Santa & Cole received the invitation to present a whole lighting project for the transformation of Al Waab Str (Doha) on occasion of the XV Asian Games in 2006.

Mr. Ahmed Ali Mirza (Roads Maintenance Manager of Ashghal) was in charge of the design and commercial conversations between S&C and Ashghal, and officially received all he information required, including plans, drawings, 3D renders, videos, certifications, and all kind of technical calculations. Up to five different projects were made.
The five projects were also personally presented to the CEO of Ashghal H.E. Eng. Zayed Mansoor AlKhayareen.

Sheikh Jassim bin Hamad bin Khalifa Al Thani chose personally the specially modified Latina streetlight as the one preferred for Al Waab Street, that included a rear arm (with 1 spot), to light at the same time the lateral service lanes on both directions of the avenue.

Ashghal asked for a formal quotation of the approved project, and Santa & Cole sent its best offer for 920 Latina streetlamps to Lightbox (its agent in Qatar), who sent it to Bin Omran (Ashghal’s contractor), who finally sent it to Ashghal.

Ashghal reinforced its interest by making up to 13 comments, requiring further technical information and specific construction and execution details.

The Santa & Cole Export Manager visited Doha and delivered definitive physical models and all required complementary technical information to Mr. Ahmed Ali Mirza (Road Maintenance Manager of Ashghal).

Some days later, the S&C agent in Qatar informed their suspicion about Ashghal asking a local company (Al Shulah) to brutally copy the Latina streetlamp.

On Apr. 18th, Santa & Cole sent a formal Cease and Desist letter to Al Shulah and to Mr. Ahmed Ali Mirza (Ashghal).

Santa & Cole never received a reply.

Mr. Ahmed Ali Mirza (Ashghal) excused meeting S&C to explain the situation that needed the Cease and Desist letter.

Georges Khadra, agent of S&C in Qatar, wrote an explicit private email where described the situation after finally meeting  Mr Ahmed Ali Mirza.

S&C was then requested by Ashghal officials to visit Doha to see whether S&C could repair the counterfeited streetlamps already installed in Al Waab Str. This was the moment in which S&C physically discovered the malicious act of counterfeiting.

H.E. Eng. Zayed Mansoor Al-Khayareen, CEO of Ashghal, surprisingly apologize Dr Javier Nieto Santa, S&C President, for the brutal situation.

Mr. Ahmed Ali Mirza (former Road Maintenance Manager of Ashghal) had been removed and the new Road Maintenance Manager was Eng. Mohammed Aziz Al-Asmack, who was also astonished by the technical comments expressed by S&C technicians on the on-site inspection at Al Waab Str

The streetlights installed present clear technical weaknesses and constitute a serious traffic hazard.

Blinding spotlights (dazzling effect)
Because of the low quality of the lighting fixtures that provide small disks of light instead of a large uniform and safe curtain. The result is a long sequence of spotlights pointing at drivers eyes.

Unsafe structures
The counterfeited streetlamps are manufactured with too thin steel components that do not comply with safety and structural requirements. The maintenance hatch of the counterfeited units lack the structural reinforcement, and the base does not comply with safety standards. The result is a very unstable structure.

Ashghal never denied (but apologized) having infringed S&C’s exclusive rights, and confirmed by writing to be open to arrive to an amicable and fair solution.

In different meetings held by S&C’s President in Doha, Ashghal declared its will to:

• Order S&C to repair the counterfeited streetlights at Al Waab Str to relocate them into the harbour of Doha.
• Award S&C with different projects in Doha, such as the new (second) lighting project of Al Waab Str, the lighting project of the seafront (La Corniche) or the indoor lighting of Emir’sPalace (Al Wajbah).
• Negotiate an economic compensation for the counterfeiting.

As agreed with H.E. Eng. Zayed Mansoor Al-Khayareen, and in the spirit of good faith, in January 2008 Santa & Cole presented to Ashghal the new (second) lighting project for Al Waab Str (prepared by Architect Beth Galí, original designer of the Latina streetlight, this time with a new streetlamp made with LEDs), and in Apr. 2008 a full proposalfor lighting Doha’s Corniche (prepared by Guallart Architects, also with a specifically designed streetlamp).

Santa & Cole never received an answer about such new projects 2008 January April Beth Galí.

The lighting projects prepared by Beth Galí (January 2008) and Vicente Guallart (April 2008) for Al Waab Street made great impact and both were published in relevant Spanish media.

After 10 months of silence concerning the Memorandum of Understanding, and urging for a final settlement, S&C contacted the new CEO of Ashghal, H.E. Engr. Nasser Ali Al-Mawlawi. Equested by Ashghal Legal Affairs Dept., S&C had to send again all kind of documentation, already delivered, but now duly ratified by the Ministry of Foreign Affairs of the State of Qatar through the embassy in Madrid.
All the information was delivered again in July 2009 and September 2009 to H.E. Engr. Nasser Ali Al-Mawlawi.

Very surprisingly, on May 5th 2010 the Minister H.E. Sheikh Abdul Rahman Bin Khalifa Bin Abdul Azziz Al-Thani refused the proposal of settlement.

Santa & Cole presents its case to Mr. Francis Gurry, Director General of World Intellectual Property Organization (WIPO, United Nations, Geneva)

WIPO Arbitration and Mediation Center deployed its bons offices by approaching verbally to the State of Qatar (through the Permanent Mission of Qatar in front of UN Geneva) to accept a mediation or arbitration.

Ten months later, the Embassy of the State of Qatar in Geneva sent the following note:

Meanwhile, confusion is spreading all around the world. Some architect studios in London, when commercially visited because of the works of the London 2012 Olympics, blame S&C for the poor quality of their supposed Latina streetlamps located in Doha. S&C also receives astonished comments from its American licensee, commercially operative in the Gulf area. Difficult to evaluate the amount of orders lost and the serious damage made to the corporate image of Santa & Cole.

Santa & Cole explains the case to the Spanish Ministry of Industry and Trade and, after study, the Spanish Government decides to include Qatar in the list of countries with trade barriers, based on non respect to Intellectual Property laws and non respect to WTO (TRIPS) obligations.

S&C initiates the process of approaching the European Comission to start a formal dispute between EU and Qatar in front of the World Trade Organization (WTO), by means of writing directly to Mr. Karel de Gucht, Commissioner for Trade.

After some writing correspondence, the Ambassador of Spain in Qatar met the Qatari Minister of Municipality and Urban Planning H.E. Sheikh Abdul Rahman Bin Khalifa Bin Abdul Azziz Al-Thani requesting again a friendly settlement. The Minister granted verbally a prompt solution.

Renewing their efforts, WIPO Arbitration and Mediation Center repeats by writing the invitation to both parties to find a common understanding.

The Ambassador of Qatar in front of UN Geneva sent an email in which the arbitration and mediation of the WIPO is declined by the State of Qatar, leaving S&C with the sole option of entering into Courts.

In the WIPO Training of Trainers Program on Effective Intellectual Property Asset Management by Small and Medium-Sized Enterprises, held in Doha from 10th  14th April 201,1 it was clearly recognized the progressive political will of the State of Qatar in protecting IP rights and the increasing process of adjusting the internal legal regulations.

Unfortunately, in this same WIPO Training of Trainers Program is stated that the Qatar legislation on Unfair Competition and counterfeiting has not yet been enacted.

Santa & Cole has proven its patience, honesty and willingness to find a settlement.

Santa & Cole recognizes the merits of the State of Qatar in progressively deploying the necessary legal regulations, according to its international obligations, but it is a fact that the regulation of Unfair Competition has not yet been enacted.

Before going into Spanish Courts, Santa & Cole tries through all possible contacts and international institutions, to make H.R.H Sheikha Mozah aware of the situation. With this aim, Santa & Cole carefully prepares an Executive Summary of the case (with hundreds of pages of detailed Annexes).

Dr. Javier Nieto Santa, President of Santa & Cole, as well as Pau Herrera, President of BCD (Barcelona Centre de Disseny), as well as Beth Galí (Designer of the Latina) write personal letters to H.R.H Sheikha Mozah, asking for her intermediation:

The Executive Summary of the case (with its Annexes) and this documentation is physically (and digitally) sent to the Spanish Embassy in Qatar. Finally, on May 27th 2012 Santa & Cole receives from the Ambassador, Ms. Carmen de la Peña, the confirmation that the documentation has been handed out to the H.R.H Sheikha Mozah.

As Santa & Cole receives no answer from H.R.H Sheikha Mozah, the moment to go to Courts has finally arrived, Santa & Cole and Beth Galí must prepare two Qualified Reports to be included in Beth Galí’s Demand:

A. The preparation of a Qualified Report about the Latina Streetlight

A Spanish qualified group of experts travels again to Doha to prepare a Qualified Report, comparing the Latina Streetlight installed at Al Waab Street with the original one.

B. Qualified Report about the moral damages caused to the designer Beth Galí

Santa & Cole orders a Qualified Report, quantifying economically the moral damages suffered by the designer of the Latina Streetlight, Ms. Beth Galí because of the Al Waab Street (Doha) installation.

Beth Galí’s lodges a lawsuit against Qatar for moral damages at the Barcelona Courts -Juzgado Mercantil nº 2 de Barcelona.

Before the Demand had been accepted by Courts, Santa & Cole continues intensively with the aim of reaching the acceptance of a WIPO Arbitration, and relevant persons from the International Design Community and from the Catalan Governement send personal letters to Mr. Antonio Tajani, Vice-President of the European Commission:

The European Commission trough Mr. Diego Canga Fan (Head of Antonio Tajani‘s Office) replies to Mr. F. Xavier Mena telling that the case has been transferred to Mr. de Gucht, Commisioner at the European Commission in Commerce matters.

It takes some months to translate the document and on December 28th the official translation is presented to Courts, in Barcelona at the ‘Juzgado de lo Mercantil nº 2 de Barcelona’.

Also the European Commission reply to Mr. Giovanni Cutolo trough a letter from Mr. Fco. Caballero Sanz (Head of Unit of Enterprise and Industry, Directorate-General), stating that they are not able to take part in such controversies.

Commercial Court of Barcelona admitted the lawsuit filed on June by Beth Galí against Qatar for moral damages. This means that the Court of Barcelona ‘Juzgado de lo Mercantil nº2’ will prosecute the case.

The government of Qatar and Ashghal are notified through the Spanish embassy in Qatar of the lawsuit filed by Beth Galí. Both oppose the lawsuit: they allege immunity of the State of Qatar against Spanish law and territorial incompetence of the Spanish judge to hear the case.

Beth Galí’s defence is certain about the impossiblity of having a fair trial for the author in Qatar due to gender discrimination issues in the country. An expert’s report on the matter is submitted to the judge showing this same conclusion.

The Spanish judge upholds the argument of Qatar and ASHGHAL and inhibits himself as incompetent to judge the case. Qatar and ASHGHAL demand the costs of the proceedings from the author.

The author appeals to the Provincial Court of Barcelona to avoid helplessness.
The resulting sentence will determine whether the State of Qatar and Ashghal are to be tried in Barcelona for the case.

The State of Qatar and Ashghal submits its opposition to the appeal presented by Beth Galí to the Provincial Court.

“LA LEY”, a prestigious spanish law journal, publishes an article on the case which analyzes the sentence given by the judge on 1st instance concluding its illegitimacy.

The Provincial Court of Barcelona considers favourably the appeal procedure presented by Beth Galí. The case will be sent back to Barcelona’s Court No. 2.

This is an unparalleled historic case which makes Beth Galí a pioneer in the international defense of copyright:

• Never before had an author sued a foreign state for the violation of his moral rights.
• Never had a Spanish Court considered itself internationally competent to judge such a case.

The sentence encourages Santa & Cole to consider filing its own lawsuit against the State of Qatar and Ashghal for the damages suffered because of the LATINA couterfeiting.

The State of Qatar and Ashghal request a clarification on the sentence which is inmediately considered improper by the Provincial Court of Barcelona and therefore rejected.

Qatar and Ashghal announce their will to lodge an appeal at the Supreme Court. Beht Galí submits a document opposing the appeal.

Two days later the appeal request is strongly disregarded by the Provincial Court of Barcelona.

Finally the case is sent back to Barcelona’s Court No. 2 (1st instance).
The State of Qatar will definitely be judged in Barcelona for the biggest case of public piracy in the history of design.

 

The State of Qatar and Ashghal present their Statement of Defence to the lawsuit. 
They insist on the validity of the arguments that were rejected in 2nd instance as such as the immunity of the State of Qatar against spanish law and the territorial incompetence of the spansish court to judge the case.