Kuwait: Registration Certificates of Designs are Available Now
Tuesday, 27 May 2014
The Kuwaiti Patent Office has announced that it is now possible for applicants of design applications in the country to ask for the registration certificate of their designs.
By way of background, the Kuwaiti Patent Office has started publishing design applications in the country’s Official Gazette for over a year now. Applications are examined in the country as to form, local novelty, and industrial applicability. Examination is generally a systematic process whereby the Patent Office is expected to notify the applicant of any objections. The applicant is then required to respond with arguments and/or amendments to overcome the objections. Amendments and arguments may then be accepted or rejected, triggering further response, until a design is issued or the application is rejected and/or abandoned. Even though design applications accepted by the Patent Office are published in the Official Gazette, oppositions can only be filed before the Court. After publication, the certificate of registration will be issued upon request.
The main Features of Design Protection in Kuwait:
Protection Term:
10 years from filing date.
Applications with Multiple Figures:
Admissible up to 50 figures.
Filing Requirements:
1. Power of Attorney, legalized
2. 2 representations of the design
3. Description of the design
4. Certificate of incorporation
5. Deed of assignment from the designer(s), legalized
6. Copy of priority document, if priority is claimed, legalized
All the documents may be submitted within 3 months from the filing date.
Renewal:
For one term of 5 years.
IP HIGHLIGHTS: First to File Countries
Monday, 26 May 2014
Almost all countries of our region are civil law countries with the code typically exhaustively covering the complete system of the law. This being said, the first-to-file concept is given considerable weight. Despite the fact that some countries may offer a limited amount of common law rights, enforcement is relative and solely determined by the practitioner handling the case. Therefore, registration of marks in the Arab world is highly recommended and the mere registration can be a basis to sue an infringer, although the risks of a non-use cancellation action must be factored-in in any filing strategy. However, unlike the United States where a non-use cancellation action is similar to an opposition action in applicable law, the situation is not the same in the MENA region. In most countries, administrative procedures for canceling a trademark are not available and so cancellation actions must be brought before the local Courts, which can greatly increase the time, costs and even predictability of such proceedings. Another issue is related to the burden of proof. In most countries in our region, the burden of proof in a cancellation proceeding will usually be on the plaintiff in order to prove that the registered trademark should not be registered. This of course renders non-use cancellation actions expensive since a negative must be proven, namely, that a mark is not in use.
In short, protection of trademarks in the Arab region is an important yet challenging process that requires special consideration and handling. Even more, there is no pan-Arab registration, similar to the Community trademark, which relatively complicates the registration procedures. Therefore, owners must be able and ready to adopt a model that incorporates both legal as well as regulatory approaches in order to arrive at a solid trademark protection strategy. Fortunately, the trademark laws across the region are harmonized to a large extent, except for few countries including Lebanon and Morocco. In almost all the articles that define the absolute grounds of registration, the directives are equivalent in content and have to be interpreted in the same way, while the minor differences is in the scope only. In Saudi Arabia, for example, the scope is limited to what basically does not violate the Shari’a (Islamic) law. The difficulty would basically arise at the time of substantive examination, where practice differs between the countries. Needless to say, trademark owners should seek sound advice before they decide on the best route to pursue.
Jordan: A New Regulation for Trademark Assignment
Monday, 26 May 2014
A new regulation on trademark assignment No. 55 of 2014 was recently introduced in Jordan. This regulation includes a list of articles related to trademark assignment, license and pledge. More details on how these new regulations will be applied will follow soon.
Oman: Seminar on Copyright and Related Rights Protection
Monday, 26 May 2014
The Intellectual Property Department in Oman organized in collaboration with the World Intellectual Property Organization (WIPO) a seminar aiming at strengthening copyright protection in the country. The two-day seminar was held on April 22, 2014 in the Ministry of Commerce and Industry. The main objective of this seminar is to raise awareness against any violation act. The rights of the authors were a key topic of discussion during the seminar in addition to the protection of audiovisual performance and software production.
Qatar: Revision of Formalities
Monday, 26 May 2014
The Qatari Trademark Office has recently announced that it is now required to have the priority document legalized. This means that certified priority documents will no longer be admissible in support of trademark applications.
Therefore, the filing requirements for a new trademark application are as follows:
- A Power of attorney legalized up to Qatari Consulate. A general power may be used for subsequent filings.
- A simple copy of the certificate of incorporation/extract from the commercial register/any document attesting to the legal entity, name and address of the applicant; no authentication is required. However, if the applicant is an individual, then a document evidencing that said person is practicing trade must be submitted alternatively.
- A copy of the priority document, if priority is claimed, certified by the issuing authority and legalized up to Qatari Consulate. This document can be submitted within 6 months from filing date.
- 5 prints of the mark for each application. Electronic prints are acceptable.
Documents 1 and 2 must be submitted at the time of filing; an exception to this rule is when a priority deadline is imminent; in this case, the application can be filed only few days before the deadline while the documents in 1, 2 and 3 can be filed within 6 months from the filing date in Qatar.
UAE and Yemen: Towards More Effective IP Protection
Monday, 26 May 2014
Saba Offices in the UAE and Yemen have joined their efforts to seek more effective protection of Intellectual Property Rights in the region. They have collaboratively organized a training workshop that aims at combatting counterfeit trademarks. The workshop was held on April 15-16, 2014 in the UAE and was attended by various authorities from Yemen and UAE.
The main purpose of the workshop was to develop the collaboration between the private sector (brand owners) and the public sector (enforcement authorities) in combatting counterfeiting and fraudulent activities in the local markets.
UAE: Changes in the Examination Formalities
Monday, 26 May 2014
The UAE Trademark Office (TMO) has issued on May 19, 2014, Decision no. 3 of 2014 (to be implemented as of June 1st, 2014) stating that it 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 either accepted, accepted under a condition or rejected, while examination will continue to be based on both absolute and relative grounds.
The difference between the current procedure and the new one is summarized in the following table:
| Current Procedure | New Procedure | |
| The examiner issues pre-examination decisions requesting amendments or clarifications. Applicants can respond to the pre-examination decisions. Pre-examination decisions cover mainly the following three areas: |
No pre-examination decisions can be issued and therefore applicants will no longer be able to respond to the examiner. The applicant may only appeal the decision or re-file a fresh application with the required amendments; the latter is recommended since appeals might take a long time. |
|
| 1. The list of goods/services claimed. | 1. Any discrepancies in the list of goods/services will result in a rejection decision; it is recommended to always claim class headings (as per the 10th edition of Nice classification which is adopted in the UAE). | |
| 2. The distinctiveness of the subject TM. | 2. Lack of disctinveness will result in a rejection decision; it is recommended, when and if possible, to file as part of the application, evidence in support of the distinctiveness of the TM, hoping that the examiner will consider the same during the examination. | |
| 3. The existence of prior rights. | 3. Prior rights will result in a rejection decision; it is highly recommended to always clear the TM before filing (by conducting both official and un-official searches) and in the event of existing prior rights, proper advice can be given on the best course of action to prevent rejection (i.e. submit along with the application evidence showing relationship between the owners – co-existence agreement – letter of consent etc…). |
INTA’s 136th Annual Meeting
Monday, 5 May 2014
The International Trademark Association (INTA) will hold its 136th annual meeting in Hong Kong from May 10 to May 14, 2014. Representatives from Saba & Co. IP Offices will be attending the different functions of the conference and meeting with clients. In case you wish to meet with any of our representatives, please contact us at inta@mbo-law.com in order to specify a convenient time and date.
Arab World: Opportunities and Risks for Pharma
Friday, 2 May 2014
The most valuable and famous marks worldwide span the globe and a wide range of industries. Cream of the crop includes GOOGLE, MICROSOFT, COCA-COLA, COLGATE, NESTLE, MCDONALD’S, WALMART, IBM, VODAFONE, GE, APPLE, PEPSI and AT&T. These are extremely valuable assets that companies will go to surprisingly great lengths to protect. What makes these marks famous, and can we say they are also famous in our part of the world? In brief, these brands are valued based on their earnings over the past years and the relevance in their industry, in addition to some presence in the local markets to make the final cut. What makes marks famous in our region? Standards of fame are available but are not clearly defined in the underlying laws and regulations. The criteria to determine the fame statute are virtually unlimited. Therefore, the questions of how to determine fame and to what extent can we enforce marks of this type can only be tackled in our part of the world from a practical perspective, meaning that the answer to what constitutes fame should never be considered as definite. Needless to say, an exhaustive analysis of the national laws would give us a preliminary overview of the scenario. Generally speaking, the question of enforceability of famous marks is a matter solely determined by the extent to which infringement of trademark rights is referred to under the local laws. When it is, penalties are usually not specific to the infringement of famous marks, but common to all cases of infringement. Penalties vary from country to the other and may include fines, imprisonment, the confiscation and destruction of goods.
National Laws
Most countries of our region, with the exception of Lebanon and Iran, have clearly applicable statutory provisions in the national laws to protect famous marks . Also, membership in the Paris Convention has helped significantly on the litigation front, as evidenced in a number of ground-breaking Court decisions which were reached during the past several years signaling a positive change for trademark holders.
Furthermore, all countries of our region are either members or observers of the WTO (except for Syria), which, of course, extends to the TRIPS agreement. TRIPS, Part II address each intellectual property right in succession. Article 16(3) of TRIPS states that in relation to registered marks, Article 6bis should apply to non-similar goods or services, provided that use of the later mark indicates a connection to the owner of the well-known mark and that the interests of the owner of the well-known mark are likely to be damaged. However, there are no clear regulations or case laws that comment specifically on the prerequisites for claiming protection under Article 6bis.
One important aspect that should be taken into consideration when addressing the concept of famous marks in our region is the principle of “first-to-file” versus “first-to-use”. Seeing that almost all countries of our region are civil law countries (meaning that the code typically exhaustively covers the complete system of the law), “first-to-file” is given considerable weight. This being said, registration of marks, even for famous marks, is highly recommended. Mere registration can be a basis to sue an infringer, although the risks of a non-use cancellation action must be factored-in in any filing strategy. However, unlike the United States where a non-use cancellation action is similar to an opposition action in applicable law, the situation is not the same in our part of the world. In most countries, non-use cancellation actions must be brought before the local Courts, which can greatly increase the time, costs and even predictability of such proceedings.
What can qualify as a famous trademark?
Although it is impossible to precisely define a famous mark, examples of famous marks in our region include PEPSI, COCA-COLA, COLGATE, NESTLE, and MCDONALD’S. The extent to which a trademark is considered famous is usually determined according to the international standards for the protection of well-known trademarks (Article 6bis of the Paris Convention) as well as the local standards for well-known trademark protection. Any probative evidence will be accepted, and a determination will be based on the totality of the evidence, including such factors as:
- The duration and geographic extent of sales
- Sales figures
- Advertising figures and samples of advertising
- Awards, reviews and press reports
- The reputation of the mark within the relevant trade and consumer groups in the country
- Expert testimony and surveys designed to assess the recognition of brand names
Dilution
Unlike the United States, countries of our region have no express anti-dilution provisions in their trademark laws or elsewhere. Nevertheless, many countries have introduced provisions into their trademark laws on the “likelihood of confusion” between conflicting marks as part of their implementation of the TRIPS Agreement. In principle, the reference to certain provisions of the laws on the “likelihood of confusion” should provide a basis for actions in cases of dilution.
However, are these sections on “likelihood of confusion” enough? Some courts of our region reiterated that when dilution is accompanied by confusion as to the source, it will affect the goodwill, reputation and trade name established by the plaintiff. For example, the Examining Committee in Jordan sustained an opposition against the registration of a design mark similar to the famous Louis Vuitton Monogram Canvas on tobacco in class 34. Although the goods involved are not closely related, and would not be sold in the same channels of trade to the same consumers, the similarity between the defendant’s mark and the famous mark gives rise to an association between the marks. This association is likely to impair the distinctiveness of the famous mark and likely to harm its reputation. In sum, the plaintiff-owner of the famous mark was able to prove its claim that the defendant’s use of the Monogram is likely to impair the distinctiveness of this mark. Factors such as the degree of similarity between the two marks, the degree of distinctiveness of the famous mark, and it recognizability are directly implicated by consideration of the fact that that the defendant’s mark should not be registered.
Case Laws
In general, there are numerous precedents in the Arab countries on how prior cases regarding infringement of famous marks have been decided. Needless to say, the existence of such precedents give an indication of how the judicial interpretation of the laws would be in cases involving identical circumstances.
LAY'S banner/sun logo in Iraq
A favorable decision by the Iraqi authorities was issued considering the LAY'S banner/sun logo to be famous based on the following grounds:
- Pepsi owns a famous mark that is distinctive
- The similarity between the defendant’s mark and the famous mark gives rise to an association between the marks
- The association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark
PHILADELPHIA in Jordan
Fame of the opposer’s mark was one of the pre-dominating factors in the Examining Committee’s decision sustaining an opposition to Philadelphia Water For Life in class 32. The Committee found the goods to be closely related and of a type that may emanate from a single source with the applicant’s goods, and that could be presumed to overlap in channels of trade.
HILTON in Morocco
The Court of First Instance ruled in favor of Hilton International Co., owner of service mark "HILTON" in class 42, in a lawsuit brought against a local confectionery manufacturer for registering trademark "HILTON DORE" in class 30. The Court's decision was based on the fact that "HILTON" is considered a famous trademark and its registration in the name of any unauthorized party in a different class would certainly lead to unfair competition and public confusion.
NESTLE NESQUICK BUNNY in Iran
The Court of Appeal overruled a verdict pronounced by the Court of First Instance in favor of an Iranian based confectionery manufacturer. The initial lawsuit was brought by Nestlé, owner of famous trademark "RABBIT and Device", against the defendant's applications to register similar marks in class 30. The Court of Appeal deemed that there was a likelihood of association between the defendant's marks and Nestlé's well-known mark which would cause confusion in the mind of the consumer.
Conclusion
In short, protection of famous trademarks is a challenging process that requires special consideration and handling. Owners must be able and ready to adopt a model that incorporates both legal as well as regulatory approaches in order to arrive at solid trademark protection strategy. Companies have a good chance of establishing enough goodwill so that their marks may be recognized as famous and acquire protection without registration. It is, nevertheless, advisable to seek registration. Needless to say, trademark owners should look for sound advice before they decide on the best route to pursue.
Happy World IP Day 2014 !
Thursday, 17 April 2014
Every year, on April 26, the world celebrates the World Intellectual Property Day. The theme of this year is “Movies A Global Passion”. Maddock & Bright IP Law Office is delighted to celebrate this theme which sheds the lights on the importance of the protection of IP rights, promoting thus innovation and creativity.
What you should know about POA requirements in Iraq, Saudi Arabia and UAE ?
Friday, 11 April 2014
Over the past few weeks, more than one Trademark Office TMO in the Arab region opted for making some few revisions vis-a-vis the Power of Attorney POA formalities. Reasons and justifications vary across the board.
Below is a summary of what recently took place in Iraq, Saudi Arabia and UAE:
Iraq: The Iraqi TMO recently announced that POAs should be in the name of a natural person and thus should include the name of the attorney handling the IP case or at least should give the right of substitution to the attorney in charge. POAs in the name of IP firms will no longer be accepted. The TMO also requires POAs to be submitted at the time of filing.
Saudi Arabia: The Saudi TMO announced that the new deadline for submitting the POA will be 90 days from notification date received from the TMO. Previously, the POA had to be submitted within 30 days from filing date. This comes as a result of the introduction of an electronic filing system.
UAE: 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. Previously, POAs could be submitted within 60 days from filing date. Therefore, following this new procedure, applications and oppositions with missing POAs will not be admissible and an extension of time will not be possible. Applicants should carefully account for this especially when faced with an approaching deadline, such as a Paris Convention priority deadline. The POA must be legalized up to the UAE consulate.
When it comes to the authentication requirements, in general, under most by-laws of our region, a POA to act must be legalized or notorially executed. Oman and Bahrain are the only two countries that allow for Apostille legalization. Simply signed POAs are accepted in very few countries, namely Algeria, Djibouti, Gaza, Lebanon, Morocco and Tunisia.
A POA must also be dated. Any POA without an express date of execution is void. In addition to Iraq and UAE, submission of POAs at the time of filing is required by the TMOs of Bahrain, Djibouti, Gaza, Lebanon, Libya, Qatar and Yemen. An extension of time is not possible. A general POA may be used for subsequent filings in all countries except for Algeria and Djibouti.
Egypt: Increase in Official Fees
Tuesday, 8 April 2014
The Egyptian government has recently revised the official fees schedule in connection with the registration of trademarks and designs. By virtue of Ministerial Decision no. 95 of 2014, issued on March 19, 2014, the official fees for few trademark and design related matters have increased substantially in comparison with their current level.
More specifically, the increase is with regards to the following jobs:
- Oppositions
- Availability search and status search
- Obtaining certified copies
The new rates will be applicable as of April 1, 2014.
GCC Countries: First to File Concept
Tuesday, 8 April 2014
All countries of the Gulf are civil law countries with the code typically exhaustively covering the complete system of the law. This being said, the first-to-file concept is given considerable weight. Despite the fact that some GCC countries may offer a limited amount of common law rights, enforcement is relative and solely determined by the practitioner handling the case. Therefore, registration of marks in the GCC countries is highly recommended and the mere registration can be a basis to sue an infringer, although the risks of a non-use cancellation action must be factored-in in any filing strategy. However, unlike the United States, cancellation for non-use in most countries of the GCC region requires Court actions rather than administrative procedures, which can greatly increase the time, costs and even predictability of such proceedings. Another issue is related to the burden of proof where, in most GCC countries, the burden of proof of non-use will usually be on the plaintiff. This of course renders non-use cancellation actions expensive since a negative must be proven, namely, that a mark is not in use.
In short, protection of trademarks in the economically growing Gulf region is an important yet challenging process that requires special consideration and handling. Even more, there is no pan-Arab registration, similar to the Community trademark, which relatively complicates the registration procedures. Although a GCC trademark law was introduced back in 1987 (not in force yet), this law is not expected to offer a unified filing system as the case is with the GCC Patent law. Trademark applications will continue to be filed separately in each GCC member state for protection. Therefore, owners must be able and ready to adopt a model that incorporates both legal as well as regulatory approaches in order to arrive at a solid trademark protection strategy. Fortunately, the current trademark laws of the GCC countries are harmonized to a large extent. In almost all of the articles that define the absolute grounds of registration, the directives are equivalent in content and have to be interpreted in the same way, while the minor differences are in the scope only. In Saudi Arabia, for example, the scope is limited to what basically does not violate the Shari’a (Islamic) law. The difficulty would arise at the time of substantive examination, where practice differs between the countries. Needless to say, trademark owners should seek sound advice before they decide on the best route to pursue.
UAE: Amended Draft of the New Anti-Commercial Fraud Law
Tuesday, 8 April 2014
The UAE Federal National Council had recently 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.
The previous version of the draft law included a strict definition of Counterfeit Products delimiting the same to "Products which bear, without permission, a trademark which is identical to registered trademark". Accordingly, the new version of the draft law expands the scope of one of its key provisions to include similar trademarks within the coverage of the proposed law. Counterfeit Products are thus defined as "Products that bear, without permission, a trademark identical or similar to a registered trademark".
Another major concern is further addressed by the new version of the draft law regarding the long debated issue of re-exportation of counterfeit products. Under article 5 of the previous text, authorities were empowered to require importers to return spoiled, fraudulent and counterfeit products to their source. The approach adopted by the said article was not adequately coherent with the remaining provisions of the proposed law which have set high standards of anti-counterfeiting measures. Put differently, this approach does not reflect the leading image of the UAE in combating counterfeit products as it would result merely in displacing the problem to another jurisdiction. Accordingly, the said concerns were answered by the new version of the draft law which excluded counterfeit products from being re-exported.
The new provisions in this respect are expressed in article 5 which reads as follows:
Without prejudice to criminal liability, the relevant authority may issue a decision ordering the importer to return Fraudulent or Spoiled products to their source during a specific period. If the importer does not return them to the source within this period, the relevant authority may order their destruction, or allow their use for any other eligible purpose, or it may return them to their source, Counterfeit products will be destroyed, all of which is subject to the rules and regulations set out in the implementing regulation of this law.
The forgoing amendment will be certainly appreciated by brand owners and would certainly confirm UAE position as a pioneer in protecting Intellectual Property Rights.
The mechanism set forth in the previous version of the draft law remained substantially unaltered and positive in at least two major respects:
- The establishment of a single centralized body to combat counterfeit goods in the UAE, "The Higher Committee for Combating Commercial Fraud", assisted by subcommittees on an Emirate level.
- The introduction of hefty penalties for dealing in counterfeit products.
The new draft law is certainly considered a positive enhancement of the existing enforcement framework in the UAE especially after attending the concerns stressed by previous reviews and studies.
UAE: A New Deadline for POAs
Thursday, 3 April 2014
Starting May 1, 2014, a power of attorney must be submitted at the time of filing of a new trademark application. This applies to oppositions as well. Previously, POAs could be submitted within 60 days from filing date. Therefore, following this new procedure, applications and oppositions with missing POAs will not be admissible and an extension of time will not be possible. Applicants should carefully account for this especially when faced with an approaching deadline, such as a Paris Convention priority deadline. The POA must be legalized up to the UAE consulate.
