Bahrain amendments to the Copyright Law

News on the Trade Arabia website here of amendments to the Copyright Law in Bahrain. The article refers to mandatory out of court settlements with different levels of compensation for intentional and unintentional infringement and stiff penalties for unauthorised decoding of satellite signals.

Bahrain draft anti-counterfeiting law

Some details of a new anti-counterfeiting law in Bahrain have been made available on the Gulf News website here, and on the Trade Arabia website here.

The part of the Empty Quarter welcomes this news.

UAE draft anti-counterfeiting law

Details of a draft of a new anti-counterfeiting law in the United Arab Emirates are available from an article in Gulf News. 

The part of the Empty Quarter welcomes this news.

Public holidays in Syria - 1st to 6th May 2013

With thanks to Karawani Law Firm news of official holidays in Syria from 1st May to 6th May. All deadlines will be extended to 7th May 2013.

Iraqi Trade Mark Office Power of Attorney requirements

News recently of a change in practice at the Iraqi Trade Mark Office on Powers of Attorney. The change in practice covers situations where there is a chain of Powers of Attorney. So the client grants a Power of Attorney to a regional managing agent (the primary PoA). The regional managing agent grants a Power of Attorney to a local agent (the delegated PoA) using the power of delegation contained in the primary PoA. The Iraqi Trade Mark Office now requires in addition to the delegated PoA that either the original or a certified copy of the primary PoA be submitted. To make matters more interesting the primary PoA must be legalised to the Iraqi Embassy.

This additional requirement is frustrating if the regional managing agent operates in a country where a certified copy will not be accepted for legalisation.

This part of the Empty Quarter waits for the day when the countries in the region do away with the requirement to legalise documents. The cost and time required is considerable.

UAE Trade Mark Office working to catch up

News reaches this part of the Empty Quarter that the Trade Mark Office in the emirates is again working hard to catch up with a backlog of work.  To assist in this, current effort, the Trade Mark Office has stopped examining applications filed in 2012 in order to deal with all issues on those filed earlier. The Trade Mark Office has run a number of similar initiatives in the past.

This part of the Empty Quarter understands well the challenges of managing a growing workload in the emirates and hopes that these initiatives will assist the Trade Mark Office in being able to deal with administrative processing quickly and efficiently going forward. There is a lot to be learnt from the notably over profitable European Community Trade Mark Office [IPEQ :  a sentence I never thought to type!] who have been able to drive efficiency, speed up processing, reduce use of paper, generally make as much information available as possible and improve the quality of decisions given. Is there any chance IPEQ wonders of some of that bountiful EU cash assisting EU rights holders in the Middle East? 

Wholesale changes to the Moroccan Law on Industrial Property

News from good friends H&H Consulting that draft amendments to the Law on Industrial Property in Morocco have been presented to the Secretariat General of the Government. The news says:

“The aim is to enhance the level of protection of industrial property in Morocco and comply with the relevant international standards under various international treaties to which Morocco is a party; including the TRIPS Agreement, the Treaty on Trademark Law Treaty (TLT) and the Free Trade Agreement between Morocco and the United States of America.

Furthermore, in a number of partnership agreements, Morocco undertakes to adhere to the fundamental treaties on industrial property such as the Patent Law Treaty (PLT), the Singapore Treaty on trademark rights and the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs.

In addition, the advanced status granted by the European Union in Morocco provides, among other things, the mutual commitment of both parties to ensure a level of protection of industrial property rights in accordance with the “Acquis Communautaire” in this field. Therefore, an agreement was signed on December 17th, 2010 between Morocco and the European Patent Organization on the validation of European patents. [IPEQ wonders : anyone mention the Unitary Patent?]

The main objectives of this draft amendment revolve around the following points:

1) Improving the system of invention patents,

2) Consolidating the national trademarks system,

3) Reforming the National System of Industrial Designs,

4) Strengthening the implementation of industrial property rights,

5) Upgrading the procedure for filing applications for industrial property rights.

a) The formalities for securities deposit

b) The extension of the deadline for restoration of rights

c) The opposition procedure

d) The system of date marking

e) Electronic filing of applications for registration of industrial designs

f) Organization of the profession of intellectual property consulting”

This part of the Empty Quarter thanks H&H for the report which was much longer in original and attached further information in French – so, please, if you would like more information do make contact with them direct. This part of the Empty Quarter welcomes any improvements in legislation and looks forward to hearing further on the implementation of the changes.

Oppositions in Morocco based on one mark only

Interesting advice on an opposition recently in Morocco. Oppositions must be based on one mark only. While it is possible to refer to other marks in the opposition text the actual opposition can be based on one prior registration only.  Article 148.2 of Law 17/97 sates  “opposition to this application may be initiated with the body in charge of industrial protection by the proprietor of a mark protected or registered prior to the said application or enjoying a previous priority date, or by the proprietor of a pre-existing well-known mark…”. The Trade Mark Office insist on basing decisions one mark only on the basis that article 148.2 does not state clearly that the opposition may be based on several marks (d’une marque protégée).

While Morocco may be a long way from the Empty Quarter, this part of it cannot help but feel that this is a remarkably narrow view to take. Can it be right that as a rights holder of a family of marks I am prevented from relying on more than one of them when filling an opposition. Should the Trade Mark Office really limit itself by considering one prior right to have, effectively, primacy over others? This part of the Empty Quarter expects that the drafting of the Law was not intended to be limiting in the way that the Trade Mark Office has interpreted it to be. It would seem common sense that the Trade Mark Office should consider whichever marks the rights holder seeks to rely on. 

Libyan Trade Mark Office to resume work, May 2013

News from friends at Saba & Co that the Trade Mark Office in Libya will resume operations in May 2013 for the first time in 2 years. Search requests and applications will be accepted. A separate report from another agent claims that they filed the first application in April 2013. 

This part of the Empty Quarter welcomes this news as a Trade Mark Office is not much use if it does not function. However, the opening of the office gives rise to various issues. There will be a flood of search requests and applications (for registration, amendments, renewals etc, etc) which may overwhelm the Office. Will agents file in the order in which instructions were given or the will the applications of favoured clients be dealt with first. There is the potential for significant dispute not just between rights holders but also between clients and agents. Will existing applications be examined (please)?  Resourcing at the office is critical to ensure that they can open and stay open. 

Saudi Customs in special project to seize counterfeit electrical appliances

News arrives of a special project being run by Saudi Customs in January 2013. 

Saudi Customs are working with the local Regional Intelligence Liaison Office (RILO), which is based in Riyadh, of the World Customs Organisation on a one month special project targeting counterfeits of electrical appliances. The operation lasts for the month of January 2013. Other countries in the region have also been asked to participate. Customs are specifically targeting shipments passing through Jeddah seaport, Dammam seaport, Riyadh dry port and the border point with the UAE at Al Batha’a.

The WCO has worked for some years on these special projects in different regions with local Customs authorities to focus on particular products with good success.

This part of the Empty Quarter welcomes this initiative. By working with local Customs on specific products the WCO can share global knowledge and experience locally leading to increases in detentions and greater protection of the consumer from shoddy, deceitful product.

3rd Arab Forum for IPR Protection

The 3rd Arab Forum for IPR Protection will take place in Riyadh from 3rd to 5th March 2013. Details of the event can be found at www.ipr.gov.sa which are provided conveniently in both English and Arabic.

This part of the Empty Quarter supports all opportunities for officials, business people and academics to gather to discuss how best the IP regime can support businesses and consumers.

Further update on the 10th Edition of the Nice Classification

Good friends Saba & Co. have sent out their January newsletter which reports that:

"According to Ministerial Resolution no. 1147, dated October 16, 2012, the Saudi Trademark Office shifted its trademark classification system from the 9th edition to the 10th edition of the Nice International Classification for Goods and Services, which entered into force on January 1, 2012. This decision became effective on November 23, 2012 and applies to both new and pending applications. For pending applications, the Registrar may ask for a class amendment upon examination, or at the time of publication or registration."

The website version of the report (here) then provides a useful summary of which classification system is followed in many countries in the region. Some of this information is different

This part of the Empty Quarter is now going to have to do some proper work to identify which countries are signatories to the Nice Agreement and which editions each are following as the information from Saba is different from the information posted by me last month!

Update to 10th Edition of the Nice Classification

WIPO's ever useful email news list reports that there is an update to the 10th Edition of the Nice Classification which will come into effect on 1 January 2013. The Information Notice can be found here.

This is not quite so useful for practitioners in the Gulf. Only Bahrain is a party to the Nice Agreement.  Kuwait, Oman and the UAE follow the Ninth edition, Saudi Arabia the Eighth and Qatar the Seventh.

This part of the Empty Quarter wonders what might be holding back the various Trade Mark Offices from adopting the current (or at least most recent) version of the Nice Classification. Uniformity in the classification system assists rights holders. This part of the Empty Quarter also wonders if the UAE Trade Mark Office will be better able to adapt to the newer classification now that they are using the WIPO IPAS system.

Domain name news from Egypt, Sudan, and Tunisia

The Com Laude (www.comlaude.com) newsletter is packed with interesting news presented clearly and concisely covering all things domain related from around the world. The Winter 2012 Newsletter is not yet on their website but reports developments in Egypt, Sudan and Tunisia. 

For Egypt Com Laude report: ".eg - second-level for marks. The Egyptian Registry, EUN, has lifted restrictions on .EG domains for trademark holders. since 12 November 2012, second-level .EG domain names have been available for holders of trade marks registered in Egypt either regionally, through the Egyptian Trademarks Office, or internationally through WIPO. Previously a local presence was required. Domains should match the trademark registration, however they may not be used for websites which go against local traditional and conventional ethics, for example gambling, alcoholic beverages, or sexual websites. Domains must be used by the owner only and shouldn't be sold to any institution unless related to the registered owner. It is estimated that there are just under 30 million Internet users in Egypt, a country which famously severed the majority of its Internet connection amid growing unrest in January 2011."


For Sudan Com Laude report: " Sudan passes IDN String Evaluation. ICANN has announced the successful completion of the string Evaluation on the proposed Arabic IDN ccTLD string for sudan. The IDN (Internationalised Domain Name) ccTLD Fast Track Process was approved by the ICANN Board at its annual meeting in seoul, south Korea on 30 October 2009 and enables countries and territories to submit requests to ICANN for IDN ccTLDs, representing their respective country or territory names in scripts other than Latin. 31 requests have successfully passed through the string Evaluation so far, including most recently мон, the Cyrillic IDN ccTLD string for Mongolia, in June 2012."


For Tunisia Com Laude report: " .tunis in Arabic - “Go Live” begins. The Tunisian Internet Agency, ATI, is hoping to encourage the development of Arabic content and increase the visibility of local content internationally through the launch of the new Arabic IDN (.tunis). The Go Live Period is now open to anyone who wants to register. The new extension currently accounts for 2.79%of the 16,917 domains registered in Tunisia, a country with an estimated population of just under 10.7 million."

This part of the Empty Quarter thanks Com Laude for their excellent newsletter and for news about goings on with domains in the sand.

Saudi Arabian Trade Mark Office amends renewal procedure

With thanks to good friends Nassir Kadasa & Partners there is news that the Trade Mark Office has made a small but significant amendment to the renewal procedure. In the past the renewal of a trade mark could be filed and the original registration certificate could be supplied later for endorsement with the renewal. The new procedure requires that the original registration certificate is submitted with the renewal application. 

This part of the Empty Quarter looks forward to a time when an original registration certificate does not have to travel many miles for the physical endorsement of a renewal or change in the registrant's details.

Saudi Arabian trade mark publication rules changed

News from good friends SMAS Intellectual Property that the Saudi Ministry of Commerce and Industry has issued Ministerial Decision No. 1147 dated 16 October 2012. Their news release reads:

"...the Saudi Ministry of Commerce and Industry has issued a new Ministerial Decision No. 1147 dated 16 October 2012; in which Articles 1, 10, 11, 13, 14, 17, 20, 23, 24, 27, 29, 32 & 40 of the Implementing Regulations of Trademark Law have been amended.

The Ministerial Decision amended the method of publication of the trademark application, and all transactions pertinent thereto, including renewal, assignment, pledge, license, cancellation to be on the website of Ministry of Commerce and Industry and/ or any other location specified by the said Ministry instead of the publication of the same in the Saudi Official Gazette.

Further, once the application is accepted the applicant and/or his representative should pay the publication fees within thirty days of the date of acceptance; otherwise the application will be considered abandoned.

The Trademark Office has modified the official publication fees accordingly."

The news release from SMAS does not confirm from when this new regime will come in to effect. 

This part of the Empty Quarter welcomes this news. Publication in the Official Gazette increased the cost of publication for longer specifications and delayed the publication of marks as there was fixed amount of space in each Official Gazette. Any step which reduces the steps to registration of marks is one which is welcomed. Rights holders who have paid additional publication fees in advance may be able to obtain a refund from their local trade mark agent.

Iran - electronic trade mark application system launched

Raysan Patent & Trademark Agents (www.irantm.com or www.raysanip.com) have shared the news of the launch of an electronic application system. Their announcement says:

"The Iranian Trade Marks Registry launched trade mark electronic application system on November 18, 2012 that allows trade mark applications to be submitted online. This development follows successful inauguration of electronic application system for patents and industrial designs a few months ago.

Currently, the Trade Marks, Patents and Industrial Design Registries only accepts electronic filing of applications.There have been no changes in filing procedures or formalities requirement, but a new application number format will be assigned automatically by the electronic application system. The original supporting documents (i.e. power of attorney, applicant's incorporation document) are still required to be submitted to the Office in hard copy.

The electronic platform for filing of trade mark applications and workflow system is available at http://iripo.ssaa.ir. The platform is only designed in Persian and no English version is available yet.

The system provides for examination, correspondence, publication and registration procedures electronically. However, the opposition, hearing, renewal, assignment and license recordation procedures are handled as before.

The Iranian Patent Office and Industrial Design Office have launched the electronic application system a few months ago. The electronic platforms for filing of patent and industrial design applications and workflow system are available only in Persian at the same address at http://iripo.ssaa.ir.

The Iranian Industrial Property Office is gradually shifting to a completely paperless office in a phased manner during the next years."

The part of the Empty Quarter welcomes this news.  Any system which simplifies the application process will generally increase efficiency making the system more likely to be used. It is no surprise that the platform is only available in Persian.

UAE National Day holiday

In celebration of the 41st National Day on 2 December 2012 all government departments in the United Arab Emirates will be closed on Sunday 2 December and Monday 3 December. All trade mark, patent and design deadlines falling on either day will automatically move to Tuesday 4 December 2012.

Qatar Trade Mark Office delays

There are delays at the Qatari Trade Mark Office in examining applications. They are currently examining applications with serial numbers in the range of 67000. Applications seem likely to be examined about 18 months after filing.

UAE Trade Mark Office update

The Trade Mark Office in the UAE implemented the WIPO IPAS system for the management of all its internal processes early in 2012. The system is described as excellent and requires that all steps in the various processes be undertaken. The Trade Mark Office has suffered from a shortage of staff for a number of years and many files have been misplaced in the archiving system.

New staff are to join the Trade Mark Office team shortly.

The Trade Mark Office is currently:

• processing unexamined applications from 2011 and earlier.
• asking agents to provide lists of applications from 2011 and earlier to assist in dealing with the pending matters.
• keeping applications filed in 2012 pending.
• dealing with some post registration applications.

The Trade Mark Office practice on dealing with changes of address is changing. Previously, the Trade Mark Office would rely on a Power of Attorney from the registrant with the new address as sufficient to record the change. The Trade Mark Office is now asking for a change of address certificate (legalised) showing each change of address in sequence. Official fees are now payable for each change of address (AED250). The Trade Mark Office is, at least, not asking that each change of address be published in the Trade Mark Journal (AED500).

This part of the Empty Quarter sees high official fees as a barrier to use of the trade mark registration system and, while applauding a robust process, hopes that official fees can be reduced generally or waived in specific circumstances to encourage use of the system. This part of the Empty Quarter is pleased to see the pending matters being moved on and new staff recruited as both should encourage users of the system.

OHIM and OMPIC discuss collaboration

There is a news item in the October 2012 Alicante News which mentions a meeting between OHIM and OMPIC which took place in October. The excerpt reads:

"And in the penultimate meeting in OHIM’s busy schedule in Geneva, it was the turn of one of the Office’s newest partners, Morocco, to meet with our delegation in the afternoon. Relations between the Moroccan Office OMPIC and OHIM began only recently, and OMPIC Director General Mr Adil El Maliki welcomed the opportunity for future cooperation with OHIM and, in turn, he was thanked by President Campinos for his initiative to meet with OHIM here at the WIPO General Assemblies. A number of possible collaboration initiatives were discussed, such as training for OMPIC examiners and the possibility of OMPIC attending the upcoming IP seminar for non-EU countries."

This part of the Empty Quarter welcomes OHIM providing support for Trade Mark Offices in developing and least developed countries. OHIM's cash surplus was, a few years ago, significant and while initiatives such as the Cooperation Fund and the Convergence Program are useful, it is in the developing and least developed countries that rights holders based in the EU will really feel the benefit of investment by OHIM. 

Public Holidays in Morocco

A public holiday in Morocco means that government offices are closed until 6 November, reopening on 7 November 2012.

Dubai Customs IP Workshop - 13 to 15 November 2012

The next IP Workshop will be held by Dubai Customs from 13th to 15th November 2012. Dubai Customs will select participants from those rights holders who express an interest.

Eid Al Adha holiday in Saudi Arabia

The Eid Al Adha holiday in Saudi Arabia will run from Thursday 18 October 2012 to Friday 2 November 2012. Government departments will re-open on Saturday 3 November 2012.

The Customs department has issued a circular to those businesses with whom it works on Customs detentions based on trade mark infringement confirming that as Customs will be working over the Eid Al Adha holiday they expect representatives of the companies also to be available. This will disrupt the holiday for the 4 laboaratories, 4 service providers and 1 rights holder to whom the circular is addressed. 

GCC Patent Office hosts event on Pharma patents

The GCC Patent Office along with WIPO, King Abdulaziz City for Science and Technology and The Executive Board of the Health Ministers are hosting a workshop at KACST in Riyadh on Monday 15th and Tuesday 16th October 2012 on 'Invention in the Pharmaceutical Sector: Patents, Undisclosed Information and Health Policies'. 

A busy program in the run up to Eid with some useful speakers and topics.

New Syrian Ministry responsible for Intellectual Property matters

With thanks to good friends SMAS news of the Ministry of Interior Trade and Consumer Protection. 

Decree No. 46 of 2012 establishes the Ministry of Interior Trade and Consumer Protection. The new Ministry is responsible for the management of the Industrial and Commercial Property Protection Directorate which deals with all Intellectual Property matters in Syria.

Syria to leave the Madrid Agreement

WIPO announced on 29 June 2012 that the Syrian Arab Republic had deposited its instrument of denunciation of the Madrid Agreement which will take effect on 29 June 2013. Rights holders will then no longer have the opportunity to designate Syria using the Madrid Agreement.

This part of the Empty Quarter has slightly mixed feelings about this announcement. The Agreement works, but not as well as the Protocol and so is not as good an Agreement as it could be. On the other hand any system which makes it easier to register marks around the world is, generally, to be welcomed. And denunciation is such a strong term!

Libyan Trade Mark Office - searches start then stop

The Libyan Trade Mark Office started accepting search requests at the end of July 2012. The searches were then unexpectedly stopped due to a 'technical issue'. It is hoped that searches will restart soon.

Enforcement against parallel imports in Dubai

News today, although no official announcement, that the Dubai Department for Economic Development has a new section dealing specifically with enforcement against parallel imports where there is a registered commercial agency agreement. The Commercial Agencies section will take action against parallel imports when a complaint is filed. A copy of the agency registration must accompany the complaint. Traders will be asked to sell the goods to the registered commercial agent and fines will be the same as those issued for trade mark infringement (starting at Dhs2,000).

This part of the Empty Quarter welcomes this news. If laws exist then so should the mechanisms to enforce them. The Dubai Department for Economic Development has a good record for enforcing trade mark rights and can bring that experience to the enforcement of the Commercial Agency Law. However, this part of the Empty Quarter can't help but feel that maintaining a system that allows one company to have a monopoly on the import of certain products is not good for consumers and that the original justification to support the creation of local trading businesses is not now as strong as it used to be.

Libyan Trade Mark Office

With thanks to good friends Saba & Co an update on the Libyan Trade Mark Office. 

The Libyan Trade Mark Office is not fully operational. It has recently started accepting and processing trade mark search requests. It is also processing previously filed applications.  However, it is not accepting new applications or amendments to existing applications. Work is ongoing to replace the previous system which was damaged during the revolution. The latest information is that the Trade Mark Office is expected to re-open towards the end of August, after Eid Al Fitr.

This part of the Empty Quarter welcomes this news. The Libyan Trade Mark Office has had a troubled decade or more with records going missing, normal operation being suspended and other issues. A return to normal operations will be welcome.

Destruction of goods seized by Customs

This part of the Empty Quarter has seen two worrying trends emerging in every day practice across the region flowing from the issue of what happens to goods seized by Customs.

The first is that Customs allow the importer to export the goods outside the country of detention or, if seized in a member state of the GCC, to allow them to be exported outside the GCC. The reasoning seems to be that if the goods are not in the country/region then they are no longer a problem. This is plainly not the case. In one recent example dangerous, explosive, counterfeit product was allowed to be exported to a third country. This simply puts other people at risk, rather than removing the risk completely.

The second is that Customs simply store the goods with no process for destruction. Customs are doing a great job of detaining goods. The processes for the destruction simply have not been worked out.

The root causes of both of these issues are that neither the facilities to destroy or recycle the goods nor the enforcement mechanisms to hold the consignee liable for the cost of destruction/recycling either exist or are readily available.

Seizure of counterfeit products without permanently removing them from circulation is no real seizure at all. Rights holders will simply, in time, stop working with Customs to seize counterfeit products. It will be consumers who are ultimately harmed.

Good work by the Dubai Department of Economic Development

This part of the Empty Quarter really likes good news and while practice in the region can be frustrating and require significant patience there are days when a piece of good news arrives to lighten the day. This item of good news comes from this part of the Empty Quarter’s own practice.

The Dubai Department of Economic Development have long taken action in the markets in Dubai. The inspectors have a good knowledge of the traders and of many products. In general, they will take action in response to a complaint being filed. Occasionally, they will take action proactively. In one recent example, the DDED proactive raided 4 traders, seizing about 200 counterfeit items in total. The DDED levied fines totalling nearly Dhs50,000 against the 4 traders – that is over US$3,000 per trader or US$65 per item.

Good news for the rights holder concerned and for consumers.  Well done to the Dubai Department of Economic Development.

Qatar Customs recordals

With thanks to good friends Saba & Co and their monthly bulletins for February and March 2012 we have news of IPR Border Measures in Qatar.

Law No. 17 of 2011 on Intellectual Property Rights Border Measures came in to force on publication in the Official Gazette No. 12 of January 2012. The report from Saba describes provisions with which practitioners will be familiar – rights holders can record information with Customs, Customs can stop counterfeits on sufficient evidence, decide what to do with the goods, and the decisions of Customs can be appealed to the Court. Action against goods in transit, goods coming from a country with whom there is a Customs union, and parallel imports is specifically excluded.

This part of the Empty Quarter likes Customs recordals when there is a clear process for recordal, detention, punishment and destruction. Detentions by Customs are a significant deterrent to traders in counterfeit product.

Syria, sanctions and Executive Orders

For a few weeks in February it looked like any US business would have considerable difficulty in undertaking any Intellectual Property work in Syria and any business having instructed IP work in Syria since August 2011 may have been in violation of an Executive Order issued by President Obama.

In February, the US firm Kilpatrick Townsend & Stockton LLP produced a very useful Alert, on the effect of Executive Order 13582 issued on 17 August 2011 strengthening US sanctions against Syria. The Executive Order prohibits US persons and entities from engaging in (i) receipt of goods or services from the government of Syria; (ii) payment of funds to the government of Syria; and (iii) The approval or facilitation by a US person of a transaction by a foreign person where the transaction would be prohibited under the Executive Order if performed by a US person (which catches US persons instructing agents elsewhere to manage the IP on their behalf).

The US Treasury Department Office of Foreign Assets Control (OFAC) had issued a series of General Licenses allowing certain activities that would be otherwise prohibited but none of them had extended to IP. OFAC had indicated that a "specific license" must be obtained before engaging in IP transactions including filing, maintaining or renewing IP applications or registrations.

Fortunately, on 22 February 2012, General License No 15 was issued by OFAC authorising certain acts related to patents, trade marks and copyright.

This part of the Empty Quarter likes certainty and feels that General License No. 15 restores at least partial certainty to the ability of US persons and entities to continue to manage their IP in Syria. There is an outstanding question about domain names (which coincides with the Syrian domain name registry implementing new regulations, about which more anon). Of course, the ideal outcome is that the normal order of things is restored and no sanctions, Executive Orders or General Licenses are needed at all.

UAE Trade Mark Office implements IPAS system

A report from good friends Rouse tells us of disruption at the UAE Trade Mark Office due to implementation of a new internal system.

In summary the UAE TMO has implemented the WIPO Industrial Property Automation System (IPAS) (details here) to replace the former bespoke system. The IPAS system is expected to result in more efficient processes within the Trade Mark Office as well as introducing greater standardisation and new capabilities. Among the new capabilities will be phonetic searches and classification of devices (based on Vienna Classifications). In time it is expected that e-services will be enabled including online filing, viewing records on online, and so on. The switch over from the old system to the new took place over a long weekend at the beginning of March. There are ongoing service delays at the Trade Mark Office as officials are changing working practices to comply with the process requirements of the new system. Currently trade mark searches are expected to take 7 working days. All agents are limited to undertaking only 5 of each transaction type per day while the new system is being settled in. Priority is being given to applications claiming priority and other deadlines. The Trade Mark Office expects service levels to return to normal quickly.

The part of the Empty Quarter welcomes new and improved systems and believes that rights holders can be tolerant of delays due to implementation particularly when those delays herald the arrival of improved levels of service to those rights holders. Agents across the UAE are having to adapt quickly to new practices, not to mention new forms and report formats. It may be small thing but this part of the Empty Quarter is deeply relieved to see that the IPAS system sends out documents in .pdf format, rather than the obscure .snp format used until only the end of last month.

(No more) Trade mark reservation in South Sudan

With thanks to our friends at SMAS for the timely update we can report that the Procedure for the reservation of trade marks announced here has been suspended. In the normal course this would be a matter of some concern. However, in this case SMAS have been informed by the Commercial Registrar’s office that the suspension is due to the Trade mark Bill for South Sudan being in the final stages of legislation.

This part of the Empty Quarter likes certainty and looks forward to reporting further news on the new legislation when news is available. Will marks from the former (whole) Sudan transfer to the new South Sudan Registry? What about Paris? Madrid (Agreement or Protocol)? Fees? Will there be a domain like sunrise period? So many questions, so much advice to be given. And then there are questions for patents, designs and copyright!

Restarting

As I have quickly discovered the hardest part of this blogging game is not what to write but finding the time to write it. Along comes a bit of travel and a lot of work and the blogging is very quickly in the non-urgent, non-important quadrant. What is the lesson to learn? Perhaps that the rest of the world is simply too busy and that more time should be spent in the tranquil thoughtful space that is the Empty Quarter.

Abu Dhabi event on Commercial Fraud and Consumer Protection in January 2012

A email from the Abu Dhabi Department for Economic Development brings news of a seminar/exhibition to raise awareness of Commercial Fraud and Consumer Protection taking place on Wednesday 25 January 2012 in Al Sila City in co-operation with the Department of Municipal Affairs – Western Region. The email refers to “..the department’s aims of fighting commercial fraud…to maintain…[the] safety of consumers”.

This part of the Empty Quarter welcomes news of any event to raise awareness with consumers, particularly where the organizer has a primary focus on safety. Too many counterfeit goods are simply not safe, a fact which is often lost when the trigger for action is trade mark infringement. Trade marks serve a purpose and consumers should be able to rely on the quality message they embody. 

WIPO and Egypt sign MoU on establishing an IP institute

The WIPO SMEs Newsletter of January 2012 (which doesnt yet seem to appear on the WIPO website) brings news that WIPO will be working with the government of Egypt to establish an IP Institute. The newsletter reads:

“WIPO will support Egypt in establishing an institute that is dedicated to the teaching of intellectual property (IP). A memorandum of understanding (MoU) was signed on October 26, 2011, by Ambassador Hisham Badr, Permanent Representative of Egypt to the United Nations office in Geneva, and WIPO Director General Francis Gurry that outlines the areas of collaboration. The MoU was signed in the presence of Ambassador Ahmed Fatah Allah, First Undersecretary of the Egyptian Ministry of Foreign Affairs.”

This part of the Empty Quarter welcomes any initiative to share knowledge and increase learning. Egypt has been a centre of learning for many hundreds of years, has a large population from which to find bright, young minds interested in IP and a diverse open society. Learned Egyptian minds have, for many years, travelled across the region and perhaps this new institute will create a new generation to carry on that tradition. There are few institutions across the region with a specialist focus on IP and perhaps this initiative will encourage the creation of more.

Oman acceeds to the Hague Convention

A newsletter from SMAS-IP brings news that Oman has acceded to the Hague Convention abolishing the requirements of legalisation of foreign public documents. The Sultanate Decree No. 47/2009 comes in to force on 30 January 2012. As a result documents from other states who have acceded to the Convention will require only an Apostille with no need for legalisation to the Omani Consulate in the country of execution.

This part of the Empty Quarter heartily welcomes any move which reduces the administrative burden on rights holders. The requirement for documents to be notarised, legalised, and sometimes re-legalised is burdensome, time-consuming and expensive. In some countries the process can take weeks rather than days. Acceding to the Convention is clearly a matter for each sovereign nation. This part of the Empty Quarter hopes that this move by the Sultanate of Oman will be followed by other members of the GCC and elsewhere across the wider region.

Saudi Arabian Customs hold IP event in Riyadh in January 2012

A report from good friends, Nassir Kadasa & Partners, in Riyadh, brings news of a conference and exhibition organised by the Customs Authority of the Kingdom of Saudi Arabia in Riyadh on the afternoon of Saturday 28 January 2012 at the Customs Headquarters. A limited number of service providers in Saudi Arabia have been invited to exhibit details of the rights and rights holders they represent to an audience made up exclusively of officials from Customs in the Kingdom.

This part of the Empty Quarter has had good experiences of Customs in Saudi Arabia and knows that they can be very effective at inspecting and detaining shipments of counterfeit goods, coupled with a good balance between procedural formality and the exercise of discretion on deadlines. Opportunities for representatives of rights holders to share information with Customs officials are welcome and can only further enhance the understanding of IP amongst those charged with guarding the borders.

WCO and UAE Federal Customs to host forum in April 2012

News from a friend of a friend is that a WCO Forum will be taking place with the Federal Customs Authority of the UAE in Abu Dhabi from 9-11 April 2012. While the agenda is not yet finalised the current plans are:

1st day: Government agencies will discuss IP Law

2nd day: IP laws will be discussed with the private sector

3rd day: Workshops will be conducted by right holders showcasing their products to UAE Customs inspectors and others.

Attendees are likely to include the Customs Administrations of the UAE, the World Customs Organization, interested Governments represented in the Embassies in the UAE, the Private Sector, the UAE Ministry of Economy, the UAE Ministry of Health, Chambers of Commerce from each of the emirates, and others. There is also a report that the UAE Federal Customs Authority has joined the IPM program of the World Customs Organization.

This part of the Empty Quarter welcomes discussions between the private sector and governments, welcomes the opportunity for rights holders to share information with Customs officials, and welcomes the return of the WCO to the UAE. The UAE has a rich history of working with the WCO on IP issues. A former Director General of the WCO once commented at a planning meeting for an event that he wished for the event to produce less talk and more action. The part of the Empty Quarter wholeheartedly agrees with that sentiment.

Iraq Patent Office requires Israel boycott declaration

News has reached this part of the Empty Quarter from a client that the Iraqi Patent Office has recently started to require that applications for patents be accompanied by an Israel boycott declaration. In this particular example the declaration is required in the Power of Attorney provided by the local agent to the client and the local agent has confirmed that failure to provide the declaration will result in the application being rejected on the basis that the formality requirements have not been met. The boycott declaration had been a requirement in Iraq, but has not been since 2008. The Whats Up In IP? blog reports the same issue from last year.


This part of the Empty Quarter prefers clarity and hopes that an official announcement will be made by the authorities in Iraq as to whether the Israel boycott declaration is required or not. 

Trade mark reservation in South Sudan

A report has been received that the Ministry of Justice in South Sudan has issued a directive to officials at the Trade Mark Office to implement procedures for the “reservation of a trade mark” until a Trade Mark law is issued. The procedure is:

1.    A written application is submitted setting out the mark to be protected

2.    The Registrar searches the Registry database to confirm whether the mark is reserved or not.

3.    If the mark is not already reserved, it will be reserved in applicant’s name

As yet, there are no official fees for the reservation.

This part of the Empty Quarter hopes that one of the many international agencies likely to be assisting this fledgling State will be particularly focused on setting up a smoothly running Trade Mark Office. The Government of South Sudan has a good web presence for a new state (http://www.goss.org/) which bodes well for an on-line Register.

DIFC courts now available for IP disputes

The courts of the Dubai International Financial Centre, uniquely for the region, operate in English based on English common law. The jurisdiction of the DIFC courts had been limited to matters where one of the parties operated in the DIFC. On 31 October 2011 Dubai Law No. 16 of 2011 was enacted (press release here) which amended Dubai Law No. 12 of 2004 which had created the DIFC Courts. As a result parties with no nexus to the DIFC may now agree to submit any civil or commercial dispute to the jurisdiction of the DIFC Courts (about the DIFC Courts here).

This part of the Empty Quarter expects that most IP disputes to be heard in the DIFC courts will be where the parties have agreed to the jurisdiction prior to the dispute. Lawyers in the region drafting agreements such as licences are likely to consider selecting the jurisdiction of the DIFC.  Whether there will be a sufficient volume of IP disputes to warrant the appointment of a specialist IP judge is another issue.

Kuwait's Design law awaits implementing regulations

The Implementing Regulations for the Kuwaiti Design Law (Law No. 4 of 1962 relating to Patents, Designs and Industrial Models as amended by Law No. 3 of 2001) have not yet been issued. As a consequence, all design applications are simply filed with the Patent Office. No examination is taking place and no annuity fees are payable. There is no indication of when the Implementing Regulations will be issued. 


This part of the Empty Quarter hopes that the Implementing Regulations are issued soon so that design registrations can start to be issued and design rights can be fully exploited.

UAE to set up specialist IP Courts

The Emirates News Agency reported on 18 December 2011 that the UAE Federal Courts are to have two new circuits (primary and appellate) specialising in Intellectual Property disputes. 


This part of the Empty Quarter welcomes all new specialist IP courts as specialist judges know the subject area well.

A beginning

This blog is intended to share useful information about Intellectual Property in the Middle East and North Africa. Together we will see how it develops!