Changes to trade mark practice in Saudi Arabia

With thanks to good friends Kadasa & Partners news of further changes to the practice at the Trade Mark Office:

"Further to the recent changes to the Saudi trademark practice ensuing from the online filing application, we have been notified of the following new changes and developments:

1) Trademark Registration Certificates:

Registration certificates for electronically filed applications will be computer-generated. Traditional registration certificates have been prepared by trademark agents and submitted for signature, stamp and lodging a counterpart in the Trademark Office Records. As we have understood, traditional certificates will be processed for old pending applications filed before the online filing system.

2) Applicant Name and address

Arabic translation of non-Arab clients’ names, addresses and PoAs are no longer required. It has become possible to submit untranslated PoAs and register the name and address of the non-Arab applicants in English only on the online portal. The name and address in English characters will appear in the application form, the publication, and the registration certificate. It is noteworthy that the non-Arab applicants’ names and addresses will appear in English only in registration certificates corresponding to all applications, which have already been filed online when those applications were in Arabic translated names and addresses."

These continue a process of changes to administrative procedures at the Trade Mark Office (reported here and here).

This part of the Empty Quarter generally welcomes process improvements. The Saudi Trade Mark Office has significantly reduced the time taken to examine and approve new trade mark applications with some being examined and published within a week of filing, which is to be applauded. However, where this is accompanied by overly prescriptive requirements the benefits to rights holders and consumers can be reduced. There have been a number examples of amendments being required by the Trade Mark Office to trade mark applications after the end of the opposition period so that the applications comply with the subsequent specification requirements. These retrospective amendments to previously approved and published applications reduce certainty for rights holders and the general public. This part of the Empty Quarter hopes that this particular process change will end soon.

Sunday 12 January 2014 is a public holiday in the United Arab Emirates

Sunday 12 January 2014 is a public holiday in the United Arab Emirates on the occasion of the birthday of the Prophet Mohammad (PBUH) and all government agencies in the UAE will be closed. 

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!

Update to 10th Edition of the Nice Classification

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

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

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

Domain name news from Egypt, Sudan, and Tunisia

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

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


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


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

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

Saudi Arabian Trade Mark Office amends renewal procedure

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

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

Saudi Arabian trade mark publication rules changed

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

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

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

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

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

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

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

Iran - electronic trade mark application system launched

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

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

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

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

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

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

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

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

UAE National Day holiday

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

Qatar Trade Mark Office delays

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

UAE Trade Mark Office update

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

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

The Trade Mark Office is currently:

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

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

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

OHIM and OMPIC discuss collaboration

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

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

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

Public Holidays in Morocco

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

Dubai Customs IP Workshop - 13 to 15 November 2012

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

Eid Al Adha holiday in Saudi Arabia

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

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

GCC Patent Office hosts event on Pharma patents

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

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

New Syrian Ministry responsible for Intellectual Property matters

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

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

Syria to leave the Madrid Agreement

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

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

Libyan Trade Mark Office - searches start then stop

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