UAE - WCO and UAE Federal Customs launch IPM Mobile

News from the World Customs Organisation that the Federal Customs Authority of the UAE has launched the 'IPM Mobile' application. Original announcement here and reproduced here:

The World Customs Organization (WCO), in cooperation with the Federal Customs Authority of the United Arab Emirates (FCA), has officially launched the ‘IPM Mobile’ application, enabling Customs officers equipped with a mobile device to access IPM immediately when faced with a suspicious product.

Launched in 2010, the WCO’s online anti-counterfeiting tool IPM provides a communication hub between Customs officers on the ground and the private sector by allowing them to exchange crucial information in real-time in order to intercept counterfeit goods.

With the launch of the mobile application, field Customs officers can now access IPM via their mobile devices and retrieve all relevant information contained in the database. Several new features have been added to the mobile version such as the possibility to send or receive alerts regarding possible shipment of counterfeit goods, and, when faced with suspicious merchandise, Customs officers can contact right holders immediately and upload photos of the products in question.

This new version also allows using mobile devices to scan industry standard GS1 barcodes found on millions of products, enabling to search the products database more quickly. The unique product identifier embedded in the GS1 bar code facilitates access to multiple databases providing trusted sources of product information.

Scanning the barcodes enables automatic connection to any authentication services linked to the product controlled. This new feature is known as IPM Connected - a global network of security features providers (SFP) interfaced with IPM.

In cooperation with the FCA and the private sector, the WCO unveiled the IPM Mobile programme during a two-day workshop held in Dubai on 16-17 April. During this workshop, Customs officers tested the tool on a number of counterfeit and genuine products and were trained to make informed decision with the information contained in the IPM database.

"Faced with the growing trade in counterfeit goods, the WCO and its Members are determined to develop the most efficient tools to fight this menace. Safeguarding the health and safety of consumers across the globe is one of the WCO’s priorities, and IPM’s mobile version is a significant step forward" said WCO Secretary General, Kunio Mikuriya.

Secretary General Mikuriya added, "Working with the UAE on this pilot phase was an obvious choice given our previous successful cooperation to launch the PC version back in April 2012. The WCO appreciates the UAE’s ongoing efforts to tackle the illicit trade of counterfeit and pirated goods."

The UAE is the first country to use the IPM Mobile application and will contribute to developing the tool before the official worldwide launch in June 2014 during the WCO’s General Council Meeting.

"The UAE is keen to support plans for facilitating trade and fighting counterfeit according to the established principles of the federation state including the protection of IPRs and fighting piracy and counterfeiting as they have serious economic and social impacts that may jeopardize the security of the society, consumer and producer altogether" said Khalid Al Bustani, Acting Director General of the Federal Customs Authority.

"The application is launched as a part of fulfilling the requirements of the smart government initiative announced last year by His Highness Sheikh Mohammed bin Rashid Al Maktoum by providing governmental services on mobiles", continued Al Bustani.

For more information: ipmcommunication@wcoomd.org

WIPO - Workshop in Trademark Law and Examination

An item on the ever useful and interesting Afro-IP blog alerted this part of the Empty Quarter to the WIPO Techincal Assitance Database (here) and from there to an item (here) about a Workshop in Trademark Law and Examination hosted in Korea. "The objectives of the Workshop shall be to: (i) enhance the knowledge of trademark examiners of the principles of trademark law and trademark examination procedures; (ii) increase their skills in actual examination of trademark applications; and (iii) provide an opportunity to exchange views on issues related to the Madrid System." 

The workshop was attended by representatives from Saudi Arabia, Egypt and Iran. This part of the Empty Quarter hopes they brought back and shared much useful learning.

Egypt - increase in trade mark and design fees

News from good friends Abdelhadi - Intellectual Property in Egypt of an increase in official fees for trade mark and design matters. The report does not appear on their website. The translation (for which this part of the Empty Quarter is very grateful) of the decree issued by the Minister of Trade and Supply provided by Abdelhadi reads:

Circular No. (1) of 2014 dated 19/3/2014
After perusal of:
Decree of Minister of Supply and Internal Trade No. 95 of 2014 dated 13/3/2014 regarding
collection of fees against some services provided by the Central Administration of Trade
Marks and Industrial Designs within the framework of cost against services rendered
principle,
For the good of work and requisites:
Decided
First:
The Central Administration of Trade Marks and Industrial Designs should collect the
following fees against the services provided by the Administration as follows:
Egyptian Pounds 250 ( Two Hundred & Fifty) for each session of Trade Mark opposition.
Egyptian Pounds 250 (Two Hundred & Fifty) for each session of Industrial Design session.
Egyptian Pounds 200 (Two Hundred) for an extract of a Trade Mark application.
Egyptian Pounds 200 (Two Hundred) for an extract of an Industrial Design application.
Egyptian Pounds 200 (Two Hundred) for a Trade Mark search application.
Egyptian Pounds 200 (Two Hundred) for an Industrial Design search application.
Egyptian Pounds 200 (Two Hundred) for an Extract of a Trade Mark status report.
Egyptian Pounds 200 (Two Hundred) for an Industrial Design status report.
Second:
To be executed as of 1/4/2014
Issued 19 March 2014.
Signed
Deputy Chief
Trade Administration

Bahrain - approves the GCC Trade Mark law

News from good friends Saba & Co that Bahrain has approved the GCC Trade Mark law.  The article on the Saba & Co website can be found here. 

This part of Empty Quarter has not followed the progress of the GCC Trade Mark law but cant help wondering whether any of the GCC Trade Mark Offices will apply the unified reguslations without local implementing regulations which could take some many years to be implemented.

UAE - Trade Mark Office requires Power of Attorney at time of filing from today

Following an announcement on 30 March 2014, which was amended on 31 March 2014, today, 1 May 2014, marks a new era at the Trade Mark Office in the United Arab Emirates. From today a Power of Attorney (fully legalised) is required at the time of:

- filing a trade mark application, and
- filing an opposition against a trade mark application.

This part of the Empty Quarter regrets this decision by the Trade Mark Office. The United Arab Emirates requires Powers of Attorney (and indeed all other documents from overseas) to be legalised in the country where the Power is executed and then again by the Ministry of Foreign Affairs in the UAE. This takes considerable time (and cost). To require these documents at the time of filing places an unnecessary burden on the rights holder.  

Saudi Arabia - Trade Mark Office moves to soft copy registration certificates

It is the end of an era. A welcome end but one that should be marked suitably by nostalgic practitioners everywhere.  

Following the news here that the Saudi Trade Mark Office is moving to soft copy registration certificates, the first of the new soft copy registration certificates have started to appear.  This marks the beginning of the end for those of us who love trying to find a decades old original registration certificate, frayed and worn thin by passage over the years through many hands and endorsed, in some semblance of order, with all manner of renewals, changes of name, address and so on. These new soft copy only pdf certificates bear one of the new scannable 2-D pixel based barcodes which allows verification on the Ministry of Commerce and Industry website. Useful.

The Trade Mark Office have not yet decided how to deal with those endorsements which have previously been added to the original certificates. This part of the Empty Quarter expects they will follow the logical path of issuing a new certificate after each change. More new when it is available.

UAE - the Trade Mark Office is moving

News that the Trade Mark Office in Abu Dhabi is moving to a location nearer the Abu Dhabi airport in June 2014. This will make it easier for those (many) agents visiting from Dubai to reach the Trade Mark Office. The move has started with moving as many of the current and archived files as possible out of the existing premises and in to the new premises.  It will take two weeks for the Trade Mark Office to retrieve a file for an agent to inspect it until the move to the new premises is complete. 

UAE - Trade Mark Office processing very large volume of applications

Following the news reported earlier here that the Trade Mark Office in the UAE had drafted in additional examiners from Jordan to process applications the results of that labour are now being felt by agents and rights holders alike. The Trade Mark Journal published at the beginning of April contained over 4,000 applications. The Trade Mark Office has said that the Trade Mark Journal to be published at the beginning of May 2014 will contain over 7,500 applications. This will make it by far the largest monthly publication by the Trade Mark Office in the UAE ever.

This part of the Empty Quarter has seen in recent weeks applications being approved for publication in the same working week as they have been filed.

While this part of the Empty Quarter welcomes wholeheartedly quick processing of applications this must not be done without proper examination of those applications and accurate records at the Trade Mark Office. This part of the Empty Quarter has seen the accuracy of registration certificates and the quality of examinations decline notably in recent months and hopes that this, worrying, trend will be reversed so that there is a focus on quality and speed.

Jordan - new trade mark regulations for assignments, mortgages and security interests

News in a recent email from good friends SMAS contains news of new trade mark regulations in Jordan. As the item does not appear on the SMAS website, this part of the Empty Quarter is taking the liberty of reproducing it here:

"New Trademark Regulations in Jordan

We would like to draw your attention that in accordance to Article 19 Paragraph 5 of the Jordanian Trademarks Law No. 33 of the year 1952 and its amendments, the Jordanian Ministry of Industry and Trade issued the Regulations for filing a recordal of assignment, pledge and security interest of a trademark registration under No. 55 for the year 2014 effective from 1 April 2014.

According to the new regulations, a duly legalized Power of Attorney specified for the legal procedure should be submitted along with the recordal of assignment, pledge or security interest within one year from the date of signing the Power of Attorney.

Further, in relation to the recordal of assignment of a trademark registration, both parties should submit a certified copy of their Company’s Commercial Register, and the date of issuance the same should not exceed one week prior filing the recordal of assignment with the Jordanian Trademarks Office.

Should you need any assistance and/or information in respect of the above matter, please do not hesitate to contact us at Jordan@smas-ip.com

SMAS INTELLECTUAL PROPERTY"

If this part of the Empty Quarter is reading this news correctly then:

- a Power of Attorney submitted in support of an application to record an assignment, pledge, or security interest should be no more than a year old when the application is submitted.
- the Trade Mark Office now require certified copies of both the assignor's and the assignee's 'Commercial Register' each of less than a week old when an assignment aplication is filed.

To this part of the Empty Quarter both of these requirements seem unnecessarily stringent and require more work to be done in less time which will cost rights holders more than before which is not welcome news.

Update: News on the same issue from good friends AGIP on their website here and from good friends Saba & Co on their website here. 

Oman - compliance with advertising regulations

The blog of Curtis, Mallet-Prevost, Colt & Mosle LLP in Oman contains a useful summary of how to comply with advertising regulations in Oman. It can be found here. 

Oman - Franchise Agreements

The April 2014 newsletter from Curtis, Mallet-Prevost, Colt & Mosle LLP contains an interesting summary of the provisions of Omani law relating to franchising, with a particular perspective on the franchisor. The article is not, at the time of posting, on their website but a copy can almost certainly be obtained by contacting Bruce Palmer, the Managing Partner, on bpalmer@curtis.com.

They also have an interest law blog here: http://omanlawblog.curtis.com.

New Director General for Dubai Customs

Gulf News reports (here) that Ahmed Butti has retired as the Director General of Dubai Customs. The new Director General of Dubai Customs is Ahmad Mahboub.

The post of Director General of Dubai Customs has a great impact on rights holders. The views of the Director General have a direct impact on how Customs behave towards shipments of counterfeit goods on everything from likelihood of detection to destruction.  There are two issues which regularly vex rights holders: whether action can be taken in free zones and whether an appropriate way of dealing with seized counterfeit goods is to allow them to be exported rather than destroyed.

The part of the Empty Quarter does not know Ahmad Mahboub and does not know his views on these two important questions and so waits eagerly for news of whether the current stance of Dubai Customs will change.

No new trade mark applications in Iraq

News from good friends SMAS that the Iraqi Trade Mark Office has stopped taking new trade mark applications until further notice. New regulations are due to be issued regarding legalisation of Powers of Attorney.

This part of the Empty Quarter is disappointed by this news. A Trade Mark Office should continue to function until new regulations are issued. Operations should only be suspended in the most unusual circumstances. This part of the Empty Quarter hopes that the new regulations will be issued soon so that operations can be re-started.

Libyan Trade Mark Office - Power of Attorney requirements (2)

Further to the news that the Libyan Trade Mark Office will not accept Powers of Attorney executed by agents using powers of delegation and require Powers of Attorney to be executed by rights holders (reported here), there is news today from good friends SMAS (not a ciruclar but in advice) that the Trade Mark Office requires Powers of Attorney to be legalised in the applicant's 'home' country and not elsewhere.

This part of the Empty Quarter does not agree. The key issue is whether the Power of Attorney is validly executed. The legalisation steps only verify the authenticity of the Notary Public or the local Embassy.  

UAE Trade Mark Office - no more changes to pending applications

An announcement sent on 18 February 2014 by the Trade Mark Office to all agents in the UAE changes the practice on amendments to pending applications. The change is stated to be effective from 1 February 2014. 

Prior to the notification the Trade Mark Office have taken a fairly relaxed approach to making amendments to applications prior to examination allowing changes of applicant, address, specification and so on. The notification makes it clear that the Trade Mark Office will no longer accept amendments to any part of a pending application. Any amendments have to be made after registration.

This part of the Empty Quarter believes in certainty and so understands the need for this change. It is only right that the application should be fixed, provided that obvious typographical errors can be corrected.  Change always takes some getting used to.

Changes at the Saudi Trade Mark Office

The Saudi Arabian Trade Mark Office (and the IT company, Thiqah, which is implementing many of the changes) continues to keep local and regional practitioners on their toes.

The Registrar resigned last week. There is an acting Registrar now leading the Trade Mark Office.

The recent changes in practice to specifications have been amended. The requirement that either the class heading or only specific terms listed in the 2012 version of the 10th Edition of the Nice Classification could be selected (reported here) has been amended. It is now possible to select both the class heading and specific terms listed in the 2012 version of the 10th Edition of the Nice Classification. This changed happened sometime last week, was not announced by the Trade Mark Office or Thiqah and was not applied to all trade mark agents at the same time. 

This part of the Empty Quarter is finding the many changes at the Trade Mark Office in Saudi Arabia difficult to keep up with and even more difficult to keep clients up to date with.

Saudi Arabia to hold 3rd Saudi IP Forum in April 2014 at KACST - updated

News that the King Abdulaziz City for Science and Technology (KACST), the home of the Saudi Patent Office, will host the 3rd Saudi Intellectual Property Forum on 22/23/24 April 2014. The Forum will focus on Intellectual Property Rights and Enforcement and the draft program refers to speakers from KACST, the Ministry of Commerce and Industry, WIPO, the World Health Organisation, the Ministry of Information and Culture, the General Customs Authority, Microsoft, the BSA, Autodisc, and others.

The Forum is mentioned in the events page of KACST here, and now there is useful information on the Forum website here. 

The Forum appears not to be a continuation of the Arab Forum for IPR Protection (http://www.ipr.gov.sa/).

This part of the Empty Quarter welcomes news of this event, timed to be so close to World Intellectual Property Day, and hopes there will be as much action as there is talk.

Further news on amendments to the UAE Commercial Fraud law

With thanks to good friends Clyde & Co, further news (following earlier post here) on the amendments to the Commercial Fraud law can be found on their website here. 

UAE Ministry of Economy signs MOU with KIPO

A news report from Gulf News here that the UAE Ministry of Economy has signed a(nother) Memorandum of Understanding with the Korean Intellectual Property Office.

From the report it appears that the KIPO will start assisting in the examination of patent applications in the UAE.

This part of the Empty Quarter welcomes the news as speedy processing of patent applications is, generally, a good thing. However, applicants and their agents will need to be ready to pay the fees, noted here.

Legalisation and patent examanation in Bahrain

News from good friends SMAS:

"After its accession to the Hague Agreement, legalization of documents by Apostille is now acceptable to the Bahrain Patent Office, for all applicants/inventors of any country member to the said Agreement, thus abolishing the requirements of legalization of foreign documents up to the Bahrain Consulate.

The Bahraini Patent Office has recently started formal examination for National Phase applications filed under the PCT scheme in Bahrain, and in this regard, some further supporting documents will be required by the Patent Office. However, the said anticipated documents shall be specified timely for each case.

A verified Arabic translation for the patent specification and the priority documents, stamped by a Local Certified Translation Office, will be required."

This part of the Empty Quarter welcomes the removal of legalisation steps and examination of patent applications so lots of good news.

UAE Trade Mark Office drafts in additional support

News that the Trade Mark Office in the UAE has drafted in extra support to help tackle the backlog of applications.

Examiners, both trained and novice, from Jordan are providing support. The existing examiners are focused on applications filed in 2014 and the temporary examiners are dealing with those from 2013.

There is also a new examiner in the opposition section dealing with the significant back log there.

This part of the Empty Quarter welcomes the news. Accurate and timely processing of applications and oppositions is vital to the proper functioning of a Trade Mark Office for the benefit of users and consumers alike.

Saudi Arabian Trade Mark Office further publication fee fun

Further to the earlier post here about the increases at the Saudi Trade Mark Office of publication fees, news from good friends Kadasa & Partners of further changes. Readers will recall that the increases follow a number of changes to the practice at the Trade Mark Office over recent months (reported here, here and here).

The Ministry of Commerce and Industry is allowing a discount on the new publication fees of 50% for applications filed between 14 January and 28 February 2014. For applications filed from 1 March 2014 onwards the full SAR3,000 (US$810) will be charged.

The deadline for paying the publication fees has changed. For all applications accepted before or on 10 February 2014 the deadline to pay the publication fees is 180 days. For all applications accepted on or after 11 February 2014 the deadline to pay the publication fees is 30 days. The current Implementing Regulations, as amended, state 30 days to pay the publication fees. However, until 11 February 2014 the notices of acceptance had stated 180 days (the old time period). 

The part of the Empty Quarter prefers certainty. The changes at the Trade Mark Office in Saudi Arabia result in a lack of certainty. Increases in official fees are very likely to reduce the number of trade mark applications filed which does not encourage a brand rich environment.

Algeria acceds to copyright treaties

News from November 2013 from WIPO that:

"The following notifications have just been published:

WIPO Copyright Treaty - Accession by the People's Democratic Republic of Algeria
WCT Notification No. 80

WIPO Performances and Phonograms Treaty - Accession by the People’s Democratic Republic of Algeria
WPPT Notification No. 85"

This part of the Empty Quarter welcomes this news enthusiastically.

Morocco - Finance Law increases penalties for counterfeitintg

News from good friends H&H Consulting Law Firm of changes to enforcement in Morocco.  Moroccan Customs have set significant fines to be levied against importers of counterfeit products.  A new Finance Law came into force on 1 January 2014. That law states that importing counterfeit goods is a 'high level customs contravention'. The law deals with confiscation and destruction of counterfeit goods, compensation and fines. Fines can be up to three times the value of the tax due on the import.

This part of the Empty Quarter welcomes this news.  Strong legislation is key to protecting consumer. So much is, however, also down to implementation.

Libyan Trade Mark Office - Power of Attorney requirements

News that the Libyan Trade Mark Office changed its practice on Powers of Attorney towards the end of last year.  Powers of Attorney to local agents must be executed by the rights holder and not by another agent on behalf of the rights holder. Local agents have discussed the issue with the Registrar who insisted that the amendment to the practice is correct. The issue was then discussed with the Reviews Committee at the Trade Mark Office who agreed.

This part of the Empty Quarter does not agree. If an agent has the power to delegate powers on behalf of the rights holder then the Trade Mark Office should honour the wishes of the rights holder.

Arab-British Chamber of Commerce IP event in London

News of an event organised by The Arab-British Chamber of Commerce in December 2013 in London entitled the "International Intellectual Property Rights Conference: Combating Transnational Intellectual Property Crime". The event was billed as comprising high-level discussions, offering unparalleled networking opportunities, and providing a unique opportunity to learn about and discuss best practices that can be utilized to combat transnational organized intellectual property crime. The event was also expected to witness the signing of a Memorandum of Understanding to establish the Saudi-British Arbitration Centre to promote commercial arbitration as an effective alternative to litigation.

This part of the Empty Quarter was not able to attend the event but would welcome news from any reader who did.

Saudi Arabian Trade Mark Office dramatically increases publication fees without notice

News from good friends at Kadasa & Partners that the Trade Mark Office in Saudi Arabia has dramatically increased publication fees from SAR1,000 (about US$270) to SAR3,000 (about US$800) per page (for the first two pages). The increase came without warning.

This increase follows a number of changes to the practice at the Trade Mark Office over recent months (reported here, here and here).

This part of the Empty Quarter feels that US$800 for the publication of one page of data on the Ministry of Commerce and Industry website is expensive (being more than the total local government and agent fees for an application to registration in many countries) and such an increase along with any change which comes without notice can only be detrimental to rights holders, agents and consumers.  

UAE to amend Commercial Fraud Law

News that a proposed Commercial Fraud Law in the United Arab Emirates may soon be enacted.

There is a useful summary report in The National (here) from November 2013 and news on the Arabic only The Emirates Today (here) that the Financial and Economic Committee of the Federal National Council has announced that the draft law will be sent to the Federal Cabinet to consider.

This part of the Empty Quarter welcomes this news. The existing Law for the Prevention of Fraud and Deception in Commercial Dealings dates from 1979 since when much has changed in the world of commerce.

Tunisian Customs organise open house information fair to celebrate World Customs Day

News reaches this part of the Empty Quarter of a two day open house information fair being held by Tunisian Customs on 24 and 25 January 2014 to celebrate World Customs Day.  Participants will be customs users (professional organisations, businesses, private sector representatives, civil and consumer associations). There will be presentations on the modernisation of Tunisian Customs and workshops by rights holders on the risks of counterfeits and how to identify counterfeit products.

The workshops are being organised by the Bureau of International Cooperation at the Directorate General of Customs (bci@douane.gov.tn).

Syria moves to single class renewals

News from good friends SMAS that the Syrian Ministry of Interior Trade and Consumers Protection issued a Ministerial Decree (No. 2057) on 9 December 2013 stating that from 19 December 2013 a separate renewal application must be filed for any multi-class trade mark registration. Separate fees must be paid for the renewal of each class. Multi-class renewals will no longer be allowed.

The part of the Empty Quarter is disappointed by this change on two counts. The first is that a multi-class system should allow multi-class renewals. The second is the very short notice of the change. There seem to be changes taking place in the Trade Mark Office as it was only two months ago that there was an announcement of changes in renewal fees (here). Some stability in the Trade Mark Office (and the country itself) would be most welcome.

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.