The Syrian Ministry of Interior Trade and Consumer Protection
Tuesday, 30 December 2014
Has issued Decision No. 1999 on 13 November 2014 stipulating an increase in the official publication fees and search fees of all Intellectual Property Matters as of 1st of January 2015.
The African Intellectual Property Organization (OAPI) became the 93rd member to join the Madrid Protocol.
Monday, 22 December 2014
OAPI, short for Organisation Africaine de la Propriété Intellectuelle, is composed of 17 member states which include Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, the Republic of Congo, Côte d'Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo. OAPI's headquarters are located in Cameroon.
The Madrid Protocol will enter into force in OAPI countries on March 5, 2015.
Bahrain: Cybercrime Crackdown
Monday, 22 December 2014
Bahrain issued Law no. 60 of 2014 in an effort to combat cybercrime and set punishments for offences committed on the Internet.
The law describes the penalties on violations all cybercrimes committed, such as gaining unauthorized access to a computer system or network, eavesdropping over private transmissions, or presenting forged data as true.
This move comes as an addition to the already established GCC cybercrime law, which was issued last year.
Bahrain: Putting a Lid on Commercial Fraud
Monday, 22 December 2014
Bahrain issued the Anti-Commercial Fraud Law No. 62 of 2014 in an effort to protect consumers and regulate the market. The law defines commercial fraud as the use and sale of a fraudulent commodity which has been altered or manipulated in order to cause deception.
The law specifies penalties that will result in imprisonment up to the max of ten year jail term and a fine of up to 10,000 dinars (US $26,516) for any commercial fraud that causes permanent disability. The law also stipulates life imprisonment and a fine of up to 20,000 dinars (US $53,032) if the fraud causes death.
The new law offers a positive enhancement of the existing enforcement framework in Bahrain and is expected to increase the effectiveness of enforcement mechanisms through the use of deterrent penalties.
Jordan: Trademark Protection Not Lost in Translation
Monday, 22 December 2014
Jordanian Trademark Office recently acknowledged the fame status of ALWADI AL-AKHDAR, after a local manufacturer applied for the registration of GREEN VALLEY as a trademark in class 29. Upon publication of the mark in the official gazette, Al Wadi Al Akhdar SAL opposed on the basis that the word mark represents an English translation their trademark.
In order to demonstrate their brand’s fame, Al Wadi Al Akhdar SAL provided evidence of use and registration of the trademark in Lebanon, Syria, Saudi Arabia, United Arab Emirates, Qatar, Yemen and Jordan, where the mark was registered as early as 1985 in classes 29, 30 and 32. The company provided further confirmation of extensive sales and marketing for its ALWADI AL-AKHDAR products in the region to establish recognition within the relevant segment of the consumers.
The TMO found the evidence presented by Al Wadi Al Akhdar SAL compelling to establish that the ALWADI AL-AKHDAR has indeed acquired fame and recognition and therefore qualifies for the special protection provided by article 12/8 of the trademarks. The law prohibits the registration of any trademark that represents an imitation and/or translation and/or transliteration of a famous trademark.
The verdict submits that products under the trade name GREEN VALLEY may confuse and mislead consumers into thinking that the two trademarks are related or belong to the same commercial source which will undoubtedly cause damage and create a situation of unfair competition, leading to the cancellation of the registration of GREEN VALLEY.
KSA: Preparing for PCT Filings
Friday, 19 December 2014
The Saudi Patent Office will begin acting as a Patent Cooperation Treaty Receiving Office as of January 1, 2015.
International applications may be filed at the SPO using WIPO’s ePCT system. Upon filing, applicants may choose the Egyptian Patent Office, among others, as the competent International Searching Authority and International Preliminary Examining Authority.
The SPO is also expected to receive PCT national stage entries as of February 3, 2015. There has yet to be an announcement detailing requirements, fees, and the annuity due date. We will monitor the situation closely and provide you with any updates.
Kuwait: Claiming Priority Now Possible
Wednesday, 17 December 2014
Kuwaiti Trademark Office announced that it will be accepting new trademark applications with priority claims. Required documents will now include a certified copy of the priority document duly legalized up to the Kuwaiti consulate. This document may be submitted within 3 months from filing date. A more detailed account on the trademark filing requirements can be found on our Kuwait page.
This update comes in light of Kuwait’s accession to the Paris Convention earlier this year that entered into force on December 2, 2014. With Kuwait’s accession, all the Gulf Cooperation Council member countries have now acceded to the Convention.
MENA REGION: 2014 in Playback: Annual Report on Regional Developments
Wednesday, 3 December 2014
Maddock & Bright IP Law Office annual Playback series sums up the most the important intellectual property developments and news that unfolded over the past year in the Middle East and North Africa.
Listed below are the IP highlights of 2014:
New Requirements for Patent Applications: Effective as of May 1, 2014 but are retroactive to pending applications. The Patent Office is expected to issue notices and set a deadline for completing the requirements for the pending cases.
Amendment of Copyright Law: The main features of the amended Law include the prohibition of all activities related to manufacturing, importing, exporting, buying, selling or distributing copyrighted items without the prior consent of the owners.
Increase in Official Fees: Applicable as of April 1, 2014.The increase relates to: (1) oppositions, (2) availability search and status search, and (3) obtaining certified copies.
Re-registration Into Effect: Pursuant to the new regulations implementing the Ethiopian Trademark Law of 2006, trademark owners were asked in 2014 to take specific measures when it comes to the particulars of their portfolio in order to ensure that everything is in order. December 23, 2014 will in principle be the final deadline for the: (1) re-registration of trademarks filed in the country before July 7, 2006, and (2) renewal of trademarks filed between July 07, 2006 and June 22, 2007.
Amendment to IP Executive By-laws Addressing Examination of Patent Applications: A new process for the examination of patent applications was established. The IIPO will first perform examination on formal grounds. Upon satisfaction, the IIPO will forward the matter on to the competent authority for substantive examination. This authority will then examine the application and provide its opinion based on which the IIPO will issue its decision.
Border Protection Remains a Must: A draft law on Border Measures was introduced in order to deal with piracy and counterfeiting. It is expected that the customs officials adopt an ex-officio border system. As a result, the customs authorities are entitled to suspend ex-officio products which are suspected of being counterfeit and to inform immediately the rights holder as well as the importer.
Administrative Courts to Replace the Higher Court of Justice: The Administrative Courts Law No. 27 of 2014 was ratified. The law abolishes and replaces the Higher Courts of Justice Law No. 12 of 1992 and establishes a two-degree adjudication system for administrative disputes. All decisions issued by the Administrative Court shall be subject to appeal before the “Higher Administrative Court” within 30 days of the date of issuance of the appealed decision. All administrative cases currently under consideration by the Higher Court of Justice are to be referred to the Administrative Court as of October 17, 2014.
New Regulation for Trademark Assignment: This regulation includes a list of articles related to trademark assignment, license and pledge.
Amendments to the Patent Law: These amendments aim to position the patent law in accordance with international patent-related treaties and agreements that Jordan plans to adhere or accede to. They provide more access to the public in general and to the patent landscape in Jordan. It will be possible to search and view all published inventions, including pending patent applications as well as granted or rejected patents. It will also be possible to verify the status; and this capability will enable local industries to obtain access to the latest technologies and in cases where there are rejections, to pursue developments without concerns of potential infringement.
Registration Certificates of Designs are Available Now: It became possible for applicants of design applications in the country to ask for the registration certificate of their designs.
Substantive Examination of Patent Applications: The expected procedure in brief is as follows: upon passing examination as to form, the examination fees will be due. Following examination and upon acceptance, the application will be published in the Official Gazette. There will be an opposition period of four months, after which, assuming no opposition is filed, the application will be granted and the granted patent will be re-published in the Official Gazette and the related Letters Patent will be issued.
Substantive Examination Fees Due: Oman declared on November 2, 2014 that the substantive examination fees for patent applications submitted between 2003 and 2007 will be due within two months from the date of announcement.
New Scale for Filing and Registration Numbers: The TMO has introduced a new numbering method for trademark applications. Following the e-filing system, applications are now allotted an e-number which will be taken as the filing number and will remain the same at the time of registration (i.e. registration number).
GCC Trademark Law Published: The decision for approving the revised GCC trademark law in Saudi Arabia was published in the country. The purpose of the GCC Trademark Law is to replace the local trademarks laws of each of the GCC member states (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates) and, thereby, creating unified implementing regulations for trademark protection in all states.
Substantial Increase in Official Publication Fees: The new rates became applicable on all applications filed on or after January 14, 2014.
Substantive Examination Fees Due: The Patent Office declared on October 26, 2014 that the substantive examination fees for patent applications submitted between 2011 and 2013 will be due within 90 days from the date of announcement. Effective November 1, 2014, filing and examination fees will have to be paid for all new patent applications. A New Deadline for POA: Starting May 1, 2014, a POA must be submitted at the time of filing of a new trademark application. This applies to oppositions as well. Applications and oppositions with missing POAs will not be admissible and an extension of time will not be possible.
Amended Draft of the New Anti-Commercial Fraud Law: The UAE Federal National Council approved the draft Anti-Commercial Fraud Law after introducing some amendments to the original version that was first submitted in early 2013. The said amendments address potential concerns expressed by brand owners regarding namely the re-exportation of counterfeit products.
Changes in the Examination Formalities: The TMO will no longer issue pre-examination decisions or grant extensions of time during the trademark examination process. Only acceptances, conditional acceptances and rejections shall be issued in the country. In other words, the trademark applications will be accepted, accepted under a condition or rejected, while examination will continue to be based on both absolute and relative grounds.
Increase in Publication Fees: Applicable on all applications filed on or after August 7, 2014. The increase relates to: trademark, patent and industrial design applications.
Accessions to Treaties and Conventions in the MENA
Bahrain: Accession to the Apostille Convention
Iraq: Accession to the Singapore Treaty
Kuwait: Accession to the Paris Convention and the Berne Convention
Qatar: Accession to the Budapest Treaty
UAE: Signing of the Beijing Treaty and the Marrakesh Treaty
Yemen: Accession to the World Trade Organization
Jordan: TMO Sets Precedent for the Protection of Geographic Indicators
Monday, 1 December 2014
The Jordanian Trademark Office, in an unprecedented move, ruled for the protection of BASMATI, a famous geographical indicator for rice originating from the Indian subcontinent. Various rice plants are grown in India and Pakistan under the Basmati name. PUSA BASMATI 1121, a well-known variety grown in India, is popularly referred to as “1121”.
A Jordanian manufacturer applied for the registration of “1121” as a trademark for coffee, tea, sugar and rice among other goods. Upon publication of the mark in the official gazette, the Indian Ministry of Commerce filed for an opposition on the basis that the mark in question evoked a connection to Basmati rice and led to unfair competition and consumer deception.
The Jordanian TMO found that the registration of the trademark “1121” in class 30 for rice would create a false impression that products bearing the said mark originate from the region where Basmati rice is being grown. The Jordanian TMO’s verdict ruled to remove rice from the list of goods as a condition to allow the registration of the mark “1121”.
Bahrain: Trademark Examination Update
Tuesday, 25 November 2014
In order to ensure proper workflow, the Bahraini Trademark Office recently requested applicants to provide missing documents or their applications will be declared abandoned.
Effective February 1, 2015, the TMO will update their trademark application form to make it possible to file applications with the documents within 3 months from the filing date.
In related news, the TMO also stated that sound mark trademark applications are now accepted. The implementation has yet to be announced; however, the TMO’s statement ushers an ambitious attempt of accepting nonconventional trademarks.
KSA: Cracking Down on Counterfeiting
Tuesday, 25 November 2014
More than two thousand smartphone packing cases bearing the marks of famous brands were recently seized in Saudi Arabia. According to a statement by the Ministry of Commerce and Industry, the perpetrators intended to repackage counterfeit and stolen smartphones in the authentic cases in order to confuse consumers.
In a separate raid, Saudi authorities appropriated more than seven thousand counterfeit phone chargers.
Kuwait: Restructuring IP Protection
Tuesday, 25 November 2014
The United States recently transferred Kuwait from the Special 301 Report Watch List to the Priority Watch List for potential breaches of intellectual property rights.
Kuwait’s accession to the Paris and Berne Conventions, as reported by Saba IP Bulletin in September, shows the country’s commitment to improve the protection of IPRs. This will certainly translate to the advancement of Kuwait’s enforcement action against trademark infringement, and progress in copyright legislation to meet international standards.
The Special 301 Report is prepared annually by the Office of the United States Trade Representative under Section 301 as amended of the Trade Act of 1974. The report categorizes trade barriers for U.S. companies and products due to the intellectual property law in other countries.
Other countries in the region included in the report are Algeria, Egypt, Lebanon and Turkey.
UAE: Monitoring Intellectual Property Rights Protection
Tuesday, 25 November 2014
Dubai recently launched a quarterly index to monitor the protection of intellectual property rights. The index will also identify areas for improvement in the regulatory policies, processes, and strategies in the domain of IPR protection by gathering opinions and expectations of brand owners, law firms, distributors and trading agencies.
The level of IP protection measurements will be based on five major areas that are:
1. Laws and regulations on IP protection
2. Commitment to enforce existing laws and regulations
3. Level of awareness of IPR
4. Impact of IP protection on economic growth and sustainable development
5. Overall satisfaction on IP protection levels
This comes in light of the country’s recent collaboration with South Korea, which has dispatched patent examiners to the UAE Patent Office to assist in the construction of an infrastructure that will manage patent applications.
Oman: Substantive Examination Fees Due:
Monday, 3 November 2014
the Sultanate of Oman declared on November 2, 2014 that the substantive examination fees for patent applications submitted between 2003 and 2007 will be due within two months from the date of announcement.
This move follows the recent signing of a memorandum of understanding between the Omani and the Egyptian Patent Offices, where the Egyptian Patent Office acts as the examining office for all pending and new patent applications filed in Oman – as reported initially in the October issue of the Saba IP Bulletin.
South Sudan: Untapped, Fertile Grounds
Monday, 3 November 2014
With self-proclaimed status of the world’s youngest nation, South Sudan claims sovereignty over 644,329 square kilometers of land in East Africa. The country shares borders with Central African Republic, Democratic Republic of the Congo, Ethiopia, Kenya, Sudan, and Uganda – making South Sudan readily accessible.
Natural resources in South Sudan include ample lands for agriculture, water, gold, as well as other metal ores, diamonds, and oil. Despite these various resources, oil production accounts for almost 98% of government revenue and South Sudan remains dependent on neighboring Sudan to transport the oil through pipelines to the Red Sea. More recently, however, community leaders in South Sudan aim to decrease the government’s dependence on oil production through livestock exports – given the country’s vast land space and copious water resources from the White Nile. This move suggests that alternative means to boost the economy are in the works, which affords foreign investment a different form of fecundity.
The GDP in South Sudan is $14.71 billion, while the GDP per capita is $1,400. The GDP composition is 34.9 percent for household consumption, 17.1 percent for government consumption, 10.4 percent for investment in fixed capital, and 64.9 percent for exports of goods and services.
Intellectual property is an area of interest for the government of South Sudan. Earlier this year, we reported on the Ministry of Justice admission of trademark applications under the provisions of the trademarks act of 1969 (that is currently in force in Sudan). There are talks that South Sudan will be issuing a trademark law of their own in the near future. In principle, registrations submitted under the act of 1969 will remain valid after the issuance of the new trademark law of South Sudan.
The main features of trademark registration are as follows:
1. Notarized POA
2. Certified copy of the Certificate of Incorporation of the applicant company.
3. A letter addressed to the Ministry of Justice requesting reservation and registration of the trademark, signed and sealed by the applicant company
In regards to the last point, it is worth noting that if the applicant is the manufacturer of the products, they should confirm their ownership in the said letter. Whereas, if the applicant is not the manufacturer of the products, then an additional letter of authorization is required from the manufacturers to the applicant as sole agent.
The International Classification of Goods and Services (9th Edition) is followed – in accordance with the trademark act of 1969.
Examination is performed on formal, absolute and relative grounds.
No provision of opposition is applicable at the time of publication of this article.
Extension of Time:
Extension of time is not possible.
Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months for late renewals with payment of a surcharge.
Documents Required for Renewal:
1. Power of attorney
Use of a trademark is not required for registration or renewal of a mark. However, a trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 consecutive years after registration date.
An official search can be conducted for word marks and devices. A separate application is required for search in each class. The search report discloses similar and identical trademark registrations as well as applications.
1. Deed of assignment, legalized by the Sudanese Consulate
2. Legal forms Nos. T. M. 11 and T. M. 12, legalized by the Sudanese Consulate
3. Certified extract from the Commercial Register OR certificate of incorporation of the assignee (with certified Arabic or English translation), legalized by the Sudanese Consulate
4. Power of attorney on behalf of the assignor, notarized
5. Power of attorney on behalf of the assignee, notarized
Change of Name/Address
A change of name/address may be recorded for trademark applications and registrations.
1. Power of attorney notarized
2. Certificate of change of name legalized
License recordal is not compulsory but advisable in order to be effective against third parties.
1. Power of attorney from the licensor, notarized
2. Power of attorney from the licensee, notarized
3. License agreement, legalized
4. Certificate of incorporation of licensee, legalized
A merger may be recorded for trademark applications and registrations.
1. Power of attorney, notarized
2. Certificate of merger, legalized
Marking is not compulsory
Three Dimensional Trademark Applications:
UAE: Substantive Examination Fees Due:
Monday, 3 November 2014
United Arab Emirates Patent Office declared on October 26, 2014 that the substantive examination fees for patent applications submitted between 2011 and 2013 will be due within 90 days from the date of announcement. Effective November 1, 2014, filing and examination fees will have to be paid for all new patent applications.
This comes in light of the country’s recent collaboration with South Korea, which has dispatched patent examiners to the UAE Patent Office to assist in the construction of an infrastructure to manage patent applications.