November 26, 2010 Presentation at WIPO

Santa & Cole vs. Ashghal -Public Works Authority of the State of Qatar-

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1. Santa & Cole vs. Ashghal Public Works Authority: The Problem

2. Santa & Cole

3. Beth Galí

4. Ashghal

5. Who is who

6. The Creative Process, 2005 - 2006

7. The Business Negotiations, 2006

8. Counterfeiting of the Latina Street Lamps, 2006

9. Settlement Negotiations, 2007 - 2010

10. First Round of Settlement Negotiations, 2007

11. Second Round of Settlement Negotiations, 2008

12. Third Round of Settlement Negotiations and Refusal to Settle, 2009 – 2010

13. Santa & Cole vs. Ashghal Public Works Authority: The Solution

Contents

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Act of Unfair Competition against Santa & Cole

Infringement of IP rights held by Santa & Cole and Beth Galí

Counterfeiting

WIPO Mediation

WIPO Arbitration

Santa & Cole vs. Ashghal: The Problem

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The State of Qatar is a member state of WIPO since September 3, 1976 and a contracting party to 6 WIPO treaties, including the Berne Convention and the Paris Convention (July 5, 2000).

Additionally, Qatar has been a member of WTO since January, 13 1996, and is therefore subject to the GATT Agreement.

Santa & Cole vs. Ashghal: The Problem

Paris Convention, art. 10 bis Unfair Competition

1. The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.

2. Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.

3. The following in particular shall be prohibited:

(i) all acts of such a nature as to create confusion by any means whatever with the establishment,

the goods, or the industrial or commercial activities, of a competitor;

(ii) false allegations in the course of trade of such a nature as to discredit the establishment, the

goods, or the industrial or commercial activities, of a competitor;

(iii) indications or allegations the use of which in the course of trade is liable to mislead the public as

to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or

the quantity, of the goods.

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Santa & Cole vs. Ashghal: The Problem

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1999 2005-2006 2007

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In its 25 years of history Santa & Cole has become a pioneering Spanish business group devoted to editing industrial design. The company takes pride in defining itself as a knowledge industry, undertaking the mission to generate, contract, protect and circulate knowledge expressed by means of physical products embodying good design. Since editing is its raison d'être, registered design is not only an aesthetic choice but also the basic pillar of Santa & Cole’s differentiation strategy.

Throughout the years, Santa & Cole’s organizational culture has experienced a progressive transformation, shifting from a “product-centric” to a “project-centric” model, whereby Santa & Cole’s team will apply their knowledge to the specific needs of clients.

Nowadays, the company successfully edits indoor lighting products and furniture, urban elements, books and plant elements for urban reforestation, all under the Santa & Cole brand. Since its beginnings, Santa & Cole has collaborated with both well established and with promising young designers and architects. So far, 88 authors have been a part of Santa & Cole’s history, such Miguel Milá, Carles Riart, Beth Galí, Antoni Arola, or foreign renown designers as Arne Jacobsen, Vico Magistretti and Philippe Starck. Not only have these designers earned an enormous variety of awards for products that have been in Santa & Cole’s catalogue, but the company itself has become one of the most prominent symbols of Spanish design worldwide.

Santa & Cole’s professional team in Spain amounts to 120 staff members in 8 locations (Barcelona, Bilbao, Galicia, Madrid, Málaga, Valencia, Milan, and Frankfort). Santa & Cole exports to over 30 countries, being Europe and America its main markets. It also has a branch in Milan and Frankfort, and affiliate companies are to be opened soon in UK, France, Sweden and Brazil.

After having established itself as a

successful editing company of indoor

elements, Santa & Cole launched this new

line of business in 1987 with the

Lamparaalta street lamp. Barcelona’s

renewal for the 1992 Olympic Games

marked the turning point in this line of

business. It now accounts for 70 % of the

company’s sales and 50 % of its exports,

featuring a wide array of urban elements

that aim at improving people’s quality of life

as well as the aesthetic beauty of public

spaces.

Company Profile Specifically: Urban Elements

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Beth Galí

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Beth Galí was a member of the group of architects known as the "Generation of the 80s" that struggled to make out of Barcelona the city of design. Architect, town-planner, and designer, Beth Galí has contributed to consolidate Catalan architecture's renown worldwide.

Throughout the 80s, a generation of young architects was driven by the idea of building the new Barcelona, with ambitious objectives: open the city to the sea, refurbish the historic district and turn it into a pedestrian area, create new public spaces, and design modern urban elements. The new paradigm in town-planning and architecture that resulted from the Barcelona 1992 Olympic Games was marketed abroad as the "Barcelona model". Since then, its most representative architects have renovated several urban spaces all around Europe, and are part of major architectural projects. As Galí states: "When someone calls me to work abroad they are not looking specifically for me; my work, just like that of my other colleagues, is nothing but the projection of a success."

Beth Galí graduated both from industrial design and architecture. During her studies she was mentored by Federico Correa and Alfonso Milá, whom she greatly admired and considers to have been the greatest support to her professional career. From 1982 to 1988, Galí worked at Barcelona's city hall, where she planned public spaces, such as the Joan Miró park (with Màrius Quintana and Joan Miró) or the Túnel de la Rovira park, among others. Together with Màrius Quintana, she designed the Lamparaalta streetlamp (1983). This piece was Santa & Cole’s first urban element, became a bestseller from its beginnings, and was awarded the prestigious award ADI-FAD Delta de Plata in 1984.

Beth Galí is acknowledged worldwide for the imaginative projects she has undertaken all around Europe, in which she has fostered pedestrian areas as the best way to enjoy public spaces. Her most outstanding projects include the remodeling project of the Patrick and Gran Parade streets in Cork (Ireland, 1999), the historic district of s'Hertogenbosch (Netherlands, 1993-1998), Roermond (Netherlands, 1995-1998), and Dublin (Ireland, 2002), or the urban spaces of Piet Smith in Rotterdam's pier (Netherlands, 1996), for which she designed the Bici Línea bicycle rack.

As for Spain, Galí has also undertaken numerous projects, such as the Zafra park in Huelva (1994), the Joan Miró library (1990) or the swimming area at the Fòrum (2004), both in Barcelona. The year 1998 was a milestone for Galí: she was awarded the National Town-Planning Award of the Netherlands, an exhibition on her work was inaugurated in s'Hertogenbosch, and the Het Kruithuis museum in s'Hertogensbosch published "Beth Galí, architecture & design 1966-1998", published in Spain by Península. Beth Galí has also been acknowledged in Spain on many occasions by FAD and ADI-FAD. She has been continuously collaborating with these entities, and was president of FAD for several years. Galí collaborates intensely with academic entities, she teaches urban design at the ETSAB and at the School of Design at Harvard University, and is a visiting lecturer in many other universities in Europe.

Beth Galí

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Ashghal

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Ashghal is the Public Works Authority of the State of Qatar. According to information available on its website:

Ashghal

Public Works Authority “Ashghal” was established on the basis of the Emiri Decree No. (1) issued by HH the Emir Sheikh Hamad bin Khalifa Al Thani on January 20, 2004, as an autonomous body to oversee all infrastructure related projects as well as public amenities of the State. The Emiri Decree stressed on quality and perfection of work as per international specifications and standards.”

In the new millennium, Qatar has embarked on a major transformation drive. There has been a rapid increase in construction projects in the last few years, during which major ventures have been set in motion, such as the Olympics Village, which hosted the delegates of the Asian Games Doha 2006. ”

Our vision: To be the regional pioneer in the provision of infrastructure development and management. Our mission: To provide and maintain state-of-the-art infrastructure that fully meet the national economic and social development plans by adopting the best practices known internationally. ”

“

“

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Beth Galí

Intramundana, S.A.

License Agreements

Submission of Proposals

Discussion and Acceptance

Sublicense Agreement

Santa & Cole Neoseries, S.L.

Business Negotiations around the Al Waab St Lighting Project

Who is who

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Beth Galí

Architect and designer. Author of the Latina street lamp designs and copyright licensor.

Intramundana, S.A.

Holding company of the Santa & Cole business group, wich includes Santa & Cole Neoseries, S.L. Sole and exclusive copyright licensee of the standard Latina design, and sublicensor to Santa & Cole Neoseries, S.L. The company had been called Santa & Cole Ediciones de Diseño, S.A. until 2008, and Intramundana Lux, S.A. until 2010.

Santa & Cole Neoseries, S.L.

Design Editing company of indoor and outdoor elements under the Santa & Cole brand, created in 2005. Non-exclusive copyright sublicensee of the standard Latina design, and exclusive copyright licensee of the modified Latina design. Developed the Al Waab St lighting project and held commercial negotiations with Ashghal.

Light Box International

Lighting company operating in Lebanon and Qatar. Acted as an intermediary between Santa & Cole and Ashghal during the submission of design proposals for the Al Waab lighting project in 2005-2006.

Ashghal

Public Works Authority of the State of Qatar. Requested Santa & Cole to develop a lighting project for Al Waab St and asked for adaptations to the standard Latina street lamps in order to meet the needs of Al Waab St. Approved Santa & Cole’s proposal for the Al Waab St lighting project. Received technical data, sketches and models of the Latina designs and subsequently ordered and installed counterfeit street lamps in Al Waab St in Al Waab St.

Bin Omran Trading & Contracting W.L.L.

Belongs to the Bin Omran Group located in Doha (Qatar). Entrusted by Ashghal to execute public works, including the lighting project of Al Waab St.

Who is who

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… 5 projects are submitted …

Standard Latina street lamp

5th and final proposal incorporating a combination of the standard Latina and a specially modified Latina

The Creative Process Feb. 2006 Sept. 2005

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In Apr. 2005, Light Box Int’l met Santa & Cole at Construmat, the trade show for construction materials held annually in Barcelona (Spain).

Five months after, Light Box Int’l suggested Santa & Cole’s outdoor lighting products to Ashghal Public Works Authority, in view of the construction works that the city of Doha (Qatar) was going to undertake on occasion of the XV Asian Games of December 2006.

As a result Ashghal requested Santa & Cole to develop a lighting project for Al Waab St, the 6.5 km avenue that connects downtown to the Doha Sports City, the Aspire Tower and the Khalifa Stadium, among other venues. Ashghal, through Light Box Int’l, gave Santa & Cole preliminary instructions: conceptually the street lamps should remind the shape of a wave by using different heights of poles, and technically certain criteria should be met. Out of Santa & Cole’s catalogue, Ashghal liked better 4 of the most representative designs.

Santa & Cole’s technical department started working right away on the Al Waab St lighting project:

Oct. 2, 2005 Santa & Cole sent the 1st project to Light Box Int’l. Subsequently Light Box Int’l presented it to Ashghal and Bin Omran. They asked for a completely new proposal.

Nov. 2005 Santa & Cole sent the 2d project to Light Box Int’l. Subsequently, Light Box Int’l presented it to Ashghal’s top management. They asked for changes.

Jan. 12, 2005 Santa & Cole hand delivered the 3d project to Light Box Int’l. Light Box Int’l showed the project to Ashghal, which then presented it to Sheikh Tamim bin Hamad Al Thani, Crown Prince of the State of Qatar. Ashghal then requested Santa & Cole to replace the proposed street lamps with Latina street lamps.

Jan. 24, 2006 Santa & Cole sent the 4th project to Light Box Int’l, which then presented the different options incorporated in said project to the Crown Prince and Ashghal’s top management. As a result, Ashghal asked Santa & Cole to place the Latina street lamps on both sides of the highway. Given that in most instances the highway has a service reservation, Ashghal requested changes to the Latina design so that both the central and the service reservation would receive light in those cases.

Feb. 2, 2006 Santa & Cole sent the 5th project to Light Box Int’l. A few days later, Light Box Int’l confirmed by phone that Ashghal had approved the project, and asked for a quotation.

Santa & Cole’s final project for Al Waab St consisted of:

- 3 versions of the standard Latina, with different inclinations of the main arm.

- 3 versions of the modified Latina, with different inclinations of the main arm. The modified Latina street lamp was

designed by Galí, “taylor made” to meet the specific lighting needs of Al Waab St by incorporating a rear arm.

The Creative Process Feb. 2006 Sept. 2005

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The Business Negotiations and Acceptance

OK by Ashghal

Ashghal’s reply requesting for additional specific technical data

Quotations submitted by Santa & Cole, Light Box Int’l and Bin Omran

Santa & Cole’s final project

700

920

€ 7,384,317.44 QR. 41,061,363.00

€ 7,934,565.79

700

Mar. 2006 Feb. 2006

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Following Ashghal’s request and after some negotiation with Light Box Int’l, Santa & Cole issued a proforma

invoice on Feb. 14, 2006 for 920 standard and modified Latina street lamps at a total price of € 7,384,317.44.

Santa & Cole directed the invoice to Light Box Int’l.

Subsequently, Light Box Int’l sent a quotation to Bin Omran on Feb. 15 for 700 street lamps for € 7,934,565.79.

The reason why said quotation included 220 units less than Santa & Cole’s is unknown. Three days after, Light

Box Int’l met with Bin Omran and discussed in person the offer.

On Feb. 19, Bin Omran submitted its quotation to Ashghal for “supplying only” 700 Latina street lamps. The

prize was Qatar Riyal 41,061,363.00 at a conversion rate of €1 = QR 4.5 (€ 9,124,747.33), wich included Bin

Omran’s overhead & profit rate (15%).

Ashghal replied to Bin Omran on Mar. 8 regarding the street lamps. Once again, Ashghal showed its interest in

the project they had approved by making up to 13 comments to it, where Ashghal essentially requested

additional technical information and specific construction and execution data.

The Business Negotiations and Acceptance Mar. 2006 Feb. 2006

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Santa & Cole delivers to Ashghal abundant technical data and models of the standard and modified Latina

designs Apr. 2, 2006

Santa & Cole’s cease & desist letter to Al Shulah

Apr. 18, 2006

Installation of counterfeit street lamps in Al Waab St, Doha (Qatar)

Summer 2006

Counterfeiting of the Latina designs Summer 2006 Apr. 2006

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Summer 2006 Apr. 2006 Counterfeiting of the Latina Street Lamps

Upon Ashghal’s request, Santa & Cole’s Export Manager at the time, visited Doha and personally delivered to

Ashghal’s representatives the requested construction and execution information and technical data. Specifically,

and among other documents, Santa & Cole gave models and photographs of the Latina street lamps and

Applus+ certifications (whereby this prestigious independent Spanish organization guarantees that a given

product complies with given technical specifications). The certifications included wind, load, resistance and

safety factor calculations. In this meeting, Ashghal mentioned that the price was too high.

Light Box Int’l informed Santa & Cole some weeks after that they suspected Ashghal had asked a local

company, Al Shulah, to develop a lighting project for Al Waab St project based on the Latina street lamps. On

Apr. 18, Santa & Cole sent a cease and desist letter to Al Shulah. Santa & Cole never received a reply.

Santa & Cole and Light Box Int’l attempted to meet with Ashghal on several occasions.

In April, Ashghal finally met with Light Box Int’l and confirmed that the project had been granted a while ago to

Al Shulah.

Six months later, Santa & Cole received the first photographs of street lamps that were being installed in Al

Waab St. They constituted a blatant counterfeited version of the Latina designs. With the available information,

Santa & Cole’s technical department carried out a preliminary analysis of the infringing street lamps. The report

stressed the poor execution of the counterfeit products, clearly below the required safety factors, and predicted

that severe problems would consequently arise in the future.

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Work 1 Standard Latina, 1996

Work 2 Modified Latina for the Al Waab St

Lighting Project, 2006

Counterfeit street lamps installed in

Al Waab St, Doha (Qatar), 2006

Counterfeiting of the LATINA Summer 2006 Apr. 2006

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The Minister of

Municipal Affairs and

Urban Planning of the

State of Qatar refuses

settlement agreement

3 Rounds of Negotiations

2008 2007 2009 – 2010

Settlement Negotiations between Santa & Cole and Ashghal

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Once Santa & Cole received confirmation of the existence of the counterfeit street lamps, the

company sought a solution to a dreadful situation that had meant the dramatic loss of a major

business opportunity. For four years, Santa & Cole attempted to negotiate an amicable settlement

with Ashghal. Each attempt entailed a great expense of time, money, traveling, and creativity that

were only rewarded with disappointment to Santa & Cole’s good faith negotiations.

Ashghal never denied having infringed Santa & Cole’s exclusive rights.

Settlement Negotiations between Santa & Cole and Ashghal 2010 2007

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Economic Compensation

Technical Consultancy Agreement

Possible Future Projects in Doha

Our desire to settle the issue amicably and fairly

Santa & Cole’s first MoU, requested by Ashghal, and subsequent negotiations.

First Round of Settlement Negotiations July 2007 Apr. 2007

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“we would also like to assure you of our desire to settle the issue amicably and fairly once the whole legal position is clarified through expert legal opinion which we have already sought and hope to obtain very soon.”

Upon Ashghal’s request to settle the matter of the counterfeit street lamps installed in Al Waab St, a team from Santa & Cole led by chairman visited Ashghal’s General Manager in the Doha headquarters in Apr. 2007.

Following the conciliatory atmosphere of this first visit, Ashghal’s General Manager asked Santa & Cole to elaborate a Memorandum of Understanding (MoU) of an out-of-court settlement that would include an economic compensation offer and a possible framework of collaboration in the future. Shortly after, Ashghal’s General Manager invited Santa & Cole to visit Doha again.

In May 2007, Santa & Cole visited Ashghal’s headquarters for the second time. First, Ashghal’s General Manager met Santa & Cole’s team and Beth Galí, and discussed with them the MoU and the problems that had already arisen in Al Waab St. Ashghal’s General Manager then sets a meeting with Ashghal’s Technical Department so that said department could discuss with Santa & Cole the existing problems with the poor performance and safety risks caused by the counterfeit street lamps. Surprisingly, the Technical Department asked Santa & Cole whether they could help fixing the counterfeit products.

That same evening, Santa & Cole and Ashghal’s Technical Department conducted a detailed on site inspection of Al Waab St. Santa & Cole elaborated a detailed report that revealed the severe manufacturing and installation deficiencies of the counterfeit street lamps, which had already caused car accidents. During the inspection, Ashghal’s Technical Department acknowledged not having been aware of the seriousness of the deficiencies that Santa & Cole’s experts pointed out. The Technical Department undertook to give a complete report of the situation to Ashghal’s General Manager, and both parties agreed that they would leave to him the next step to be taken.

Only four days later, Ashghal’s General Manager sent a letter to Santa & Cole enclosing Ashghal’s legal advisers’ comments to the MoU. Two letters from Santa & Cole’s chairman, making subsequent settlement offers, followed.

In this first round of negotiations, the parties considered reaching and out-of-court settlement that would include some kind of economical compensation, a “technical Consultancy” agreement whereby Santa & Cole would assist in solving the current deficiencies of Al Waab St, and future projects in Doha, a city that was undergoing major improvements.

After thorough negotiations, Ashghal’s General Manager sent a letter in July 9, 2007 stating only that:

First Round of Settlement Negotiations July 2007 Apr. 2007

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Technical Consultancy Agreement

Possible Future Projects in Doha: - New lighting project for Al Waab St.

- Doha Corniche seafront

Projects presented by Santa & Cole to Ashghal for Al Waab’s new Lighting Project and Doha’s Corniche, Jan. and Apr. 2008.

Second Round of Settlement Negotiations Apr. 2008 Jan. 2008

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Since the end of the year 2007, and throughout 2008, Ashghal and Santa & Cole discussed on several

occasions the following options:

– The possibility of Santa & Cole collaborating in solving the lighting deficiencies in Al Waab St by replacing

the existing street lamps and helping repair the counterfeit products that would then be reinstalled in

another area of Doha;

– The possibility of Santa & Cole being considered for other projects in Doha, such as the lighting project of

Al Wajbah (the Emir Palace), providing lighting and urban furniture elements for the Corniche seafront.

These negotiations went beyond mere hypothesis, and in January and April 2008 Santa & Cole presented two

project proposals at Ashghal’s headquarters, following Ashghal’s request. The first project consisted of a new

lighting project for Al Waab St, where Santa & Cole proposed a new street lamp designed by Beth Galí. The

second project was meant for Doha Corniche seafront, and had been designed by Santa & Cole together with

Guallart Architects.

Second Round of Settlement Negotiations Apr. 2008 Jan. 2008

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Santa & Cole

requests the

intervention the

Minister of Municipal

Affairs and Urban

Planning

- Santa & Cole sends all

requested document

- Santa & Cole’s lawyers send

Ashghal a cease & desist letter

- Meetings Santa & Cole –

Ashghal

The Minister finally refuses the

proposal of settlement

Ashghal’s Legal Affairs Department

informs Santa & Cole of the Minister’s

decision, May 2010

May 2010 Apr. 2009

Some of the documents submitted by Santa & Cole

Third Round of Settlement Negotiations and Minister’s

Refusal to Settle

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Three years after Ashghal commissioned and installed the counterfeit street lamps, and seeing that all attempts

to settle the matter had been unsuccessful, Santa & Cole’s chairman decided to contact the Minister of

Municipal Affairs and Urban Planning of the State of Qatar. In April 2009, he sent a letter to the Minister

requesting his intervention to definitely solve the situation.

Throughout the eight following months, Santa & Cole and Ashghal’s Legal Department engaged in back and

forth correspondence where Ashghal would request Santa & Cole to submit more and more documents proving

its exclusive rights and the previous chain of events, all dully translated and legalized. Several meetings

between Santa & Cole representatives and Ashghal’s Legal Department took place.

In December 2009, Santa & Cole sent a cease and desist letter to Ashghal through its legal advisers.

In February 2010, Ashghal held a meeting with Santa & Cole: once again, the parties discussed the possibility

of an economical compensation, the potential inclusion of Santa & Cole in future projects in Doha, and Santa &

Cole’s collaboration to improve the lighting of Al Waab St. Still Ashghal did not provide a sound solution to

Santa & Cole.

Three months later, on May 5, 2010, Ashghal’s Manager of Legal Affairs Department informs Santa & Cole that

the Minister has refused the proposal of settlement.

Third Round of Settlement Negotiations and Minister’s

Refusal to Settle

May 2010 Apr. 2009

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Act of Unfair Competition against Santa & Cole

Infringement of IP rights held by Santa & Cole and Beth Galí

Counterfeiting

WIPO Mediation

WIPO Arbitration

Santa & Cole vs. Ashghal: The Solution

Thank you