Destruction of goods seized by Customs

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

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

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

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

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

Good work by the Dubai Department of Economic Development

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

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

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

Qatar Customs recordals

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

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

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

Syria, sanctions and Executive Orders

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

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

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

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

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

UAE Trade Mark Office implements IPAS system

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

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

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

(No more) Trade mark reservation in South Sudan

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

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

Restarting

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

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

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

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

WIPO and Egypt sign MoU on establishing an IP institute

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

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

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

Oman acceeds to the Hague Convention

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

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

Saudi Arabian Customs hold IP event in Riyadh in January 2012

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

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

WCO and UAE Federal Customs to host forum in April 2012

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

1st day: Government agencies will discuss IP Law

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

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

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

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

Iraq Patent Office requires Israel boycott declaration

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


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

Trade mark reservation in South Sudan

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

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

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

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

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

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

DIFC courts now available for IP disputes

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

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

Kuwait's Design law awaits implementing regulations

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


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

UAE to set up specialist IP Courts

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


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

A beginning

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