News 2016       | October & December

Filing Suspended in Kurdistan

7 December 2016

Trademark Filings in Kurdistan - Northern Iraq is SUSPENDED UNTIL FURTHER NOTICE.

In this respect, we confirm that the fees increase had been proposed by the trademark authorities in August and published in October though no action has been taken to implement the same. We expect the Kurdistan Trademarks Office to resume normal function in January 2017 with clear resolution on the implementation of New Fees.

We take this opportunity to inform all interested parties that Iraq is divided into two trademark jurisdictions; Baghdad and Erbil where filings should be undertaken separately in order to secure trademark protection for the whole country; duly noting that the registries operate independently of each other and filing a trademark application in one jurisdiction does not automatically grant protection in the other. Erbil is the de-facto capital of the self-autonomous region of Northern Iraq- Kurdistan. This region represents immense interest to trademark owners around the world both in terms of covering the whole of Iraq and also for the tremendous potential it offers to brands.

PCT National Phase India Guidelines

5 December 2016

Every year more than forty thousand patent applications are filed in India. 75% of these patent applications are national phase applications of respective PCT International applications.

Accordingly, if an applicant intending to protect the patent rights in India has to perform multiple tasks at different stages over a period of time. Recent changes in Indian patent rules have made mandatory for the applicants to comply with office requirements within 6 months from the first office action date.
Although an extension of 3 months is available for the applicant, it becomes critical for the applicant to be prepared in advance to handle expected objections and subsequently, effectively use the 6 months period for obtaining patent rights.

The below link provides you a ready reckoner indicating a list of actions to be performed by the applicant at different stages of the national phase application in India.
PCT National Phase India - Filing and Prosecution Tasks

The ready reckoner captures mandatory/critical requirements which the applicant has to comply with while obtaining patent rights in India.

Increased Registration Fees in Saudi Arabia

2 October 2016

There are major procedural and fees changes in Saudi Arabia. The GCC Trademarks Law and its Implementing Regulations had been published at the Official Gazette in Saudi Arabia (Um Al- Qura), issue No. 4625, on July 1st, 2016. Pursuant to the Saudi Royal Degree No. M/51 dated April 26, 2014, the GCC TM Law shall come into force in Saudi Arabia within (90) days from the publication of the Implementing Regulations of the GCC TM Law No. M/51 dated April 26, 2014, (i.e. September 27, 2016).

With regard to the fees increase, the Saudi Trademark Office has officially increased the fees of trademark registration today; October 2nd, 2016.

The new official fees is as per hereunder:

  • Filing Fees 270 USD/1000 SAR
  • Publication Fees 800 USD/3000 SAR
  • Registration Fees 1335 USD/5000 SAR

As you can observe the official fees for filing and publication have remained unchanged whereas the registration fees have been increased from 800 USD to 1335 USD bring the total fees for filing to registration for a trademark application to 2405 USD.

Last but not least, it remains to be seen whether the fees increase will retroactively apply to the pending applications or if there are going to be changes concerning renewals & recordals matters. Since, there has been no official notification in this regards yet.

Following are the verbal information’s provided by the Saudi Trademark Office:

  1. The opposition period will be shortened to 60 days from the current 90 days for all new applications filed on or after the implementation of Law.
  2. The oppositions are to be filed with the Higher Committee of the Trademark Office, swapping the current practice of filing opposition with the court.
  3. There would be official fees for Appeals to Minister & Oppositions.