Tuesday, 22 December 2015

Bahrain - possible official fee increases

Following on from the news (here) of official fee increases due in Kuwait from 21 December 2015, there is news today from good friends Saba & Co that official fees are due to increase in Bahrain, also from 21 December 2015. So far there is no detail on the increases in either country.


Monday, 21 December 2015

Libya - can you renew an expired registration?

There was a flurry of news in October and November about the Libyan Trade Mark Office (see here). News has arrived today by email from Beit Al-Khebra Intellectual Property who are based in Libya which appears to bring some clarity to the question of whether it is possible to renew an expired trade mark registration. The news reads:

Dear Sirs,
Greetings form Beit Al-Khebra Intellectual Property.

We have received several inquiries about what has lately been published by some IP Agents regarding the trademarks Registrar confirmation of the possibility to submit renewal applications in respect of expired trademarks, regardless to their expiry date, until 31 December 2015 and that after said date, all expired trademarks will be treated as cancelled.

In this regard, we would like to clarify the following:

As per article 1257 of the Commercial Act number 23 of the year 2010 which stated "The protection period of a registered trademark is ten years. The registration could be renewed for a similar period or periods according to the applicant during the last year of the protection period. The applicant may submit a renewal application after the expiry date and within a period of 6 months from the date of expiry (grace period). Wherein no application for renewal has been submitted by the applicant, the trademark office shall ex officio cancel the trademark from the register. Where cancellation of registration of a trademark has been duly entered, the trademark shall be re-registered in the name of the original applicant within a period of three years from the date of cancellation according to the law.

Accordingly, we had a meeting with the Registrar to clarify the subject matter and he advised the following:

1. No official decision has been issued in this regard from the Trademark Office. Therefore, all the news in this regard is baseless;
2. Any Trademark owner could at any time renew his trademark (whether expired or not) and pay the renewal fees, but this does not mean that the trademark had been renewed unless a final written decision from the Trademark Office is issued with relation of renewing the trademark;
3. Any trademark owner could at any time submit an application at the Trademark office to obtain official notices regarding the current status of his trademark prior to paying the renewal fees as not to pay the renewal fees for elapsed and cancelled trademarks.

Based on the above, we urge our client to be extra cautious regarding unofficial news in this regard.

As a Libyan IP Agent located in Libya, please rest assured that we will provide you with all the updates from the Trademark Office regarding any decisions concerning the trademarks. Our staff are in direct daily contact with the TMO team and are therefore on top of new decisions or amendments related to the trademark actions.

Should you require further information or clarification, please contact info@khebraip.com.

We would like to take the opportunity to thank you for your collaboration and business and best wishes for a bright and successful year ahead.

With warm regards,
Beit Al-Khebra Intellectual Property (LLC)
Ibn Battuta St., Al-Siahiah | Apt. no. 03, 2nd Fl., Al-Sharif Bldg
P.O. Box: 71005 | Tripoli – Libya
T: +218.21.712.3117 | T: +218.91.315.2731 | F: +218.21.725.7854
Email: info@khebraip.com

Thursday, 26 November 2015

UAE - OSN tackling TV piracy

There are a number of reports of the same case involving action by OSN resulting in the conviction of an individual in the UAE (Al Arabiya, Al Bawaba, Gulf News).

The defendant was convicted of selling IP888 TV services and sentenced to three months in prison, a fine of DHs50,000 followed by deportation from the UAE. The reports refer to 213 actions across the GCC and Egypt and specifically refer to an increase in the use of IP TV services provided by UKTV Abroad, IP888 TV, Primetimetv.TV, Volka TV, Royal IPTV, GIPTV and Expat TV.

This part of the Empty Quarter feels that these reports are useful warnings to other sellers of the fact that OSN are active and targeting sellers of specific services.

Wednesday, 25 November 2015

Syria - Agreement with North Korea covers intellectual property

News from Syria of the signing by the Culture Ministry of an agreement with the Democratic People’s Republic of Korea (North Korea).

The Syrian Radio & TV Online webiste (here) reports:

The Culture Ministry signed on Wednesday with the Embassy of the Democratic People’s Republic of Korea (DPRK) the executive program for cultural cooperation for the years 2015, 2016 and 2017.

The program includes cooperation in the fields of cinema, theatre, music, plastic arts, copyrights, intellectual property, culture days, the Higher Institute of Music and the Higher Institute of Dramatic Arts.

Cooperation in cinema will include holding film weeks in both countries and exchanging movie experts and participation in film festivals.

In theatre, the program will involve cooperation in exchanging visits of artistic bands and participation in music and theatre festivals, in addition to supporting cooperation between the Higher Institute of Dramatic Arts in Damascus and its counterpart in the DPRK.

The two sides will exchange expertise and visits and hold exhibitions in painting, sculpturing and publications in the framework of cooperation in the arts field, according to the program.

As for copyrights cooperation, both sides will encourage protection of literary and artistic groups and copyrights and intellectual property rights, especially at the international forums.

The program also provides for cooperation in the music field where both sides cooperate in teaching music, exchanging visits and holding culture days in both countries.

Culture Minister Issam Khalil said in a press statement following the singing that this program is part of activating cooperation between Syria and Democratic Korea as both countries face continuous attempts aimed at undermining their independent political decision and sovereignty.

In turn, Ambassador Jang Myong Ho of DPRK said the program shows that bilateral relationship between the two countries is developing in all fields.

UAE - launch of US$544 million Innovation Fund

Following on from the various events and announcements (here) relating to the Year of Innovation there are now many reports of a very substantial fund for innovation.

Sheikh Mohammed launches $544M innovation fund announces Al Bawaba (here)
Sheikh Mohammed sets up $544m innovation fund announces Gulf Digital News (here)
Dh2 billion fund to finance innovation projects launched in Dubai announces The National (here)

All the these relate to the Sheikh Mohammed bin Rashid Al Maktoum Fund to Finance Innovation.
Interestingly, all three report that "applicants need to have registered their project as intellectual property and the initial stage of the project must already be established, the Ministry of Finance said.

It will prioritise projects that contribute to the UAE Vision 2021 and in the seven sectors named in the national innovation strategy. They are: renewable energy, transport, education, health, technology, water and space. The pilot phase of the initiative will be launched during the first half of next year followed by the official launch of the Fund’s operations in the second half of 2016. A small fee will be charged for all applications, “and the amount will depend on each individual request”. All projects will be evaluated by a “group of experts in respective areas” for their “effectiveness and practicality”."

Tuesday, 24 November 2015

Egypt - Thomson Reuters partners with Presidential Council for Education and Scientific Research

A report on Zawya (part of Thomson Reuters) (here) of the partnership between Thomson Reuters and the Presidential Council for Education and Scientific Research in Egypt to 

"enhance its Knowledge Bank, to be launched in January 2016, to empower its scientists and prepare a new generation scholars with the needed tools and advisement to advance their research and increase global impact.

"This strategic partnership with Thomson Reuters is part of the Egyptian Knowledge Bank Project aimed at providing all Egyptian citizens with access to quality research and education materials," said Secretary General Secretariat of the Specialized Presidential Council for Education and Research, Tarek Shawki, PhD. "This agreement will provide all Egyptians with access to world-class publications and offer critical tools they need to excel in their education and research. The Presidential Council will also explore a wider range of Thomson Reuters ' products and solutions in the next four years."

Thomson Reuters will work with the Council to support the nation's research efforts by providing guidance through on going workshops and key tools, including Web of Science, InCites, Journal Citation Reports and Thomson Innovation to enable the nation's scientists and research institutions to successfully navigate the lifecycle of innovation, from discovery to protection to commercialization."

UAE - DDED seizes 353,000 fake items worth Dh12 million from 157 flats and warehouses during Q3 2015

A report in the Khaleej Times (here) that the DDED seized a total of 353,000 items worth Dh12 million from 157 flats and warehouses during the third quarter of 2015 according to the Ibrahim Behzad, the director of intellectual property protection at the Dubai Department of Economic Development (DDED)

There were a staggering 1,363 violations following 1,999 inspection visits across the city resulting in detentions of perfumes, cosmetics, vehicle spare parts, mobile phones, leather bags, and watches. 

UAE - A Year of Innovation, an Innovation Week, an Innovation Index and a lot of money to be invested in innovation

This part of the Empty Quarter has long admired the ability of the United Arab Emirates, and Dubai in particular, to get hold of an idea and make it work. The evidence of this for all to see.

This year is officially the Year of Innovation, in which not much had appeared to have been happening, until this the Innovation Week.

An investment of Dhs300 billion

As with many things UAE we shall start with the biggest announcement from President His Highness Sheikh Khalifa bin Zayed Al Nahyan, of the adoption of the Emirates Science, Technology and Innovation Higher Policy which includes 100 national initiatives in education, health, energy, transportation, space and water. Shaikh Mohammed bin Rashid Al Maktoum said: "Planning a higher policy for the UAE in the fields of science, technology and innovation that includes scientific initiatives, legislative recommendations and clear financial investment is a strategic decision that aims to change the national economy equation to drive it away from depending on limited oil resources. Our aim, as my brother His Highness Shaikh Mohammed bin Zayed Al Nahyan, Crown Prince of Abu Dhabi and Deputy Supreme Commander of the UAE Armed Forces, has said, "is to celebrate the last oil barrel we export because we will be prepared for that day when it comes."

The plan foresees an investment of over Dhs300 billion to build a vibrant knowledge economy in the UAE.

There are full reports in the Khaleej Times (here), Emirates 24/7 (here), Gulf Today (here), Gulf News (here), and Al Bawaba (here)

Importantly for this part of the Empty Quarter the Policy "includes new legislative frameworks to protect intellectual property and copyrights, attract scientists and researchers to the UAE's academic and research institutions and facilitate the easy movement of advanced scientific equipment and resources into the UAE."

The Innovation Week

Details on the UAE Innovates website (here) of the week long festival of innovation events.

Including, belatedly, details of the Intellectual Property & Technology Transfer Symposium hosted by the United Arab Emirates University details of which can be found here.

Top ranked in the Innovation Index

The Khaleej Times reports here that Dubai ranked top in the latest innovation index among Middle East countries and 16th globally. The Dubai Chamber of Commerce and Industry has created with PwC the Dubai Innovation Index as part of the Year of Innovation Innovation Week Of particular interest are the coments that intellectual property emerged as one area for improvement and that professional services turned out to be one of the least innovative sectors in Dubai.

UAE - DDED launches Advisory Board

Reports (Gulf News, Al Bawaba) of the creation of the Intellectual Property Protection Advisory Board by the Dubai Department of Economic Development (the DDED). The Board is to be the voice of rights holders to the DDED. It will be headed by a representative of the DDED and will have members from each industry sector. The Board is to meet every quarter and listen to the feedback and recommendations from the industry representatives on negative practices, if any, and devise strategies to combat them. It will also be involved in sharing of knowledge and best practices in IP protection.

This part of the Empty Quarter understands that the Gulf Brand Protection Group will be actively involved in the Board.

UAE - Dubai Customs detains 101 shipments in first 9 months of 2015

A report in the Khaleej Times (here) this week that Dubai Customs reported that in the first 9 months of this year they had detained 101 shipments of counterfeit goods.

Further, official figures show that Dubai Customs made 756 seizures of IPR infringing goods between 2012 and 2014 and that from early 2012 to the end of September 2015, Dubai Customs carried out 110 awareness seminars, attended by 4,600 people, and 16 workshops on methods for detection of counterfeits, with 446 participants from various government agencies tasked with fighting counterfeits.

Monday, 23 November 2015

UAE - Trade Mark Office - on-line system to go live from Sunday 6 December 2015

The Trade Mark Office has today announced by email to all agents that the on-line filing system will go live on 6 December 2015. The system had been tested by all agents from September 2015

The announcement from the Trade Mark Office reads (translated from Arabic):

We would like to let you know that starting Sunday 6 December 2015 we will launch the following electronic services:

1. Filing an application to register a trade mark.
2. Filing an application to renew trade mark registration.

This will be through the following link: https://services.economy.ae/m through which you can register a new username.

Please note that after submitting your application through electronic services, the forms of these services should be sent through regular mail to the office of the ministry in Abu Dhabi on P.O box 901 in the name of Trade Marks Department.

Please note that all the Customer Service Centres will stop receiving these application starting from the above mentioned date.

Should you have any queries please contact:
Mr. Mohammad Rayyan
Email: : Exceed_Mohammad@economy.ae
Tel: 043141647

Mr. Mahdi Masoud
Email: : mmahrous@economy.ae
Tel: 026131434


The announcement is interesting for a number of reasons. The on-line system is limited to filing the application to renew or register the mark. All other parts of the process will continue to be handled in the usual way without the on-line system (i.e. by email and paper). Paper copies of the application file must be submitted by regular post to the Trade Mark Office in Abu Dhabi and neither the main office or the branch in Abu Dhabi will accept paper applications or the paper files (the risk of the paper files going missing is notable). There is no mention of how payment of official fees can be made.  

This part of the Empty Quarter feels that a cynic might ask if the sole benefit of the new system is that it simply transfers the burden of data entry from the Trade Mark Office to the local agent. To which a response might be that accuracy of records is vital and perhaps the local agents can assist the Trade Mark Office in achieving that. There will be further developments in the coming weeks.

Thursday, 19 November 2015

Arab Ministers of Justice meeting to include Intellectual Property

News from the Kuwait News Agency (here) of a meeting in Cairo on 18 and 19 November 2015 of the Arab Justice Ministers. Among many other issues the report says that the Ministers will consider unification of Arab legislation for protection of intellectual property.

Wednesday, 18 November 2015

Jordan - DealMakers 2015 event

News of the DealMakers 2015 event hosted in Amman, Jordan on Friday 20 November 2015 by Endeavour Jordan here.

The event has a numbner of workshops - two of which are of particular interest - one on Innovation through Intellectual Property and a second on Navigating the Legal Landscape.

Kuwait - 8th International Invention Fair in the Middle East - 16 to 19 November 2015

News of the 8th International Invention Fair in the Middle East held in Kuwait.

The main website for the event is here and various news reports are here, here, here, here and here.

Tuesday, 17 November 2015

Kuwait - possible increase in official fees in December 2015 (Chapter 2)

Further to the earlier post here there is now more news on the World Trademark Review blog here

Iran - University of Tehran workshop on translations covers intellectual property rights and obligations

News reaches this part of the Empty Quarter of a workshop at the University of Tehran held by the Tehran Translators and Interpreters’ Association in collaboration with the Faculty of Foreign Languages and Literature of the University on 9 November 2015.

Among other topics the workshop covered intellectual property rights. Details on the Mehr News Agency website here.

Monday, 16 November 2015

Kuwait - possible increase in official fees in December 2015

News from good friends Dr. Khaled Al YaqoutLaw Firm & Legal Consultation that they have been informed that official fees for most intellectual property transactions will significantly increase in Kuwait from 21 December 2015.

Their email newsletter reads:
Dear Sirs,

We have been notified unofficially that effective from December 21, 2015; the official fees of most intellectual property transactions will be substantially increased. The fees of several IP transactions will be doubled 23 times or more. We have confirmed news that the new official fees in Kuwait will apply even to applications filed prior to December 21, 2015. If this proves to be true, it will mean that the fees for stages such as publication and registration will be doubled 23 times i.e. US$1586.00 for publication in the official Gazette and registration of one trademark in one class. We have not yet received the official notice of increase which is expected to be issued in the official gazette on 21 December, 2015

If you have any questions or need any clarification regarding the new IP fees in Kuwait, please do not hesitate to contact us.

Sincerely yours,
Yasser Megahed
Patent and Trademark Attorney
Head of Intellectual Property Division
Dr. Khaled Al Yaqout Law Firm & Legal Consultation
Abdulazez Al Saqer St., Al Khaled tower
12th Floor, Beside Kuwait Airways Building
Al Qubla, Kuwait
P.O. Box: 12724 Al-Shamyia, Postal Code: 71658 Kuwait.
Tel.: +965 22400430/1/2
Fax: +965 22400433
Email: yasser@dralyaqoutlawfirm.com
URL: http://www.dralyaqoutlawfirm.com

So far this news does not appear to have been reported elsewhere and so we wait for confirmation of the new fees.

Sunday, 15 November 2015

Qatar - copyright enforcement

News (here) in The Peninsula newspaper of an action taken by the Ministry of Economy and Commerce in Qatar against an operation copying CDs and DVDs. 

Saturday, 14 November 2015

Sudan - WIPO - PCT - National Phase – National Chapter - update

News from WIPO yesterday that the National Chapter of the National Phase of the PCT Applicant's guide for Sudan has been updated. The updated version can be found here

Friday, 13 November 2015

UK Government survey on EU Free Trade Agreement negotiations with Morocco and Tunisia

News from the UK IPO that the European Commission is planning to launch free trade agreement negotiations with Morocco and Tunisia in the near future and that the UK Government is conducting a business survey about existing barriers to trade in these countries. They ask for responses to the survey by Friday 27th November. The survey is here.

This part of the Empty Quarter wanted to find out more about the Free Trade Agreement negotiations themselves, did some searching and found these useful summaries from the European Commission for Morocco and Tunisia.

Apparently negotiations for a "Deep and Comprehensive Free Trade Agreement" (DCFTA) between the EU and Morocco were launched on 1st March 2013. Four or five negotiating rounds have taken place. The DCFTA is intended to extend significantly beyond the scope of the existing Association Agreement to include trade in services, government procurement, competition, intellectual property rights, investment protection and the gradual integration of the Moroccan economy into the EU single market. The main objective of the DCFTA is to bring Moroccan legislation closer to EU legislation in trade-related areas.

Discussions with Tunisia do not seem to be so advanced.

the Oath - the 2015 Awards

The shortlists have been announced for "the Oath Middle East Legal Awards 2015" (here).

The short list for the Intellectual Property Team Of The Year is:

Al Tamimi & Company
Baker & McKenzie
BSA Ahmad Bin Hezeem & Associates
Clyde & Co
Dentons
Eversheds
Rouse

The winner will be announced at the gala dinner on 25 November 2015 at the Conrad, Dubai.

Iran - WIPO domain name decision - amundi.ir

News from WIPO (here) of the decision to order the transfer of the marksandspencer.ir domain from a local registrant to Marks and Spencer plc.

The local registrant did not respond in the proceedings.

The decision is of particular interest because it appears that the registrant has previously registered domains of other well known businesses. The relevant part of the decision reads:

"As an additional consideration, the Panel also notes that Respondent has been found to have registered and/or used domain names in bad faith in several other cases under the Policy which suggests a pattern of conduct on the part of Respondent (see: Tetra Laval Holdings & Finance S.A. v. Mohammed Ali Mokhtari, WIPO Case No. DIR2010-0007(), and Petroleo Brasiliero S.A. - Petrobas v. Mohammed Ali Mokhtari, WIPO Case No. DIR2013-0004 ())."

UAE - National Day and Martyrs' Day holidays

The public sector holiday starts on Tuesday 1 December 2015. Government departments will re-open on Sunday 6 December 2015.

The private sector holiday is Wednesday 2 December and Thursday 3 December 2015. 

Saudi Arabia - online filing of trade mark renewals and recordals

News from good friends Saba & Co in their October 2015 newsletter (here) about online filing of trade mark renewals and recordals in Saudi Arabia.

They say "Trademark renewals are expected to be filed online in Saudi Arabia by the end of the year.

There have been a number of unconfirmed reports that the renewal of trademarks will only be filed online. The move to electronic filing of trademark registrations back in late 2013 saw a substantial increase in publication fees. Accordingly, we expect that this time around as well that the move to e-filing will be coupled with an increase in publication fees related to the trademark renewals.

The online filing of trademark recordals is expected to come into force next year. As such, an increase in the publication fees of the recordal of assignments, licenses and mergers is expected. We do not foresee a change in the fees for the recordal of change of name and address, however.

As per the Saudi trademark law a trademark may be renewed up to one Hijri year (approx. 354 days) before the renewal due date. Accordingly we recommend that you apply for any renewals that fall due before the end of 2016 ahead of the expected increase in publication fees.

Should you have any questions, or require any additional information, please contact us at news@sabaip.com"

Libya - lots of updates on the functioning of the Trade Mark Office

Further to earlier posts here, here, and here there is a lot of news about the functioning of the Trade Mark Office in Libya.

Good friends Abdelhadi - Intellectual Property reported in a newsletter in October 2015 that "the Libyan Trademark Office is now fully operational. The Libyan TMO is currently accepting the filing of new trademark applications, renewal applications, assignments and amendment recordals. Furthermore, the TMO has proceeded with the issuance of 500 trademark registration certificates thus far."

Good friends Saba reported in their October newsletter (here) that "The Trademark Office in Libya began issuing trademark registration certificates for applications in the 5000 series after years of civil unrest in the country. In light of this new development, we will be reviewing the files for all pending applications awaiting certificates and will be following-up on their status with the TMO."

Good friends Clyde & Co report in their October 2015 IP Regional update (here) that "The Libyan Trade Mark Office has announced that it will resume issuing trade mark registration certificates for the first time since 2003.  The renewal due date will fall 10 years from date of filing which means that, for many applications, the renewal will fall due at the same time as (or shortly after) the certificate of registration is issued.  "We understand that the officials are currently issuing certificates for applications numbered around 5,500, which covers filings around the year 2006. Accordingly, there is a significant backlog to be cleared, but this is still welcome news for rights holders who have an interest in Libya. It is also important to ensure that the renewals are carried out to prevent a loss of rights." Jon Parker, Head of Trade Marks

NJQ reported (here) "This is to confirm that the Libyan Trademark Office (LTMO) has started issuing registration certificates as well as accepting renewal applications since 1 October 2015. Accordingly, any applications that have matured to registration (published and no oppositions raised) and that are still valid, a registration certificate will issue once payment of the official fees of LYD151 approximately USD111) has been made. As for expired applications, it is possible to issue renewal certificates after paying the normal renewal fee of LYD181 (approximately USD133) per application."

AGIP reported in their October newsletter (here) that "The Libyan Trademark Office announced that it has started issuing registration certificates for trademark applications for the first time since 2003. According to the Libyan Trademark Office, the renewal due date is 10 years as from the filing date, and therefore all the registration certificates will be due for renewal at the time of issuance. Obtaining such a certificate is important because it is an evidence that a particular trademark has been appropriately registered by the Libyan Trademark Office. It is also an evidence that the trademark registration process was successfully completed, which is considered as recognition by the Libyan authorities of the growing importance of trademark protection in Libya."

Egypt - trade mark enforcement by Ministry of Supply and Internal Trade

News in brief from AGIP that the Ministry of Supply and Internal Trade has launched anew consumer protection initiative relying checking bar codes. The AGIP report is available on their website here.

UAE - Abu Dhabi Police seize 30,000 fake designer goods in raid on three apartments

News reaches this part of the Empty Quarter of a report of action in the The National from 7 November 2015 (here) in Abu Dhabi by the Police to seize counterfeit products from a residential apartment.


Thursday, 12 November 2015

EU Free Trade Agreement negotiations with Southern Mediteranean countries

News reaches, in a roundabout way, this part of the Empty Quarter of ongoing efforts by the European Commission to strengthen ties with those countries that border the Mediterranean.

There is an interesting portal to these efforts on the European Commission Euro-Mediterranean partnership webpage here. And there is a up to date summary of FTA and other trade negotiations in a PDF document here (which covers other countries as well). These are of interest because they lead to "Deep and Comprehensive Free Trade Agreements" which cover Intellectual Property.

UAE - 16/17 November 2015 - The 5th Regional Intellectual Property conference in the Middle East and North Africa - Updated

The 5th Regional Intellectual Property Crime Conference in the Middle East and Africa takes place at the Armani Hotel in the Burj Khalifah, Dubai on 16 and 17 November 2015.  The event is organised by the Emirates IP Association (www.eipa.ae) and Interpol in cooperation with Dubai Police, Dubai Customs and Underwriters Laboratories Inc. 

A draft agenda seen by this part of the Empty Quarter refers to speakers from Dubai Police, Dubai Customs, EIPA, Interpol, and UL as well as representatives from China, Japan, Qatar, Hong Kong, the Los Angeles Police, WIPO, the League of Arab States, the Khalifa Student Empowerment Program, Microsoft Gulf, The Walt Disney Company, the Abu Dhabi Quality and Conformity Council, a University Professor and, the very well known, Hoda Barakat.  

There is a press report on the Gulf Today website here.

There is a report from the first day on the Gulf Today website here

There is a report from the second day on the Gulf Today website here

Wednesday, 28 October 2015

GCC Trade Mark Law - an authoritative summary of the current situation

News reaches this part of the Empty Quarter of the publication of an authoritative summary of the current situation with the GCC Trade Mark Law by good friends Clyde & Co. The summary can be found on their website here and a downloadable pdf from here. For those who cannot access the site, Clyde & Co report the following:

When will the GCC Trade Mark Law be implemented in member states? Is further legislation required prior to implementation? Are member states planning local modifications to the Law?

Following the publication of the Trade Mark Law of the Gulf Cooperation Council (GCC) States in 2013 (the GCC Trade Mark Law), attention has turned to the implementation of this Law, in particular when it will come into force.

This article examines this question, within the framework of the GCC legislative system. In particular, we consider when the GCC Trade Mark Law may come into force in each of the GCC states, and the extent to which it will still be necessary to look at national legislation in order to confirm the position in each GCC state.


A short history of the GCC Trade Mark Law

The harmonisation of intellectual property and other laws has been a long-standing project for the six GCC states of Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates, with a GCC Patent Law being in place since 1992 and a GCC Customs Law being in place since 2003.

In the context of trade marks, the concept of a harmonised trade mark law which applies across the GCC states dates back to the 1980s. In more recent times, a draft unified GCC Trade Mark Law was published in 2006 in the GCC Official Gazette, although this did not proceed to implementation. Then, in 2013, a further revised version of a draft GCC Trade Mark Law was published which has led to further work being undertaken with a view to bringing the Law into force.

Legislation in the GCC States

The implementation of legislation on a regional basis requires an agreed structure between the relevant sovereign states to bring the legislation into force in each jurisdiction.

In the European Union (EU), this result is achieved either through a Regulation (which is self-executing and implemented automatically in each EU member state) or through a Directive (which directs the EU member states to implement the terms of the Directive into national law).

The implementation of legislation on a GCC-wide basis is similar to the EU concept of Directives. In the case of the GCC Trade Mark Law, the Supreme Council of the GCC (the highest decision-making body of the GCC) issued a Resolution during the 33rd GCC Session held in December 2012 requiring member states to implement the GCC Trade Mark Law into their respective national laws "within a period of sixth months as from the date on which the Commercial Co-operation Committee approves the Implementing Regulations of the [Trade Mark] Law" (the Implementing Regulations).

The need for Implementing Regulations to be prepared is set out in Article 52 of the GCC Trade Mark Law itself, which states that the Commercial Co-operation Committee (a division of the GCC General Secretariat) is responsible for issuing the Implementing Regulations.

Current status

At present, it appears that we are reaching the final stage of the Implementing Regulations being drafted. The Implementing Regulations may well be ready for publication in early 2016.

It will then be necessary to refer to the national law of each GCC state in order to confirm when the GCC Trade Mark Law will come into effect in that jurisdiction, and in what form. At present, the position is as follows:
Bahrain - Law No. 6 of 2014 (issued on 17 February 2014) ratifies the GCC Trade Mark Law, and provides that the provisions of the GCC Trade Mark Law will come into force in Bahrain six months after the issuance of the Implementing Regulations. At the same time, the current Trade Mark Law in Bahrain (Law No. 11 of 2006) will be repealed as from the date on which the GCC Trade Mark Law comes into force.

Accordingly, the GCC Trade Mark Law will come into force automatically in Bahrain, without amendment, six months after the Implementing Regulations are issued.
Kuwait - Law No. 13 of 2015 (issued on 11 March 2015) ratifies the GCC Trade Mark Law in Kuwait. Law No. of 13 of 2015 itself is expressed to come into force immediately, with any provisions of current legislation which contradict the GCC Trade Mark Law being repealed. However, the Law also envisages that the Minister of Trade and Industry will issue implementing regulations in accordance with the provisions of the GCC Trade Mark Law.

We therefore anticipate that, once the Implementing Regulations have been published in the GCC Official Gazette, the Minister of Trade and Industry will issue corresponding implementing regulations at a national level in order to bring the GCC Trade Mark Law into force in Kuwait within six months.

It is also worth noting that Law No. 13 of 2015 also anticipates the payment of official fees and fines under the GCC Trade Mark Law in local currency (Kuwait dinars) rather than in Saudi riyals (as set out in the GCC Trade Mark Law).
Qatar - Law No. 7 of 2014 (issued on 8 June 2014) provides that the GCC Trade Mark Law will automatically become effective in Qatar, six months after the Implementing Regulations. 

In addition, Law No. 7 of 2014 repeals Law No. 18 of 2007 (which ratified the previous version of the GCC Trade Mark Law from 2006). The Law also states that provisions that contravene the current version of the GCC Trade Mark Law are repealed, although no specific mention is made of the Law No. 9 of 2002 which deals with trade marks, trade names, geographical indications and industrial designs.

It therefore remains to be seen whether Qatar will at some stage repeal specific provisions of Law No. 9 of 2002 in order to avoid potential disputes as to whether or not a provision has been repealed on the basis that it contravenes the provisions of the GCC Trade Mark Law or whether it is still in force.

Interestingly, Law No. 7 of 2014 attaches a copy of the GCC Trade Mark Law, which differs to the position in Bahrain and Kuwait where the implementing laws refer to the text of the GCC Trade Mark Law as published in the GCC Official Gazette. In practice, the result is the same (all countries have adopted the same version of the GCC Trade Law), but the mechanism used is slightly different.
Saudi Arabia - Royal Decree No. M/94 (issued on 23 May 2014) states that the Cabinet agrees to ratify the GCC Trade Mark Law and that a royal decree has been drafted (but not published) to complete this ratification process.

Royal Decree No. M/94 does not set out when the GCC Trade Mark Law will be implemented in Saudi Arabia, whether it will be implemented without amendment or how the implementation of the GCC Trade Mark Law in Saudi Arabia will affect any existing conflicting Saudi laws. In addition, no mention is made of repealing Saudi Arabia’s current Trade Mark Law.

We therefore anticipate that further legislation will be enacted in Saudi Arabia in due course in order to enable the GCC Trade Mark Law to come into force and to repeal the current Saudi Trade Mark Law.
Oman / the UAE - At present, neither Oman nor the UAE have published any legislation with regard to the 2013 version of the GCC Trade Mark Law. It therefore remains to be seen how or when the GCC Trade Mark Law will be implemented in each of these states.

Summary

At present, it appears that the Implementing Regulations may be published in early 2016. If this is the case, then the GCC Trade Mark Law should come into force six months later, in the second half of the year.

However, the flexibility of the GCC legislative system means that the timing of the implementation of the GCC Trade Mark Law in each of the GCC states may vary, and there may be some local modifications in the text of the Law as shown by the table below.


STATE
RATIFIED
FURTHER LEGISLATION REQUIRED BEFORE IMPLEMENTATION?
ANY LOCAL MODIFICATIONS?
Bahrain
Yes
No
No
Kuwait
Yes
Yes
[Local implementing regulations to be published]
Yes
[Minor changes allowing local currency to be used]
Oman
No
Yes
[Local legislation pending]
To be confirmed
[Local legislation pending]
Qatar
Yes
No
No
Saudi Arabia
No
Yes
[Further decree required]
To be confirmed
[Once further decree published]
UAE
No
Yes
[Local legislation pending]
To be confirmed
[Local legislation pending]

With further legislation pending in each of Oman, Saudi Arabia and the UAE, it is not yet possible to assess whether there will be any significant local variations to the GCC Trade Mark Law as it applies in each of these states. However, it is clear already that it will not be possible to rely on the version of GCC Trade Mark Law as published in the GCC Official Gazette in order to confirm the position of each of the GCC states, without looking at national legislation to identify any variations which apply at a country level.

Tuesday, 6 October 2015

UAE - Hijri new year holiday

News reaches this part of the Empty Quarter that the public sector holiday will be on Thursday 15 October 2015 for Hijri new year. This confirms the news circulated back in June and reported on the local press (here).

Thursday, 1 October 2015

UAE - Customs event

News of a major event in Dubai at the end of October 2015. The Global Trade Development Week event is the 2nd Global Customs & Trade Facilitation Summit. Of interest to this part of the Empty Quarter is the 3rd interactive panel discussion on Thursday 29 October on "Tackling Global Illicit Trade and Protecting Intellectual Property Rights (IPR): Building Collaborative and Consultative
Partnerships between Private Sector, Enforcement Agencies, Customs Authorities and International Organizations".

There are some interesting and challenging current issues which may or may not be discussed at the event.  

GCC Trade Mark Law - implementing regulations

News from AGIP (here) that the implementing regulations of the GCC Trade Mark Law have been approved by the Commercial Cooperation Committee of the GCC and will become effective in December 2015.

More news will follow as it reaches this part of the Empty Quarter, although this article from Arab News from May 2015 refers to discussions taking place on a number of laws, including the Trade Mark law.

Thursday, 24 September 2015

Jordan - Standards and Metrology Organisation Law amended

News from good friends Saba & Co in their September 2015 bulletin (here) of amendments to the Standards and Metrology Organisation Law 

Iran - enforcement

There is a summary of enforcement options in Iran from good friends Saba & Co in their September 2015 bulletin here.

Global Innovation Index 2015

In a notice (here) on 17 September 2015 WIPO released the Global Innovation Index 2015. The WIPO website page for the GII is here while the main GII page is here. The WIPO page states:

The Global Innovation Index (GII) ranks the innovation performance of 141 countries and economies around the world, based on 79 indicators. The GII is co-published by WIPO, Cornell University and INSEAD.

The GII 2015 explores the impact of innovation-oriented policies on economic growth and development. High-income and developing countries alike are seeking innovation-driven growth through different strategies. Some countries are successfully improving their innovation capacity, while others still struggle.

The main GII website allows the full report to be downloaded and read at your leisure (from here). The infographics page (here) is brightly coloured and provides lots of easily read information - not least of which are honourable mentions for Saudi Arabia (coming in third overall as a leader in innovation in the Northern Africa and Western Asia region) and the United Arab Emirates (as the leader in cluster developments).

The rankings page (here) allows the reader to filter by region and sort by each part of the report (covering everything from Institutions to School Life Expectancy).

There is comment here from Gulf News.

Tuesday, 15 September 2015

UAE - Trade Mark Office - trial of on line filing and renewals

News reaches this part of the Empty Quarter of an announcement yesterday by the Trade Mark Office of the trial of on line trade mark filing and trade mark renewal. The service is accessed through the Ministry of Economy website here or here.

There is a trial period from 13 September 2015 to 19 September 2015. There is no news of when the service might go live or when other services may be added. 

This part of the Empty Quarter is delighted by this announcement and holds hope in his heart that it heralds a new era of the opening up of the Trade Mark Office so that information is readily accessible by all as it is in so many jurisdictions around the world.

Monday, 14 September 2015

Lebanon - WTH Mulford to close

Sad news has reached this part of the Empty Quarter that Mr David Meshaka passed away on 23 August 2015. Our condolences go to his family and colleagues.  Following this sad news we have heard that the firm, WTH Mulford, will close in its current form and then arise phoenix like again under the same name. While the news is currently not clear, it appears that existing prosecution matters will be completed and the certificates sent out. However, the business is not accepting any new instructions.  All those with matters currently with WTH Mulford should contact them for further news and advice.

Wednesday, 9 September 2015

Saudi Arabia - possible increase to official fees for publication of trade mark renewals and assignments

News from NJQ:

"Expected Increase in the Official Publication Fees

It is expected that the official fees for the publication of renewals and recordal of assignments will be increased from 15 October 2015.

The old fees of said publication of assignments were SAR500 and for renewals SAR300; the new fees will become SAR3000 for both.

We recommend applying for any renewals and assignments as soon as possible to avoid the new increased fees.

If you have any questions, please contact us at saudi-arabia@qumsieh.com."


Further news from good friends Kadasa & Partners that there has been no official announcement but the rumours are that an increase will be announced when renewals become available through the on-line system, but that the amounts are still under discussion.


And news in the September bulletin from good friends Saba & Co here

WIPO Patentscope database now available in Arabic

News (here) from WIPO that the Patentscope database (here) is available to search in Arabic (here).

The WIPO website says that "The PATENTSCOPE database provides access to international Patent Cooperation Treaty (PCT) applications in full text format on the day of publication, as well as to patent documents of participating national and regional patent offices. The information may be searched by entering keywords, names of applicants, international patent classification and many other search criteria in multiple languages."


The news item says" The PATENTSCOPE search system is now available in Arabic in addition to the nine existing languages. It is now possible to do the following exclusively in Arabic:
Carry out searches
Browse search results
Log into your user account
Browse help and supporting pages

More advanced search features (e.g. stemming) will gradually become available in Arabic.
"

Wow, says this part of the Empty Quarter, that is a lot of really useful information in Arabic for inventors in the region.

Tuesday, 8 September 2015

Tunisia - Decree No. 2015-303 on trade marks

News hot of the press from WIPO today that Decree No 2015-303 has been added to the WIPO Lex database (in Arabic and French). The notice reads:

The Decree No. 2015-303 of June 1, 2015, establishing the Procedures for the Registration of and Opposition to the Registration of Trademarks and Service Marks, as well as the Procedures concerning Recording in the National Register of Marks came into force on June 9, 2015, and repealed Decree No. 2001-1603 of July 11, 2001.

The Decree introduces the following modifications:

(i) introduction of electronic filing of applications for the registration of trademarks;
(ii) setting out of provisions governing the trademark registration through the Madrid Protocol;
(iii) extension during the opposition period of the time for the applicant to submit observations from 45 days to 2 months from the date of notification of the opposition;
(iv) fixation of a maximum period of 8 months from the date of submission of observations for the applicant and the opponent to attempt conciliation in the trademark opposition;
(v) extension to 2 months from 1 month of the period during which the opponent may furnish proof of the use of the trademarks upon which opposition has been based; and
(vi) definition of a period of 2 months for the applicant to submit the missing documents to request recording of a change of names, addresses, ownership, assignment, etc., in the National Register of Marks.


UPDATE

Here is an update from good friends Spoor & Fisher

Tunisia – Procedural changes dealing with trade mark applications and oppositions
Tunisia, a country that recently joined the Madrid Protocol, has made certain procedural changes to its trade mark law. These changes affect not only trade mark applications, but also trade mark oppositions, where an EU-style conciliation process exists. These changes are contained in a new decree, Decree No. 2015-303, which has replaced Decree No. 2001-1603.
The following changes have been brought about:

  • There is provision for the electronic filing of trade mark applications, although we understand that such filings are not yet possible.
  • There are provisions dealing with trade mark registration through the Madrid Protocol.
  • The term within which the trade mark applicant can file observations to a trade mark opposition has been increased from 45 days to two months from the date of notification of the opposition.
  • There is now an eight-month term from the date of submission of the observations within which the parties can seek conciliation of the opposition.
  • The period within which an opponent may file proof of use of the trade mark on which the opposition is based is increased from one month to two months.
  • There is now a two-month term for the filing of any documentation that may be required in order to support transactions such as a change of name, a change of address, or an assignment.

Eid Al Adha holidays 2015

News from good friends Kadasa & Partners that the public sector will be closed in Saudi Arabia from Friday 18 September 2015 to Monday 28 September 2015, returning to work on Tuesday 29 September 2015. These closures will affect the Saudi Trade Mark and Patent offices as well as the GCC Patent Office.

The UAE government has announced the Eid holidays will be 23/24/25 September 2015 for the private sector and 23/24/25/26 September 2015 for the public sector. 


News from good friends Abdelhadi in Egypt that their firm and the government will be closed from Tuesday 22 September to Saturday 26 September 2015 and all deadlines falling with that period will be deferred to next working day, Sunday 27 September 2015.

News from good friends Deris in Turkey that their office will be closed on Wednesday 23, Thursday 24 and Friday 25 September for the holiday. They do not specifically state that the government will be closed on those dates.

Eid Mubarak!

Tuesday, 25 August 2015

Qatar - extension to pay patent fees to 30 September 2015

Further to the earlier report here that filing fees, substantive examination fees, and accumulated annuities related to patent applications must be paid by 31 July 2015, news from good friends Saba & Co (here) that the Patent Office has extended the deadline to 30 September 2015. 

Iraq - a tale of two trade mark offices

News from good friends Saba & Co on their website that a trade mark registration issued by the Trade Mark Office in Baghdad can no longer be validated at the Trade Mark Office in Erbil. A separate application must now be filed at the Trade Mark Office in Erbil.

The update from Saba (here) reads:

"It is no longer possible for owners to validate registered trademarks at the Trademark Office in Baghdad up to the TMO in Erbil. Owner can now only file a separate application in the Kurdish region for additional local protection.

By way of background, there are two TMOs operating in Iraq: one in Baghdad and another in Erbil. In principle, the scope of the registration at the TMO in Baghdad still covers the whole country, including the Kurdish region. However, trademark owners may seek additional protection by filing applications at the TMO in Erbil. Protection in the Kurdish region is advisable in certain situations especially in an infringement claim. Trademark owners should of course seek sound advice before they decide on the best route to pursue.

Should you have any questions, or require any additional information, please contact us at info@sabaip.com"

Egypt - Patent Prosecution Highway pilot program with Japan

News from good friends Saba & Co in the their July 2015 newsletter (here) that the Egyptian Patent Office and the Japanese Patent Office began a two-year Patent Prosecution Highway program on 1 June 2015. The Patent Prosecution Highway allows an application that has been determined to be patentable in the Japanese Patent Office to undergo an accelerated examination in the Egyptian Patent Office with a simple procedure upon the applicant’s request.

There is more detail on the Saba website.

Thursday, 20 August 2015

Oman - plant varieties

A useful, brief, summary from good friends Saba & Co in their June 2015 newsletter (here) on the publication of the implementing regulations of Royal Decree No. 49 of 2009 promulgating the Law on the Protection of Breeders’ Rights in New Varieties of Plants.

They report that:
  • applications may now be filed with the General Directorate for Plant and Animal Research at the Ministry of Agriculture and Fisheries. 
  • filing requirements stipulate that applications must include a title and a full description, along with seeds and any other information or samples that may be requested by the authorities concerned. The protection term is 25 years for trees and grapevines, and 20 years for other plant varieties. 
  • renewal fees will have to be paid annually from the filing date.

They then include a useful summary table setting some information about Cyprus, Egypt, India, Iran, Jordan, Morocco, Saudi Arabia, Tunisia, Turkey and the UAE.




Jordan - new drug and pharmacy law

A useful, brief, summary from good friends Saba & Co in their June 2015 newsletter (here) on the amendments to the Drug and Pharmacy Law No. 24 of 2015 that came into effect on May 18, 2015.

They report that the main amendments include sanctions imposed on the counterfeiting of medicine:
  • the new law allows both imprisonment and a fine, whereas the old law imposed either imprisonment or a fine
  • the fine for counterfeiting is now ten times the value of the fake products produced, whereas the old law only imposed a fine of twice the value
  • the Food and Drug Administration is authorised to close down any shop, store, gym, or beauty centre that sells or trades in counterfeit or banned medicines or supplements.

Iran & Syria - what is allowed by US sanctions?

A useful, brief, summary from good friends Saba & Co in their June 2015 newsletter (here) on what transactions are authorised under US sanctions to Iran and Syria.

Yemen - a new weekend…..

News by email back in July 2015 from good friends SMAS that "the Yemeni government has recently issued a decree that confirms changing Yemen’s weekend from a Friday-Saturday to a Thursday-Friday schedule, giving Thursday as a weekend instead of Saturday. This decision came into effect on the 18th of June, 2015, and have been incorporated in all public sectors and should be implemented nationwide within the month.

For more information, please contact our Yemen office on Yemen@smas-ip.com"

This part of the Empty Quarter had thought that all countries in the region were now aligned on a Friday/Saturday weekend and well remembers the difficulties of managing work across a region where the weekend was not always the same, let alone always Friday/Saturday and hopes that, in due course, the weekend in Yemen might return to Friday/Saturday, although, of course, the choice is that of the Yemeni government.

GCC - Free Trade Agreement with EFTA

There is an interesting piece in the July 2015 newsletter of good friends Curtis, Mallet-Prevost, Colt & Mosle LLP on the implementation of the Free Trade Agreement between the European Free Trade Association and the GCC countries.

In brief the implementation of the Free Trade Agreement between the European Free Trade Association and the Gulf Cooperation Council will result in greater movement of trade in goods, services and government procurement contracts, where member states shall receive ‘most favoured nation treatment.’ The full length article which sets out more information is on their website here.

Oman - Conducting Promotional Offers

There is an interesting piece in the July 2015 newsletter of good friends Curtis, Mallet-Prevost, Colt & Mosle LLP on Conducting Promotional Offers in Oman.

In brief a commercial establishment is not to conduct or advertise any promotional offer until it has obtained a licence from the Ministry of Commerce and Industry. If a promotion is to take the form of a raffle which produces a prize winner, the licensee must inform the MOCI. The full length article which sets out more information including the penalties for violations is on their website here.

Iraq - progress of trade mark applications

News from good friends SMAS of progress in examining trade mark applications in Iraq.

In September 2013 the Trade Mark Office was examining applications in the 52,000 range. In June 2014 the Trade Mark was examining applications in the 54,000 range.  The Trade Mark Office is now examining applications in the 56,000 range.

Earlier posts on the progress of examination are here, here, here, and here.

Adjust your reminders accordingly, progress continues to be slow.

Wednesday, 19 August 2015

Qatar - Beijing Treaty on Audiovisual Performances

News from WIPO (in July) that Qatar has acceded to the Beijing Treaty on Audiovisual Performances. The notification (here) states:

Ratification by the State of Qatar

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the State of Qatar, on July 3, 2015, of its instrument of ratification of the Beijing Treaty on Audiovisual Performances, adopted at Beijing on June 24, 2012.

The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached in accordance with Article 26 of the said Treaty.

July 3, 2015

Tunisia - New Amounts, in Swiss francs, of the Individual Fee under the Madrid Agreement and Protocol

News from WIPO that the individual fee for Tunisia has changed:

New Amounts, in Swiss francs, of the Individual Fee in Respect of Several Contracting Parties
In accordance with Rule 35(2)(d) of the Common Regulations under the Madrid Agreement and Protocol, the Director General of the World Intellectual Property Organization (WIPO) shall establish new amounts, in Swiss francs, of an individual fee where, for more than three consecutive months, the official exchange rate of the United Nations between the Swiss franc and the currency used to express the amounts of that individual fee is lower than the last exchange rate applied by at least 10%.

As those conditions have been met, the Director General of WIPO has established new amounts, in Swiss francs, of the individual fee payable in respect of the following Contracting Parties:

Mexico, Tajikistan, Tunisia and Turkmenistan.

The new amounts will be applicable as from September 13, 2015.

For further information, please refer to Information Notices Nos. 31/2015 to 34/2015