not understand. Civil
actions are another area in need of urgent reform.
Therefore, wherever possible it is better to pursue IP
infringers using criminal actions.
Motion to cancel IP registration
To cancel an IP registration, an interested party must
instigate an action in the administrative courts
requesting cancellation on the basis of prior use or other
legitimate grounds. Administrative court cases proceed
at a faster pace than civil court cases, but suffer from the
same disadvantages. In a similar manner to civil courts,
administrative courts must refer cases to the State
Commission for a report on the case. The State
Commission is a fact-finding body that recommends to
the court how the case should be decided – and the court
usually follows its recommendation. However, the State
Commission has no expertise in IP law, thus reducing the
applicant’s chance of success.
In general, a business will monitor the Official Gazette
for trademarks, patents and industrial designs similar to
those it already owns and, where necessary, oppose an
application within the statutory period of 60 days
following publication. If the Trademark Office or Patent
Office is convinced it should not continue with the
registration, the matter may be resolved quickly.
Changes in practice and procedure at the Patent and
Trademark Offices
The Patent Office is responsible for patent applications
and the Trademark Office is responsible for trademark
and industrial design applications. Industrial designs are
known under other systems of law as design patents and
follow a simple prosecution procedure in Egypt.
The Patent Office has automated the patent filing
system through its online database, which was created
and designed in conjunction with the World Intellectual
Property Organisation. The Patent Office is currently
processing approximately 1,500 pharmaceutical patent
applications, with the first pharmaceutical patent
expected to be issued at the beginning of 2007. Egypt has
become a receiving office for neighbouring countries
under the Patent Cooperation Treaty, which would
expand the role of the Patent Office within the region.
Since mid-2006 the Trademark Office has also been
undergoing positive changes, brought about by the
appointment of a new head – a former judge who used to
provide technical assistance and IP expertise to the
Ministry of Trade. For the first time in many years the
Trademark Office is being led by an official who is well
versed in IP practice.
Another noticeable change at the Trademark Office is
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 Egypt Zaki Hashem & Partners, Attorneys at Law

the success of the initiative to reduce the three to four-
year backlog in trademark registrations. Applicants can
now expect a mark to be registered within one to two
years. This is in line with the average time worldwide.
Trade agreements with strong IP components
Egypt is a member of the Berne Convention, the Paris
Convention, the Patent Cooperation Treaty and the
Madrid Agreement. In recent months there has been
controversy over Egypt’s attempts to execute an FTA
with the United States. The US government, after
serious complaints from a number of multinational
pharmaceutical companies, has made it clear that unless
IP enforcement is taken more seriously by the Egyptian
government, the FTA will not be executed. Despite Egypt’s
willingness to reach a middle ground by addressing and
balancing the concerns of the pharmaceutical companies
with the government's provision of affordable drugs, the
FTA talks have been put on hold. It is not clear when (or
even if) the talks will be resumed.
Conclusion
There have been few legislative changes on the IP scene
since 2005. Nonetheless, there has been an encouraging
increase in the level of awareness of IP enforcement
among the general public, IP owners, the government,
law enforcement authorities and the judiciary.
Furthermore, the continued development of the Patent
and Trademark Offices, as well as pending reform within
the Customs Authority to provide for border control,
have inspired greater hope in Egypt’s embryonic IP
system. It is yet to be seen whether this renewed
enthusiasm for IP protection will result in effective
changes to the law.

Nermien is a commercial and IP attorney with over seven years’ experience Nermien Al-Ali
counselling multinational clients on protecting, enforcing and leveraging their IP Senior Counsel
rights in Egypt. Her clients include Siemens, Honeywell, Eli Lilly and SC Johnson. Tel +20 2 393 3766 ext 155
Nermien practised law in Sydney for four years before moving to Cairo. She Email nermien.alali@hashemlaw.com
obtained an LLM in intellectual property from the Franklin Pierce Law Center and Zaki Hashem & Partners,
has written a book on best practice to manage and leverage intellectual property Attorneys at Law
as a business asset. Egypt

Robert specialises in providing legal advice on patent, trademark, trade Robert Mihail
secret, domain name and copyright law under Egyptian law and international Of Counsel
treaties. He has worked on ICANN arbitrations and has been actively Tel +20 2 393 3766 ext 156
involved in devising collection strategies for an Egyptian performing rights Email robert.mihail@hashemlaw.com
organisation. Robert also manages IP portfolios for multinational clients, as Zaki Hashem & Partners,
well as undertaking extensive anti-counterfeiting work. Robert also worked Attorneys at Law
as teaching assistant to Susan Richey, professor of trademark and unfair Egypt
competition law at Franklin Pierce Law Center.

248 Building and enforcing intellectual property value 2007