Updates in UAE

26 February 2016

The UAE Trademark office has finally clearing the backlog in Design Applications filed between 2011 and 2013 as a circular letter states that the concerned department will start to finalize the pending applications is expected to be issued soon. Accordingly it should be noted that the publication fees should be paid within 60 days from circular date or the application will be deemed as abandoned.

Updates in Qatar

25 February 2016

The authorities at Ministry of Trade and Commerce imposed some updates on the patent registration procedures. Please be advised that applicants will be notified regarding payment of the publication fees to publish the patent application in the Intellectual Property Journal issue after acceptance of the patent. The advertisement would be published in the next issue. During the 2 month opposition period, if no oppositions were lodged the applicant must furnish copies of the patent and settle the relative granting fees, it would be highly recommended that publication and registration fees are to be paid on time to avoid delay of the issuance of the letters of patent. The Qatari patent office has recently started the granting of all pending applications.

"Book for Factories" for Exports to Egypt
“Decree no. 992 for the year 2015 has been issued in the Government Bulletin - Issue No. 297 (Supplement) dated 31st December 2015. Effective as of March 1st, 2016”

24 February 2016

The said decree is Concerning Organizing the Rules for factories that Exports its Products to Arab Republic of Egypt, as per the following:

Minister of Trade and Industry

After checking law no. 118 for the year 1975 concerning imports and exports.
Also after checking the Ministerial Decree no. 770 for the year 2005 regarding the list of executive rules for implementing law no. 118 for the year 1975.
Also after getting the approval from the economic ministerial committee held on 28/12/2015, also referring to what was presented by trading agreements sector and foreign trade.

Decree

(Article 1)

The general organization for exports and imports has to implement book for factories that are exporting their products in the attached product list to Arab Republic of Egypt.

It’s prohibited to make custom clearance for products mentioned in case it’s not produced in the factories registered in that book.

The concerned minister for foreign trade can issue decree for adding or deleting in the referred book, and have the right to exempt from any or all of the registration conditions that he decided.

(Article 2)

Conditions for registration in the book as per follows:

Application for registration has to be presented by the legal representative for the factory or the commercial brand owner or its representative with the below legalized documents:

• Copy of license issued to the factory.
• Certificate from the legal entity of the factory including the products manufactured in it.
• The trademark for the product and trademarks manufactured under license from its owner.
• Certificate that the factory is applying a system for quality control, and complied to the environmental standards also complied to the standards if the international labor organization and the international treaties regulating such concerns, Such certificate had to be issued from well-known entity recognized by International Laboratory Accreditation Cooperation (ILAC) or from Egyptian or foreign entity to be approved by the concerned minister of foreign trade.
• List of factories that manufacturing under the trade mark in case the application is presented by the trademark owner.
• Written approval from the factory accepting inspection from technical team to ensure the compliance of international standards and safety work also to enable the team for such inspection.

(Article 3)

The decree to be published in Al-Wakaye Al-Mesreya/ Government Bulletin and to be implemented after 2 months from the day of its publishing.
Issued at 30/12/2015

List of goods that have to be manufactured in registered factories as a condition to import it:

• Milk and its products to be sell for retail purpose.
• Canned and dried fruits to be sell for retail purpose.
• Oil and grease to be sell for retail purpose.
• Chocolates and its related food to be sell for retail purpose.
• Sugar manufacturers.
• Pasta, and food prepared from cereals, bread and baking products.
• Fruit juices to be sell for retail purpose.
• Natural, mineral water and soda.
• Cosmetics, oral and tooth care, deodorants, shower products and perfumes products.
• Soap and cleaning products to be used as soap and to be sell for retail purpose.
• Floor covering.
• Dinning tools, food and kitchen tools.
• Bathtubs, washbasins, toilets and its seats and covers.
• Tissue papers, beauty papers, babies’ diapers and towels.
• Floor slabs for home use.
• Glass tools for dinning.
• Construction steels.
• Home Appliances (cookers, fryers, air conditioners, fans, washing machines, blenders, heaters).
• Bicycles and motor bikes with motors.
• Watches.
• Lighting for home use.
• Toys.

Appendix (1)
Documents required for The Registration of Qualified Factories which export their products to Egypt
According to the Ministerial decree 992/2015 concerning the organizing rules of qualified factories registration to export their products to Egypt.

Documents required for the registration mentioned above:

1. Introducing the registration form by the legal representative of the factory or/ the Trade Mark owner or/ the authorized person. (in case of attorney or authorization, it must be valid).
2. Copy of the issued license of the factory.
3. A certificate of the legal status, and a list of the products of the factory.
4. The Trade Mark of the product, and the Trademark produced according to a license from the owner himself with a letter from the factory with the Trade Mark name, contains the ownership of this Trade Mark and manufacturing, attached with a copy of the license document given to the Mark by the authorized body in the country of the factory.
5. A certificate to prove that the factory has the Quality Control System, meets the environment criteria, and meets the measures of International Labor Organization (ILO) and the international treaty related to this issue. This certificate must be issued from recognized body of the international Laboratory Accreditation Cooperation (ILAC) or/ from an Egyptian or Foreign Governmental body approved by the Ministry of Foreign Trade.
6. Report of the factories using the Trade Mark in case of introducing the form by Trade Mark Owner. This will be attached with a letter from the factory with the Trade Mark name, and the ownership of this Trade Mark, attached with the license document given to the Mark by the authorized body in the country of the Trade Mark owner, and the factories allowed to manufacture the same products under this Trade Mark.
7. Endorsement from the factory with the acceptance of inspection of the technical team to be sure that the factory meets the measures of environment and work safety, and to be able to verify of that.

All the mentioned documents should be Certified Chamber of Commerce, or/ its counterpart in the country of the factory, and approved by the Egyptian Embassy with an accredited translation from one of the accredited translation centers.

Appendix (2)

The register application must submit by the legal representative of the factory or the owner of the trade mark, or whom he authorized, with the following certified documents:

1. A copy of the license of factory.
2. A certification of the legal entity of the factory and its productions.
3. A certification that the quality control system is applied to the factory, and fulfilled of the environment standards, and obligated by the International Labor Organization standards, which organize that object.
   This certificate must be issued from a recognized body from the International Union Accreditation, or of an Egyptian or Foreign Government, and approved by the competent minister of foreign trade.
4. A statement by the factories which working under the same trade mark, in case of submitting the application by the owner of the trademark.
5. A confession from the management of factory by agreement the inspection form the technical team, in order to be sure of fulfill the environmental standards, and the safety of work and allowing them to be insuring.

New Amendments Occurred in KSA

7 February 2016

As of 1st January 2016, the Saudi Trademarks Office & King Abdulaziz City for Science and Technology (KACST) will not accept any new filings without submitting the Power of Attorney sufficing the legalization requirements including legalization of Saudi Ministry of Foreign Affairs.

Accordingly, all powers of attorney must be locally legalized up to the Ministry of Foreign Affairs in order to be accepted by the aforesaid authorities.

Addendum to the Kuwaiti Law

4 February 2016

Detailed update on the adoption of new provisions regarding the Ministerial Decree No. 500 regarding the Implementing Regulations of Law No. 13 of the year 2015 (GCC LAW).

Kindly note the following:

• Replies to office actions must be filed within 60 days from the date of issue of the refusal;
• Final refusals by the Registrar can be appealed through Appellant Committee within 60 days of notification. Said decision is subject for appeal before the Court within 60 days from issuance;
• Opposition period is now 60 days from the publication date. Previously, while accepted trademarks were published in 3 Gazettes with a 7 day period between each publication, the opposition period was 30 days from the date of the last publication;
• Replying to oppositions must be made within 60 days from the date of notifying the applicant about the opposition.

New Practice for Opposition Cases in Oman

21 January 2016

The Omani Trademarks Office has started to implement section 36 / article 09/3 of Omani Intellectual Property Law No.67/2008 which stipulates the following:

(9) The prior user of a mark which is not in the Register or which is not subject to a pending application under Subsection (2)(vi), may oppose an application for a registration by another person of a similar or identical mark for similar or identical goods, in accordance with this Section and the Regulations thereto, providing the following:
(iii) The prior user files an application for registration of his own mark prior to sending the Registrar the notice of opposition.

In the past, the Omani Trademarks Office was not taking into consideration this Article when examining Opposition cases; however, they have now started rejecting any opposition formally being not complied with the above Law. Therefore, we recommend our clients and associates to ensure filing an application for registration of his own mark prior to sending the Registrar the notice of opposition.

Jurisdiction Update in ARIPO

13 January 2016

Effective from January, 2016; there are changes in rules at ARIPO for patent, designs and trademark applications. A number of amendments were approved for The Harare Protocol on Patents and Industrial Designs as well as The Banjul Protocol on Marks at the Administrative Council of ARIPO in Lusaka, Zambia.

The Banjul protocol on Marks were amended as follows:

New Definition of a Mark Introduced		A Mark includes a sign, name, word, device brand, heading, level signature, letter, numeral or a combination thereof.
New Set of Administrative Rules		A new set of administrative rules have been introduced to help with implementation of the e-service facility with regards to ARIPO and its Member States.
Description of Goods		There will be a fixed number of words that can be included in the description of goods: “A maximum of 50 words will be allowed for the goods listing of each class on an application. A surcharge of $5 per word will be levied for any additional word(s) after the 50th word”.
Time Limit for Applicant to Respond		The time limit for the applicant to respond to a Form 9 has been changed to 2 Months.
Designated State Respond		The time that a designated state can take to respond to communication from ARIPO will be 2 months.
Filing Fees if Filed Via the E-Service		There will be a reduction of 20% to filing fees if filed via the e-service for all trademark applications not using paper filing.
Official Fee		There will be an Official fee of $50 imposed for change of representative.
Extension of Time		Extension of time official fees will be $50 per term (calculated from the date that the last official action was due).
Search Fee		Official search fee set at $50.

The Harare Protocol on Patent and Industrial Designs were amended as follows:

Filing Fees if Filed Via the E-Service		There will be reduction of 20% to the filing fees if filed via the e-service not using paper filing.
Divisional Applications		New rule concerning Divisional Applications: The applicant may file a divisional application relating to any pending earlier ARIPO patent application. A Divisional application shall be filed in the language of the proceedings for the earlier application. A Divisional application shall be filed with the ARIPO office. The Director General was formally given authority to grant extensions of times.
Extension of Time		Extension of time official fees set at: $100 (1st request) $200 (2nd request) $400 (3rd request) $400 for every subsequent request for the same case
Change of Representative		Introduction of a change of representative official fee will be $100.
Search Fee		Official search fee will be $100

São Tomé and Príncipe joins ARIPO Protocols for Patents, Industrial designs and trademarks

An African country officially known as ‘Democratic Republic of São Tomé and Príncipe’ became the 19th Member of ARIPO on 19 May 2014. São Tomé and Príncipe, a former Portuguese colony, is primarily Portuguese speaking island nation in the Gulf of Guinea, off the western equatorial coast of Central Africa. It consists of an island group around two main islands which are: São Tomé and Príncipe, located about 140 kilometers apart and about 250 and 225 kilometers, respectively, off the north-western coast of Gabon. The Banjul Protocol will enter into force, with respect to São Tomé and Príncipe on 27 February, 2016 and with effect from 27 February, 2016, São Tomé and Príncipe becomes eligible for designation as a Member States under the Banjul Protocol. The accession of the Banjul Protocol by São Tomé and Príncipe brings the number of Member States party to the Protocol to ten (10). Likewise, residents of Sào Tomé and Príncipe will be able to file trademark applications with ARIPO as a receiving Office.

Jurisdiction Update in KSA

12 January 2016

The Saudi Patent Office has issued the amended Implementing Regulations of the Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs, the Regulations included new provisions regarding patent applications filed under the PCT.

The International PCT applications will be received by the KSA PTO and shall consider the international filing date of the PCT application as the date of filing the national phase application. The annuity fees shall be based on the international filing date of the PCT application starting from the 1st annuity and shall be paid at the beginning of each Calendar year, starting with the year following the filing of the international application, where the said fees are paid, together with accumulated annuity fees.

The legalized Power of Attorney, Deed of Assignment and Priority documents, have to be submitted within 60 days from the filing date. Restoration of patent application which was rejected or abandoned due to reasons beyond applicant wills, is possible through request submitted to the Patent Office provided the conditions pertinent thereto as detailed by Regulations are fulfilled and the prescribed fees are paid. The Patent Office has provided an option to applicants who have not responded to deadlines within the specified grace period a further period of two months extension prior to expiry of initial deadline provided the conditions are met and the prescribed fees are paid. Annuity fees are exempted from such extension and should be paid within the prescribed time. Multiple design applications are not acceptable in Saudi Arabia, and a design application should not incorporate more than 7 drawings.

Implementing Regulations are effective as of 19 December 2015.