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