Iran - free online trade mark searches

News from good friends Raysan Patent & Trademark Agents of a new service they have launched:

"We are pleased to inform you that may carry out FREE online trademark search on www.irantm.com with your username and password. The website provides you with the possibility to conduct FREE real-time online searches for identical and similar marks as well as proprietor and status check among published and registered marks.

You can carry out FREE online searches for a National trade mark and an International Registration designating Iran that have been accepted and published in the local Trade Marks Gazette. The database consists of trademark applications published in the Trade Marks Gazette since July 18, 1925 to October 27, 2013."

Good news.

Saudi Arabia - Trade Mark Office significantly speeds up examination

The Trade Mark Office in Saudi Arabia is processing trade mark applications exceptionally quickly. From the end of October applications have been published within two or three days of the applications being filed. Whether this is due to the recent changes in the application process at the Trade Mark Office (reported here) is not known.

This part of the Empty Quarter cannot help but wonder if applications are being rigorously examined within such a short period of time.

WCO Operational seminar in Tunisia from 9th to 13 December 2013

News that that WCO will organize an operational seminar in Tunisia. Five countries will be involved (Libya, Morocco, Tunisia, Algeria, and Egypt) . The seminar will take place in Tunis. Rights holders who are members of the WCO IPM program are allowed to present to the officials.

Syria - amended trade mark renewal fees

News from good friends SMAS "that the Syrian Trademarks Office has announced that additional costs will be added to the renewal application for Multi-Class registered trademarks; particularly to the publication fees, and the applicant will be charged for the publication of the trademark renewal application in each Class separately, instead of being charged for one publication fees for the trademark renewal application despite the number of Classes, with a retroactive effect to the trademarks renewal applications which the renewal certificates has not been issued yet."

UAE Trade Mark Office - change in requirements for change of address applications

News reaches this part of the Empty Quarter of a possible change of practice at the UAE Trade Mark Office for the documents required to support an application to record a change of address. 

Before the implementation of the WIPO IPAS system the Trade Mark Office would accept a Power of Attorney from the applicant/proprietor with the new address as sufficient to record a change of address. After the implementation of the WIPO IPAS system in early 2012 the Trade Mark Office required a notarised and legalised change of address certificate issued by an official company registrar showing each change of address (or name, for a change of name) between the address on the register and the new address. Official fees for each change of address then had to be paid.  This requirement for a certificate showing each change of address caused particular issues for rights holders in countries where changes of address are not recorded or there is no official government company registrar - so particularly rights holders based in the US.

The latest news from the Trade Mark Office is that a Power of Attorney showing the new address is sufficient and intermediate changes of address will no longer need to be recorded and paid for.

This is welcome news indeed!

Tunisia - joins the Madrid Protocol

Following an earlier post (here) an announcement from WIPO that Tunisia has now joined the Madrid Protocol (here)

Dubai Customs IP workshop - November 2013

Dubai Customs have announced the next workshop on protecting intellectual property rights. The workshop will take place in November 2013 and will last for three days. The focus will be on trade marks related to medicines, foods, cosmetics and skin care preparations. Requests to participate must be submitted by 31 October 2013 and participants will be selected by the workshop team.

UAE - Dubai Global Intellectual Property

News from the Trade Mark Office that the trade mark agency called Dubai Global Intellectual Property is no longer registered with them and is no longer operating.  Efforts to contact Dubai Global Intellectual Property at the contact details on their website (which is still operating at the date of this post) have proved fruitless.

Rights holders and agents who instructed Dubai Global Intellectual Property will need to make alternative arrangements in good time.  Notices relating to applications or registration where Dubai Global Intellectual Property are still listed as the agent of record will not be sent to another agent until a change of agent is recorded.

Iran - Trade Mark Office electronic filing system uses 2011 version of the 10th Edition of the Nice Classification

Following an earlier post (here) on the launch of an electronic filing system in Iran further news from Raysan Patent & Trademark Agents that "The new Iranian Electronic Application System allows applicants to select from a list of goods and services already on the system. The goods and services on the system are the same goods and services enumerated on the WIPO website at www.wipo.int/classifications/nivilo/nice/index.htm". This link is to the old 10th Edition of the Nice classification and not to the new 2013 edition. In this respect the Trade Mark Offices of Iran and Saudi Arabia (see post here on a similar process in Saudi Arabia) have followed the same path.

Yemen - increase in official fees

News from good friends SMAS, sent a month ago, that official fees for trade marks, patents, designs, and copyright have increased in Yemen following Ministerial Decision No. (100) dated 21 August 2013. Further information on their website (here).

Saudi Arabia - new trade mark application process and priority applications

Following yesterday's post (here) on the changes to the trade mark application process in Saudi Arabia a question has arisen about applications claiming priority.  How will the Trade Mark Office deal with an application where the goods in the application or registration on which the priority claim is based are not listed in the 2012 version of the 10th Edition of the Nice Classification?

While the answer is not certain, advice from a local firm has reached this part of the Empty Quarter that the applicant should consider applying in Saudi Arabia for the class heading (which is not specified to cover all goods in class but in practice often feels like it does) on the basis that the Trade Mark Office has recently become less particular about insisting that the goods or services in the application in Saudi Arabia are identical to those in the right from which priority is claimed. 

This part of the Empty Quarter agrees with the advice and expects to report on a number of other changes to procedure in Saudi Arabia required to fit with the new requirements. 

Saudi Arabian Trade Mark Office changes application procedure

With thanks to good friends Rouse and Kadasa & Partners, news of major changes to the application procedure at the Trade Mark Office in Saudi Arabia. The Alert, sent out by Rouse, reads:
Significant changes to the trade mark application process in Saudi Arabia

With effect from Wednesday 25 September 2013 the Trade Mark Office in the Ministry of Commerce and Industry (MOCI) in Saudi Arabia has made significant changes to the trade mark application process. All rights holders will need to be aware of these changes and take account of them when instructing trade mark applications in Saudi Arabia.

The changes are:

• All applications must be submitted electronically. No hard copy applications will be accepted after 25 September 2013
• The Trade Mark Filing Portal is on the MOCI website: http://tm.mci.gov.sa/
• All trade mark attorney firms must register with the Trade Mark Filing Portal to be able to file electronic applications. Only registered local attorneys are able to file through the portal
•  The Power of Attorney from the applicant to the agent must first be approved. The details of the applicant are entered on the Trade Mark Filing Portal and a color scan of the Power of Attorney is uploaded. The Trade Mark Office will review the scan of the Power of Attorney against the applicant’s details and decide whether the Power of Attorney is accepted or rejected.  The acceptance or rejection is expected to be issued on the same day the information is entered
•  If the Power of Attorney is accepted the original document must be taken to the Trade Mark Office. The Trade Mark Office will verify that the original document matches the scanned copy on the Trade Mark Filing Portal. This verification is expected to take place on the same day as the information is entered on to the Trade Mark Filing portal or the following day
•  When the original Power of Attorney has been verified against the scanned copy and registered to the local attorney’s online account the application form will be activated so that the trade mark application can be filed
•  The verification of the Power of Attorney only needs to be done once and will be sufficient for any number of future applications
•  The Trade Mark Filing Portal will only accept goods and services from the predefined list in the system which includes the exact class headings and the detailed goods/services of each class as set out in the 10^th Edition of the Nice Classification published in 2012.
•  The trade mark must be submitted in JPEG format with a resolution of 200 by 400 pixels. Scanned copies of the mark will not be accepted
• All notifications about the application will be sent to the local attorney through email or SMS to a dedicated email box and mobile phone number respectively
• The original certified copy of the priority document must available at the time of filing the application.  The scanned copy is uploaded on to the Trade Mark Filing Portal and the original must be submitted to the Trade Mark Office either on the same day or on the next day. The Trade Mark Office is expected to expedite verification of Powers of Attorney associated with applications claiming priority so the chances of the priority deadline being missed are reduced.  

At the moment it is not clear if the system will allow more than one agent to have an approved Power of Attorney from the same rights holder, although the expectation is that it will.

For the time being online filing is limited to new applications. Applications for other transaction (renewals, assignments, changes of name/address and so on) are to continue to be made using the existing, paper based, processes.

These changes continue a pattern of changes at the Trade Mark Office in Saudi Arabia over the last couple of years. Online publication of trade mark applications started last year.

More recently the Trade Mark Office has been requiring changes to specifications particularly around retail services in class 35. For some time the Trade Mark Office has rejected applications for identical or similar marks in the same class even if the goods or services are very different.

These new changes require rights holders to:  

• craft specifications which use wording found in the 10^th Edition of the Nice Classification published in 2012. This is different to the 2013 edition on the WIPO website as the current edition; and
• instruct applications in good time to meet priority deadlines to allow for the Power of Attorney to be verified.

Edward Hardcastle, Partner, Rouse

Mohammad Jomoa, IP Manager, Kadasa & Partners  

Eid Al Adha 2013 holidays

With thanks to good friends SMAS, who sent this out today, here is a table of government holidays across the region:

Bahrain - Monday 14 October 2013 to Saturday 19 October 2013Egypt - Monday 14 October 2013 to Saturday 19 October 2013
Iraq - Tuesday 15 October 2013 to Saturday 19 October 2013
Jordan - Monday 14 October 2013 to Saturday 19 October 2013
Kuwait - Friday 11 October 2013 to Saturday 19 October 2013
Lebanon - Tuesday 15 October 2013 to Saturday 19 October 2013
Libya - Monday 14 October 2013 to Sunday 20 October 2013
Morocco - Wednesday 16 October 2013 to Saturday 19 October 2013
Oman - Monday 14 October 2013 to Saturday 19 October 2013
Palestine - Sunday 13 October 2013 to Saturday 19 October 2013
Qatar - Sunday 13 October 2013 to Sunday 20 October 2013
Saudi Arabia - Thursday 10 October 2013 to Sunday 20 October 2013
Sudan - Saturday 12 October 2013 to Saturday 19 October 2013
Syria - Sunday 13 October 2013 to Saturday 19 October 2013
Tunisia - Tuesday 15 October 2013 to Wednesday 16 October 2013
U.A.E - Saturday 12 October 2013 to Saturday 19 October 2013
Yemen - Sunday 13 October 2013 to Sunday 20 October 2013

Iraq - progress of trade mark applications

News of progress of the examination of trade mark applications at the Trade Mark Office in Iraq.

In December 2010 a report was received that the Trade Mark Office were examining application numbers 44,000 to 45,000. In January 2012 it was reported that the Trade Mark Office were examining a group of applications bearing numbers in the 50,000 range. And then today news that the Trade Mark Office is examining applications in the 52,000 range.

This part of the Empty Quarter feels this is painfully slow progress.  

Iraq - Trade Mark searches

News from good friends Saba & Co that searches at the Trade Mark Office in Iraq are taking up to 6 months to complete.

Saba & Co offer an alternative which is for them to search all the applications they have handled as well as all publications in the Official Gazette from 2004 until now. 

The Thomson Compumark Serion system claims to be able to search all marks published from 1976 to (at the time of typing this post) 30 May 2013.

This part of the Empty Quarter believes that information held by a trade mark office should be readily accessible and that inaccurate, incomplete or delayed search results are not beneficial to consumers or rights holders.

Tunisia - delays at the Trade Mark Office

News that there are significant delays at the Trade Mark Office in Tunisia with registration certificates taking three to four years to be issued after the end of the opposition period.

This part of the Empty Quarter feels that delays are not in the interests of anyone involved in the process of trade mark registration and wonders what can possibly be so difficult about producing a certificate that simply reproduces details which are set out in an application and should be set out in the Trade Mark Office's own systems.

Legalisation of Powers of Attorney in Iraq

The Trade Mark Office in Iraq requires that an original Power of Attorney from the applicant is submitted with the application. The Power of Attorney cannot be from an agent on behalf of the applicant unless the original Power of Attorney from the applicant to the agent is also submitted (see here for earlier post).

The Power of Attorney must be legalised before being submitted to the Trade Mark Office. That involves legalisation to the Iraqi Embassy in the country of execution. The Power of Attorney must then be stamped by the Tax Department in Iraq, the Ministry of Foreign Affairs in Iraq and Ministry of Justice in Iraq all of which can take more than four months. The hint of a silver lining is that there are no additional fees for the late filing of the Power of Attorney.

This part of the Empty Quarter continues to hope that countries will do away with the need for legalisation as it is an unnecessary administrative and financial burden on rights holders which acts as a barrier to entry to the market and delays the processing of applications for marks.

Libya - Trade Mark Office update

Following earlier posts here and here on the delays following the reopening of the Trade Mark Office in Libya news yesterday that the Trade Mark Office is not issuing receipts for new applications due to the volume of applications received.

Qatar Trade Mark Office delays

Further to earlier posts here and here there is more news on the delays at the Qatari Trade Mark Office. 

The Trade Mark Office has recently moved which is leading to further delays in processing and examining applications.  News from a reliable source says that we should expect delays of a year from now for examination of applications filed in 2012 and delay of a year and a half to two years for applications filed in 2013.

IP Panorama for SMEs from WIPO available in Arabic

According to the WIPO website IP Panorama is "The Most Advanced E-learning Content on Intellectual Property for your Business". Available in Arabic here. WIPO go on to say that:

• IP PANORAMA was developed jointly by the Korean Intellectual Property Office (KIPO), the Korea Invention Promotion Association (KIPA), and the World Intellectual Property Organization (WIPO) under a project entitled, ‘The Joint Development of E-learning Content’ from 2004 to 2007.
• IP PANORAMA was designed to help SMEs utilize and manage Intellectual Property (IP) in their business strategy. In the past, most of the IP education materials had a legal orientation, even though businesses had a real need for a business-oriented IP education. IP PANORAMA increases IP-awareness among enterprise sector and a wide range of university students by providing practical knowledge about using IP for business success.
• IP PANORAMA relies on a brand new instructional design strategy based on ‘Storytelling’ along with educational technology. The learning content of each module was designed with a practical story regarding intellectual property. It is informative as well as interesting.
• IP PANORAMA deals with IP issues from a business perspective, especially focusing on the situation of SMEs.

Consisting of 13 modules IP Panorama appears to provide a good introduction to IP to any small or medium sized business.

This part of the Empty Quarter does not know how long the materials have been available in Arabic but welcomes the fact that WIPO have made them available.

Dubai Customs IP Workshop - 18 September 2013

Dubai Customs are seeking participants for their next IP workshop to be held on 18 September 2013. The workshop will focus on trade marks related to electronics and auto spare parts. Only one rights holder per service provider so get in quick.

Staffing at the Trade Mark Office in the UAE

News that there are likely to be further delays at the Trade Mark Office in the United Arab Emirates.  Both the member of staff dealing with appeals and one of the two members of staff dealing with oppositions have resigned. There is now no one dealing with appeals and only person dealing with oppositions. There are existing, significant, delays in dealing with issuing renewal certificates. There is some, small, comfort from the speed with which post-registration transactions are being dealt with.

This part of the Empty Quarter hopes that the Trade Mark Office will be fully staffed soon.

IP Law in Iran back in force

There is news from a reliable source in Iran that the one year extension to the Intellectual Property Law approved by the parliament has been published in the Official Gazette and that the Courts are once again issuing decisions based on the Law. 

Our earlier post here reported that the Intellectual property Law had been suspended as the original five year term for which it had been enacted had come to an end.

Eid Al Fitr 2013

United Arab Emirates
Reports in Gulf News and The National that Federal government offices will be closed from Wednesday 7 August 2013, corresponding to Ramadan 29, and will reopen on the fourth day of the month of Shawal. If Eid Al Fitr begins on Thursday 8 August then 4 Shawal is Sunday 11 August. If Eid Al Fitr begins on Friday 9 August then 4 Shawal is Monday 12 August. A report in Gulf News that the UAE Ministry of Labour has announced that the Eid Al-Fitr holiday for the private sector will begin on the first and second days of Shawal and the private sector will resume work on the 3 Shawwal.  Shawwal will begin on either 8 or 9 August.


Saudi Arabia
News from good friends Kadasa & Partners that the last working day for the government is Thursday 1 August 2013 (bearing in mind the recent change in weekend in Saudi Arabia) and that they will re-open on Tuesday 13 August 2013.

Egypt
News from good friends, Ibrachy & Dermarker that the last working day for the government is Wednesday 7 August 2013. The Egyptian Trade Mark Office will reopen on Monday 12 August 2013.

Libya - Trade Mark Office update

Following earlier posts about the reopening of the Trade Mark Office in Libya (here) news that the flood of applications, search requests and other matters may be taking its toll as the Trade Mark Office is not issuing receipts for new applications due to the volume of applications received

This part of the Empty Quarter hopes that resources can be found to deal with the large influx of new matters as a backlog of work makes for unhappy officials, applicants and agents.

Tunisia - joining the Madrid Protocol

An announcement from WIPO yesterday (22 July 2013) that the Madrid Protocol (1989) will enter into force, with respect to the Republic of Tunisia, on October 16, 2013.

Full text of the announcement here. An always useful summary on the Afro-IP blog here.

This part of the Empty Quarter likes the Madrid Protocol as it can reduce the cost of filing in multiple countries making protection more affordable for many.

Update 30 July 2013: Information notice No. 26/2013 relating the Accession to the Madrid protocol by Tunisia is now available on the WIPO website here. 

IP Law in Iran suspended

News from a reliable source that the Intellectual Property Law in Iran has been suspended.

When the law was enacted five years ago it had a term of five years. That term has now come to an end.  As a result the Courts are not issuing decisions based on the law. A one year extension has been approved by the parliament and is due to be published in the Official Gazette in the next one to two months.

Further, useful, information on Iranian Intellectual Property Law here. 

Saudi Trade Mark Office makes records unavailable

Updated 23 July 2013:

News from a trusted source that the Trade Mark Office in Saudi Arabia is busy scanning all of the marks in its records. This is no bad thing. 

The scanning was originally to have been completed by the beginning of Ramadan but has run over in to Ramadan. 

While the scanning is being done none of the physical records of the registration certificates are available to any of the agents in Saudi Arabia. This is making daily practice exceptionally difficult.

Agents can still obtain printouts from the electronic register for clearance searches.

Original published 30 June 2013.

Saudi Arabia changes weekend to Friday/Saturday

The changes to the weekend in Saudi Arabia have been widely reported. The change takes place this weekend with the official weekend taking three days (Thursday 27 June, Friday 28 June and Saturday 29 June). As is so often the case any deadlines which fall on the weekend will be moved to the next working day (Sunday 30 June). 

Professional firms in Saudi Arabia have been used to working from Saturday to Thursday lunchtime and it will be interesting to see how they amend their work patterns. This part of the Empty Quarter can remember the changes to the weekends in the United Arab Emirates many years ago and wonders how long businesses in Saudi Arabia will take to settle in to a happy routine of having Friday and Saturday off work.

Syria - leaves the Madrid Agreement and amends fees for the Madrid Protocol

The ever informative WIPO mailing list brought news yesterday that notice No. 24/2013 relating to the "Denunciation of the Madrid Agreement: Syrian Arab Republic" is now available on the WIPO website. This follows the announcement last year that Syris is to leave the Madrid Agreement, reported here.

The usefully detailed notice can be found here. A notice was also published last week on changes to the amounts of the Individual Fee for Syria under the Agreement which can be found here.

This part of the Empty Quarter is sorry to see Syria leave the Agreement and can't help feeling that "Denunciation" sounds ever so aggressive.

Saudi Arabia – new requirement of the Administrative Court

The Administrative Court in Saudi Arabia, in which oppositions against trade mark applications must be filed, has a new requirement for non-Saudi companies filing oppositions. A simple copy of the commercial registration certificate of the company filing the opposition must be submitted with the opposition.

Saudi Arabia – Patents - accession to PCT and PLT

A WIPO email alert dated 16 May 2013 announces the accession of Saudi Arabia to the Patent Law Treaty (PLT) - Accession by the Kingdom of Saudi Arabia (PLT Notification No. 36) and the Patent Cooperation Treaty (PCT) - Accession by the Kingdom of Saudi Arabia (PCT Notification No. 203).

More news on this significant change in local practice is expected from a number of sources soon. This part of the Empty Quarter cannot help but wonder when the remaining GCC states and the the GCC Patent Office itself will follow.

Syria – publication of the Official Gazette

With thanks to good friend Tamim Fares at  Karawani Law Firm we know that Official Gazette No. 68 was published on 28 April 2013, that the opposition period is 90 days, ends on 26 July 2013 and that a copy can be downloaded from here: Official Gazette | Issue No. 68

Qatar – Trade Mark Office – slow progress

The Qatari Trade Mark Office continues to show significant delays in processing applications. They are currenlty examing applications with numbers in the early 70,000s and an application with an application number in the region of 78,000 is not expected to be examined for another 12 or more months.

United Arab Emirates – payment of substantive examination fees

The Director of Industrial Property at the Ministry of Economy in the United Arab Emirates has notified all agents that the substantive examination fees for all pending patent applications filed between 2006 and 2007 must be paid by 9 September 2013.  The examination fees are AED7,000 (about US$1,900) and the fee to be paid when responding to each office action is AED5,000 (about US$1,360).

August 2013 public holidays

News of public holidays across the region as they come in:

Iran – 8 August to 10 August

The Holy month of Ramadan is expected to commence on about 9 July 2013 and Eid Al Fitr is expected to commence on about 7 August 2013.

Libya – Trade Mark Office

There is now a regular flow of news of the functioning of the Libyan Trade Mark Office.

The Trade Mark Office resumed work in late March 2013 after two years of inactivity and is now accepting searches, new applications, applications for recordals and is processing previous applications. With thanks to good friends at SMAS the documents to submitted at the time of filing are:

·         A Power of Attorney from the applicant, legalized up to the Consulate of Libya in the country of execution, translated in to Arabic.

·         A certified copy of an extract from the Commercial Register or Articles of Incorporation, legalized up to the Consulate of Libya in the country of execution, translated in to Arabic.

·         10 prints of the trademark.

·         If priority is to be claimed, a certified copy of the priority document issued from a signatory to the Paris Convention.

The Trade Mark Office is following the 8^th Edition of the Nice classification. Products in class 33, alcoholic beverages class 32, and Christmas trees and related products in class 28 will all be refused.  A separate application is required for each class. 

The first Official Gazette (No. 1) was published on 19 May 2013 containing applications filed in October 2008 (applications with number in the region of 15500).  The opposition period is 90 days from publication.  However, in June 2013 there are reports of delays in filing applications due to the significant volume of applications being filed by the local agents.

The part of the Empty Quarter is delighted the Trade Mark Office in Iraq is open and counsels patience to all those seeking to file applications.

BASCAP report on Free Trade Zones

The International Chamber of Commerce Business Action to Stop Counterfeiting and Piracy (BASCAP) has published a very interesting report on the regulation and management of Free Trade Zones. 

A well run Free Zone is a significant asset for a country. A poorly run Free Zone is a great risk to consumers, businesses and governments alike. The part of the Empty Quarter hopes that Free Zones in the region will be subject to just the right amount of regulation to ensure they do not become the focus of illegal trade.

Quick summary here 
Downloaded here 

Payment of annuities by Saudi nationals at the Saudi Arabian Patent Office

News reaches this part of the Empty Quarter that the current practice of the Saudi Arabian Patent Office (not the GCC Patent Office) is that Saudi nationals are not required to pay annuity fees.

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!