DECISION ISSUED ON 22/02/2015 REGARDING THE OPPOSITION PROCEDURES IN UAE

Tuesday, 31 March 2015

Regarding the opposition procedures in UAE as following:

1. The application representative (agent) must inform the ministry with all updates occur in file (if there any assignment, reply for the opposition or a letter of consent).
2. Present publication official copy to calculate the opposition exact period.
3. Pay the official fees (200 AED) before of the hearing session with a proper period.
4. Translating all required documents with a sworn legal translation.
5. The decision will be announced after hearing session without an extended period.
6. The representative of the client in hearing session must acknowledge of Arabic Language spoken and written.
7. Hearing Session period will be briefed and not more than 30 minutes and the report will be closed by ending these 30 minutes.
8. In case there is a required reply, it should be presented in 3 days to the community.

New Law on Industrial Property in Morocco

Monday, 30 March 2015

A new industrial property law (no. 23-13) has been issued in Morocco to amend the law (no.17/97) related to Industrial Property. The said Law entered in force on December 18, 2014 and provides for the protection of industrial property rights in accordance with international standards in the field of industrial property. The new law entered into force on the date of publication in the official gazette on 15 January 2015.

Main features of the new law are summarized as follows:

• Prior substantive examination for trademarks, designs and patents applications is now required.
• A new opposition procedure entered into effect.
• The Customs administration is now entitled to block suspected counterfeited goods not only for importation but also for exportation and in transit.
• It will be now be possible to file divisional applications either for patents, trademarks and designs and models, possibility to delay the disclosure of a design & model.
• Licensing and assignments allowed for pending applications.
• Acceptance of patents related to Micro-organisms.
• New duration of design & model rights.
• It will be possible to any interested third parties to oppose a trademark on absolute grounds, calculation of deadlines before the PTO.

Moreover, major changes were made regarding the improvement of the invention patent system, the consolidation of the national trademark system, the reform of the national system of industrial designs and the enforcement of IP rights.

Payment of Official Filing Fees in Qatar

Monday, 30 March 2015

The Qatari Patent Office, consequent to the issuance of the Qatari Minister of Commerce and Trade decision no. 410 of 2014 stipulating the official fees for patents and copyrights after, has issued an official notification for all IP Agents to pay the official filing fees, official examination fees for pending application filed in 2012 and 2013 within three (3) months as of 12 January 2015 in order to proceed with examination procedure. As for new applications, the said fees are payable within three (3) months as from the filing date of the said applications.

Accordingly, the Qatari Patent Office has requested applicants to:

1. Pay the official filing fees of US$550 for patents filed in the name of companies and USD 275 for patents of individuals.
2. Pay the official examination fees of US$1390 patents filed in the name of companies and USD 695 for patents of individuals.
3. Pay all accumulated annuity fees on pending application filed in 2012, and 2013. The base date of annuity fee is the filing date of International PCT application and filing date for national patents.

The official annuity fees will be calculated as follows:

Annuity Fees Listed As Per Patents Validity Terms

Particulars Of The Procedures

Official Fees USD

Term		For Students		For Individuals		Companies & Institutions
2nd Year		28		55		110
3rd Year		28		70		140
4th Year		28		85		165
5th Year		28		100		195
6th Year		28		110		220
7th Year		28		125		250
8th Year		28		140		275
9th Year		28		155		305
10th Year		28		165		330
11th Year		28		180		360
12th Year		28		195		385
13th Year		28		210		415
14th Year		220		55		440
15th Year		28		235		470
16th Year		28		250		495
17th Year		28		261		522
18th Year		28		275		550
19th Year		28		275		550
20th Year		28		275		550

KUWAIT - Subsequent to joining the Paris Convention for the Protection of Industrial Property on December 2, 2014

Saturday, 28 March 2015

The Kuwaiti Trademark Office announced that priority claims would be available for trademark applications in Kuwait as from January 1, 2015. The trademark applicants will be able to claim priority (within the six-month priority period) from the corresponding applications filed in any of the other member states of the Paris Convention.

The required documents will now include a certified copy of the priority document duly legalized up to the Kuwaiti consulate. This document must be submitted within 3 months from filing date.

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.

IP Highlights: Nice Classification

Friday, 27 March 2015

Damascus - The Syrian government has issued new regulations to impose a local administration tax of 10% as to the total amount for any receipt, which encompasses all the IP works related receipts (trademarks, Patents, Design, Renewals, Annuities, Recordals etc...).

The Property Protection Office has put the aforesaid tax into effect as of February 15.2015.

This local administration tax was previously implemented on the local applicants only in Syria, but it has been now implemented on the foreign applications as well.

We, at Maddock & Bright IP Law Office will not surcharge the said imposed tax, but will add it, as it is, to the total charges.

New Trademark procedures in Iraq

Monday, 16 February 2015

the Registrar at the Iraqi Trademarks Office has reversed his decision regarding submitting the legalized Power of Attorney at the filing stage, and accepting the new applications without the POA while the same could be filed belatedly within NON-Extendable SIX months from the filing date.

It is worth mentioning that the documents required for completing the filing formalities of a trademark application in this jurisdiction are as follows:

1. A Power of Attorney in the name of the Applicant notarized and legalized up to the Iraqi Consulate.
2. A certified copy of the corresponding home or foreign application duly legalized up to the Iraqi Consulate, in case of claiming priority.

Please note that the legalized Power of Attorney MUST be also legalized in Iraq from (the Central Bank, General Tax Commission and the Ministry of External Affairs) to be acceptable by the Iraqi Trademarks Office. It would take from 12 to 18 weeks to be completed the super legalization of the Power of Attorney in Iraq.

Please be advised that the Timeline of procedures (Filing, examination, acceptance, publication, registration) for filing new application in Iraq are as follows:

Procedures		Timeline
Filing up to Examination		24 - 36 months
Examination up to Publication		10 - 12 months
Opposition Period		3 months
Issuance the Registration Certificate		6 - 12 months

We would also seize this opportunity to provide you here under with the requirements and time frames for renewal, change of name and address and assignment recordals:

Renewal Requirements:

1. A Power of Attorney notarized and duly legalized up to the Iraqi Consulate.
2. A Copy of the Iraqi Registration Certificate.

Please be advised that the Timeline of procedures for renewal trademark registration in Iraq are as follows:

Procedures		Timeline
Filing up to Examination		-
Examination up to Publication		-
Opposition Period		-
Issuance the Renewal Certificate		12 - 24 months

Recordal of Change of Name Requirements:

1. A Certificate of Change of Name OR Address, duly legalized up to the Iraqi Consulate.
2. A Power of Attorney in the new name OR Address notarized and duly legalized up to the Iraqi Consulate.
3. A copy of the Iraqi Registration Certificate.

Please be advised that the Timeline of procedures for Recordal of Change of Name OR Address of Trademark registration in Iraq are as follows:

Procedures		Timeline
Filing up to Examination		-
Examination up to Publication		-
Opposition Period		-
Issuance the Certificate		12 - 24 months

Recordal of Assignment Requirements:

1. A Power of Attorney in the name of the Applicant signed by the assignee, notarized and legalized up to the Iraqi Consulate.
2. A Deed of assignment signed by the assignor and the assignee, notarized and legalized up to the Iraqi Consulate.
3. A copy of the Iraqi Certificate of Registration.

Please be advised that the Timeline of procedures for Recordal of Assignment Trademark registration in Iraq are as follows:

Procedures		Timeline
Filing up to Examination		-
Examination up to Publication		-
Opposition Period		-
Issuance the Certificate		12 - 24 months

Opposition Procedures:

Please note that it usually takes from 10 to 15 months for a decision to be issued in respect of an opposition action in Iraq.

Opposition Requirements:

Please note that the documents required to file and substantiate the opposition action in Iraq are as follows:

• A Power of Attorney, as per the attached form, duly legalized up to the Iraqi Consulate.
• It is worth mentioning that the original legalized POA shall be filed along with the opposition statement, otherwise the Registrar would not accept to receive the opposition statement.
• A list of the worldwide registrations of your Client’s trademark and copies of the corresponding registration certificates of the said trademark in Iraq and Arab and Foreign countries.
• Documents that prove the use of your Client’s trademark in Iraq such as invoices and/or bill of ladings, etc...
• Any documents that proves the international fame of your Client’s trademark, such as Administrative and/or Judicial decision, stating that their trademark is considered well-known trademark.
• Photos of your Client's products that bear your trademark in addition to copies of the advertisement materials related to the said products.

New IP Law No. 23 - 13 in Morocco

Wednesday, 11 February 2015

A new IP law no. 23-13 was implemented in Morocco since December 18, 2014, amending and completing the initial law 17-97.

For your information, we set hereunder a table showing the most important amended IP matters:

1. Patent Section

Patents		Former Provisions		New Amended Provisions
Examination		As to form only		The PTO will proceed to the examination of patent applications and issue a written opinion on patentability of invention, which is sent to applicant to amend the claims, eventually.
Divisional patents		No provisions		Divisional patents can be requested by the applicant or by the PTO, in case of lack of unity of the invention.
Validation of EP patent in Morocco		No provisions		A validation system was implemented, by virtue of which EP Patents can be protected in morocco.
Annuities		Paid with filing the patent application and thereafter on each anniversary date.		Paid after grant of the patent and thereafter on each anniversary date.

2. Industrial Designs / Models Section

Industrial Designs / Models		Former Provisions		New Amended Provisions
Duration		15 years from filing date		25 years from filing date
Secret applications		No provisions		The applicant can request that his design / model be kept secret for a period of 18 month as from filing.
Divisional designs / models		No provisions		The applicant can divide his design / model, before it is registered.

3. Trademarks Section

Trademarks		Former Provisions		New Amended Provisions
Divisional trademarks		No provisions		The applicant can divide his trademark application, in case of a partial opposition.

4. Opposition Proceedings

Opposition Proceedings		Former Provisions		New Amended Provisions
Opposition period, before issuance of the first decision.		6 months, which can be extended twice for further periods of 6 months.		First period from 2 to 6 months, which can be extended for a further period of 3 months.

KSA: PCT National Phase Entry Begins on Schedule

Tuesday, 3 February 2015

Al Hadaf Marks Services, in cooperation with Saba & Co. IP, utilized the system as soon as it became available, thus ensuring that the 30 month deadline is met.

Saudi Arabia acceded to the PCT and became bound by the Treaty on August 3, 2013, as reported in the Saba IP Bulletin. Accordingly, the first applications to designate SA for national stage entry would have been filed on August 3, 2013 and the 30 month deadline for entering those at the national stage would then be February 3, 2015.

The requirements, annuity due dates, and fees remain the same as for national filings.

Morocco: Laying Down the Law ( update )

Tuesday, 3 February 2015

Morocco issued Law No. 23-13 on December 18, 2014, which amends and completes Law No. 17-97 of 2000. The new law entered to force on the date of announcement and publication in the official gazette.

The law includes provisions on the protection of patents, integrated circuits, industrial designs, trademarks, and trade names.

The main features of the law regarding trademarks are as follows:

1. Examination

Examination on absolute as well as relative grounds is now possible. Prior to the new law, applications were published after passing only through formal examination, and a certificate was issued in the absence of an opposition. An important consequence of introducing substantive examination is that if a registered trademark should have been refused on absolute or relative grounds in the first place, any interested party may bring proceedings to have the mark declared invalid. Examination on relative grounds is expected to be laid down with the internationally recognized framework — or in other words: the global appreciation approach. The TMO will thus compare the marks as a whole, the way an average consumer views them.

2. Opposition

The new law reduces the time period to respond to oppositions from six months to two months. This reduction is expected to develop a faster and more structured procedural process.

3. Division of Trademark Applications

It will now be possible for an applicant to transform a single application into several divisional applications. At any time before registration, an applicant may request that their application be divided into two or more separate applications, with each relating to different goods or services. The main reason for dividing an application up in this way is to isolate the problematic parts of an application. The process increases the chances of the uncontroversial parts being registered. Divided applications will have the same filing date as the original application. Where division occurs after the application has been published, any objections to the original application apply to each of the divisional applications.

4. Article 6_ter of the Paris Convention

Article 135 of the amended law generally excludes trademarks from registration which consist of specifically protected emblems now defines admission of the provisions of Article 6ter of the Paris Convention related to prohibitions concerning state emblems, official hallmarks, and emblems of intergovernmental organizations.

5. Unconventional Marks

The definition of a figurative representation of a sign under Article 133 has expanded to include 3D trademarks. Although this is stepping stone, difficulty may arise at the time of substantive examination. However, the following rule of thumb is generally applied by the examiners of the TMO: a sign will not be registered as a trademark if it consists exclusively of a shape which (1) results from the nature of the goods themselves, (2) is necessary to obtain a technical results, and (3) gives substantial value to the goods. The law also refers to sound and smell marks as non-conventional marks that can be registered, in addition to 3D marks. In fact, sound and smell marks are not new additions to the law but existed in the previous law prior to the amendments.

Although the administration of such rights is still in development, broadening the definition of a trademark is clearly a sign of the positive direction Morocco is taking towards internationally standardizing trademark protection.

As for patents, the main features of the law are:

1. Substantive Examination

Substantive examination is now possible, whereas previously, applications were granted within eight months following formal examination only.

2. EP Validation

The possibility to validate European patents, which was not an option previously.

3. Annuities

Annuities will become due after grant, whereas previously, annuities were due each year starting from the date of filing.

4. Divisional Applications

It is possible to file divisional applications, whereas in the past this was not an option.

Additionally, since there will be examination and possible rejection, the general provisions now allow for an applicant to petition against a rejection.

Registration of trade Marks in South Sudan

Thursday, 22 January 2015

The pursuant to the separation of South Sudan from Sudan in 2011, the Ministry of Justice is now admitting trademark applications under the provisions of the trademarks act of 1969 that is currently in force in the neighboring Sudan. There is a draft Trade Marks Bill in existence which is currently before Parliament, and until this is passed, the provisions of the old Sudanese Trade Marks Act are being followed, and it is now possible to file applications with the Ministry of Justice.

However, kindly note that any trademarks filed now will be enforceable when the new law comes into force in which the original filing date will be preserved.

Trademark Registration: Procedure

The application process includes a reservation application in which the examiner will check for prior trademarks. If approved, the mark will proceed to registration. No provision for the opposition is applicable. The relative registration certificate will be issued for the mark containing the following particulars:

1. Registration Number
2. Description of the Mark
3. Applicant’s Name
4. Registration Date

For your ease of reference, please find below a sample of the registration certificate for your records.

Please find hereunder the documentation and other requirements for obtaining a trademark registration in South Sudan; and giving the time scale for securing trademark registration under the said jurisdiction:

Filing Requirement:

1. Applicant’s name and address, class and description of goods, logo of the mark.
2. A power of attorney (notarised). Attached is a suitable form.
3. A copy of the home registration certificate of the mark.
4. A certified copy of the certificate of incorporation.

In South Sudan, a separate application should be filed with respect to each class of goods or services and a separate sum of official fees is to be paid for each class.

It takes two to three months' time from filing till the issuance of registration certificate.

The validity of trademark registration is stated to be for ten years from the date of issuance of registration certificate. Thereafter, a trademark registration is renewable for further consecutive periods of ten years each.

Cancellation of a registered Trademark based on non-use in OMAN

Thursday, 15 January 2015

according to the Article No. 42 of the Omani Trademarks Law No. 67/2008 any interested party may file an application for cancelling a registered mark with the Trademarks Office (in respect of any or all the goods or services for which it is registered) if the concerned mark has not been used by the registered owner or a licensee during a continuous period of three years or longer. After the request for cancellation is submitted to the Trademark Office notifies the owner of the mark and requests them to reply to the cancellation application within 60 days from the notification date. This given period of sixty days is extendable for one further period of one month on the basis that the owner of the contested trademark files a request for the extension. If, however, the owner did not reply to the cancellation application during the prescribed period, they will be deemed as abandoning the registration of the mark and as such the registrar will issue his decision for cancelling striking out the same from the Trademarks Register.

As for the use burden, the registrant of the mark will have to submit documents evidencing the use of the mark in the Omani market. However, the trademarks Registrar will not remove the mark if it is shown that special circumstances prevented the use of the mark, such as import restrictions or other government or market impediments to commercialization, and that there was no intention not to use or to abandon the mark.

Morocco: Laying Down the Law

Tuesday, 13 January 2015

Morocco issued Industrial Property Law No. 23-13 on December 18, 2014, which amends and completes Law No. 17-97 of 2000. The new law entered into force on the date of publication in the official gazette.

The law includes provisions on the protection of patents, integrated circuits, industrial designs, trademarks, and trade names.

Algeria: Adjustment of Official Fees

Friday, 9 January 2015

The Algerian Trademark Office revised the official fees for filing trademark applications in colors and for responding to office actions. The new rates are effective as of January 1, 2015 and will be applicable on new, as well as, pending applications.