Egypt - WIPO regional event - May 2015

News here of a WIPO regional event to be held in Cairo on 26/27 May 2015. The event is called: WIPO/LAS Regional Workshop on Building Respect for Intellectual Property.

The program can be found here.

Oman - WIPO event - 5-7 May 2015

News of a WIPO event in Oman in May 2015 (can you make it back from INTA in time?). Almost no details can be found here on the WIPO website. 

The event is: Technology and Innovation Support Center (TISC) Training Workshop on Developing TISC Project and Innovation Support through Access to Technological Knowledge.

UAE - significant increases in official fees from 29 May 2015

News from good friends Clyde & Co of Cabinet Decision 9 of 2015 which increases official fees for patents, designs, copyright and trade mark transactions. The April 2015 MENA Legal update is not yet on the Clyde & Co website. 

The increases in fees are significant. Official fees for trade mark searches, applications, publication, registration and renewal will double. Official fees for a copyright application increase 10 times. Official fees for a patent application increase by 2.5 times.

Official fees will increase:

• for trade mark search from AED250 (US$70) to AED500 (US$140)
• for trade mark applications from AED500 (US$140) to AED1,000 (US$280)
• for trade mark publications from AED500 (US$140) to AED1,000 (US$280)
• for trade mark registration from AED5,000 (US$1,360) to AED10,000 (US$2,720)
• for trade mark renewal from AED5,000 (US$1,360) to AED10,000 (US$2,720)
• for patent filing by a business from AED790 (US$220) to AED2,000 (US$560)
• for a copyright recordal by a business from AED30 (US$8) to AED300 (US$85)

Official fees for trade mark transactions in the UAE are already some of the highest in the world. These increases are significant. 

This part of the Empty Quarter feels that the increases will result in fewer businesses protecting their intellectual property rights in the United Arab Emirates.

Palestine/Gaza Strip - increase in official fees

News today from good friends SMAS that from 1 April 2015 the official fees for trade marks, designs and patents have been increased. Details will follow from them later.

Saudi Arabia - 4th Arab Forum to protect the consumer against commercial fraud, imitation and violation of Intellectual Property Rights

News that the 4th Arab Forum to protect the consumer against commercial fraud, imitation and violation of Intellectual Property Rights will take place from 5 to 7 May 2015 at the Intercontinental Hotel in Riyadh.

Details of the event can be found at the website here. 

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, although participation in the event may be affected by proximity to the INTA Annual Meeting in San Diego which has attracted over 9,000 attendees.

Dubai Customs online recordal process

News that Dubai Customs allows for the online filing of request to record trade marks with them. The relevant page on the Dubai Customs website is here.

This part of the Empty Quarter welcomes this news. Online filing makes the process for rights holders, their agents and Customs more efficient.

UAE - Trade Mark Office - dealing with old applications

The Trade Mark Office in the UAE has reported verbally that they believe they have examined all applications filed before 1 January 2014.  Based on the number of applications from before then that this part of the Empty Quarter knows have not been examined, all those applicants with pending applications filed before 1 January 2014 are encouraged to find out from the Trade Mark Office the status of their applications. 

This part of the Empty Quarter knows of applications with incorrect status updates, office actions which have been created but not sent to the agent or sent to the wrong agent.

Kuwait - trade mark office accepting priority applications

Further to an earlier post (here) that Kuwait has acceded to the Paris Convention news from good friends SMAS in their 25 December 2014 newsletter that priority applications will be accepted by the Trade Mark Office from 1 January 2015.

The newsletter reads:

On the second of December, 2014, Kuwait has joined the Paris Convention for the Protection of Industrial Property. As a result, the Kuwaiti Trademark Office has made an announcement that states that priority claims will be available for trademark applications starting 1st of January, 2015. According to the announcement, any applicant can claim priority within the six months priority period.

Typically, official charges has been posed by the office in exchange for the newly introduced service. For more information in regards to that matter, please contact us at Kuwait@smas-ip.com

Bahrain - Trade Mark Office accepting sound marks

News from good friends SMAS in their 25 December 2014 email newsletter that the Trade Mark Office in Bahrain is accepting sound marks. The news reads:

The Bahrain Trademark Office has recently started accepting sounds marks as per the official note released on the 18th November 2014. The sounds mark will be governed by trademark Law No. 11/2006 and hence, will be subject of examination and publication procedures in the official Bulletin and which will be available for the public to hear. The applicant of the sound mark will have to submit besides the requirements prescribed by the Trademark law for any trade and service mark the following:
A CD containing the sound mark in MP3 format or an equivalent format.
A clear written note of the sound mark.

In its efforts to curtail the examination period for the trade-service marks, the Bahrain Trademark Office issued a note emphasizing that the deadline to suffice any missing document is Three month from the application date. Passing this deadline, the mark shall not be examined and will be considered abandoned. SMAS-IP invites its clients and partners to observe the deadline as no exception is to be granted by the TMO.

For any information or clarification regarding the above, kindly send your inquiries to Bahrain@smas-ip.com and we will be glad to assist you.

Oman - Consumer Protection Law

News from good friends Curtis, Mallet-Prevost, Colt & Mosle LLP in their December Oman Client Bulletin that a new Consumer Protection Law has been enacted by Royal Decree 66 of 2014. A detailed analysis of the provisions of the new law appears in the Bulletin (but not yet on their very useful http://omanlawblog.curtis.com/).

Libya - Trade Mark Office - what is really happening

Further to an earlier post here about what may or may not be happening, an excellent summary has been received today by email from good friends Spoor & Fisher setting out what they have been able to find out about what is really happening at the Trade Mark Office in Libya. For those not lucky enough to be on the mailing list the update is:

Libya – Trade Marks Office – Current Situation
There have been recent reports that the Trade Marks Office in Libya is once again functioning following its closure earlier this year. We have investigated these rumours and can confirm that the Registry is currently under the control of the Fajr Libya militia. They have appointed a Registrar and are stating that the Registry is open and able to process matters. Meanwhile, the Libyan Government and Parliament has moved out of Tripoli and is attempting to operate from the city of Al-Beyda. The situation is extremely volatile and liable to change with little warning.
At this time it is not possible to establish how long the militia will retain their position, or when and if the Government will re-establish control. Whilst it appears that matters can be filed at the Registry it is not certain whether any such matters will be considered valid should the political situation change.
For the time being we are taking an extremely cautious approach but if clients wish to proceed then we will act upon those instructions.

Further information will be reported as it becomes available and meanwhile questions will be welcomed by your normal contact at Spoor & Fisher Jersey, or may be directed to info@spoor.co.uk

This part of the Empty Quarter is grateful to Spoor & Fisher for sharing this useful information.

Syria - increase in official fees

News from good friends SMAS by email today that official fees for publication and searches have increased in Syria, but no information by how much or to what. The email reads:

"Dear Sirs,

Please be advised that the Syrian Ministry of Interior Trade and Consumer Protection has issued Decision No. 1999 on 13 November 2014, stipulating that the official publication fees and search fees of all Intellectual Property Matters will be increased as from 1st of January 2015.

We would like also to draw your attention that our own charges shall remain intact while our tariff will be amended in accordance to the official fees stipulated in the aforementioned decision.

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

Syria - legalisation of documents - an update with some good news

Further to earlier posts here and here setting out the difficulties of having documents destined for Syria legalised while there are an ever decreasing number of Syrian Embassies available around the world for legalisation here is some good news. 

This part of the Empty Quarter has recently seen documents from a western country, clearly destined for Syria, legalised to the UAE Embassy, then legalised to the Ministry of Foreign Affairs in the UAE, then legalised to the Syria Embassy in the UAE. They are now on the way to Syria for legalisation there. 

The solution may not be elegant and it is not cheap but it has the distinct advantage of, for the moment, working.

UAE - Trade Mark Office issues notices on practice for oppositions/rejections and registration certificates

This post was update on 5 January 2015.....

The Trade Mark Office in the UAE does not publish practice guidelines on the Ministry of Commerce website. However, it does, from time to time, send emails to all agents telling them what to do. At the end of November the Trade Mark Office issued two such notices.

The first, issued on 23 November 2014, relates to oppositions and rejections and states that:

• All appeals will be heard by the Trade Mark Committee pursuant to the Trade Mark Law.
• All agents must provide the Trade Mark Office with a list of all pending appeals setting out the issues.
• From now on all supporting documents must be filed with the appeal to avoid matters coming to the Committee without them. All documents must be notarised (local) or legalised (from overseas).

The second, issued on 25 November 2014, relates to registration certificates and states that:

• Registration certificates for agents in Dubai will be issued from the Trade Mark Office branch in Dubai and those for agents in Abu Dhabi from the main Trade Mark Office in Abu Dhabi. Any certificates needing correction must go to the correct location.
• The Trade Mark Office disclaims responsibility for any final registration forms or fees sent by mail or handed to the customer services centre in Abu Dhabi.

This part of the Empty Quarter dreamt on the National Day holiday that the Trade Mark Office was:

• no longer bound to have documents legalised (but knows this is not an issue for the Trade Mark Office but for the Federal government). 
• fully staffed so that there is no backlog of issues to deal with.
• accurate in the capture of data so that publication takes place for and certificates can be issued showing the data as applied for.

UAE - holidays and closures from 27 November 2014 to Thursday 4 December 2014

The United Arab Emirates is celebrating its 43rd birthday on Tuesday 2 December 2014. The National Day holiday is most of the week for the government and one day for the private sector.

The private sector holiday is on Tuesday 2 December 2014. Many businesses will be open as usual.

The government is closed on Tuesday 2 December to Thursday 4 December and so will reopen on Sunday 7 December after the (Friday/Saturday) weekend.

In addition the Trade Mark Office has announced that the Dubai branch will be:

• open on Thursday 27 November from 8am to 10am only,
• open on Sunday 30 November as usual,
• closed on Monday 1 December as they will be celebrating National Day with their colleagues in Abu Dhabi.

Libya - Trade Mark Office still closed

Further to previous posts in September 2014 here and October 2014 here that the Trade Mark Office in Libya is closed and then may reopen there is news today from good friends Saba & Co that the Trade Mark Office is still closed and that it is not possible to file new applications.

This part of the Empty Quarter hopes that the local situation will soon calm to allow the normal operations of government.

Oman - patent examination fees due

News from good friends Saba (here) that:

Oman: Substantive Examination Fees Due
November 03, 2014

The Sultanate of Oman declared on November 2, 2014 that the substantive examination fees for patent applications submitted between 2003 and 2007 will be due within two months from the date of announcement.

This move follows the recent signing of a memorandum of understanding between the Omani and the Egyptian Patent Offices, where the Egyptian Patent Office acts as the examining office for all pending and new patent applications filed in Oman – as reported initially in the October issue of the Saba IP Bulletin.

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

Iraq - progress of trade mark applications

News from good friends SMAS of progress in examining trade mark applications in Iraq. Earlier posts on the progress of examination are here, here, and here. Applications with numbers in the 65,000 range are not expected to be examined for 3 or 4 years. Adjust your reminders accordingly, progress continues to be painfully slow.

Qatar - trade mark application examination delays

Further to earlier posts here, here, here, and here news from good friends SMAS that the Trade Mark Office in Qatar has moved to a new location and that applications can only be submitted when the Trade Mark Office re-opens after the move - which this part of the Empty Quarter hopes will be soon!

UAE - Dubai lawyers can act as public notaries

The subject of notarisation is one about which this part of the Empty Quarter has a keen interest as it affects daily practice across the region.  An article (here) in the latest Law Update magazine from good friends Al Tamimi & Co by Essam Al Tamimi is therefore of note. 

This part of the Empty Quarter welcomes the news that it may be possible to have documents notarised by local lawyers acting as Public Notaries.

The text of the article is reproduced here for those without access to the Al Tamimi & Co. website:

DUBAI LAWYERS CAN NOW ACT AS PUBLIC NOTARIES

by Essam Al Tamimi - e.altamimi@tamimi.com

By Law No. 4 of 2013. the Dubai Government has relaxed the rules concerning who may notarise documents for official purposes.

Before the law, only certain designated public officials could act as a Notary Public. These people are located in government buildings across Dubai (in Barsha, the Dubai Courts, Al Tuwar, Business Village and Hatta).

However under the new law, Dubai Courts can grant licenses to UAE lawyers to act as ‘Private Notaries’ . Private Notaries can provide notary public service to the community in Dubai.

According to the new law, a Private Notary has jurisdiction to do the following:

1. Notarize documents and contracts of any kind as required by the law;

2. Authenticate the signatures on documents and contracts

3. Verify the date of documents and contracts by assigning them consecutive numbers in the registers maintained for this purpose; record the date of their submission; and to sign and seal such documents with an official stamp.

4. Notarize and authenticate affidavits after the administration of the oath to the concerned parties and to register the same.

5. Verify the signatures contracts of marriage between Non-Muslims and the documents issued by Churches and legal references licensed in the Emirate.

6. Notarise the wills of Non-Muslims 

7. Perform any other competencies according to the applicable law in Dubai or which is entrusted to them by the Chief Justice or the Director of the Courts.

In order to act as a Private Notary a person must:

1. Have a UAE law degree.
2. Have no criminal convictions.
3. Be a UAE national (however the Director of the Courts may exclude any Arab national from this condition, provided that his work experience as notary public is not be less than ten years). 

The UAE Government will shortly be authorizing a number of UAE licensed advocates to act as a Private Notaries for the purposes of Court Notary services. These advocates have undergone training courses and have sworn an oath before the Chief Justice of the Court. The local advocates will then, from their own private offices, offer the services of a Public Notary for the purposes of Court proceedings, initially under the supervision of the Dubai Courts. All Private Notary procedures and notarization processes will be done electronically through a dedicated website linked to the Dubai Court Notary. While lawyers can receive clients in their office and assist in the notarization, the process (including signature) will be performed electronically, and payment will be done electronically also. 

Private Notaries are however restricted from notarizing the following documents or matters relating to them: 

1. To notarize or authenticate any transaction related to the personal status of Muslims or endowment

2. To notarize any transaction related to the establishment, transfer, change or removal of a right of ownership or any right in-kind on a property. 

3. To notarize or authenticate any transaction of which authentication or verification is under the competency of another authority.

4. To notarize or authenticate any transaction that includes a violation of applicable law, public order or public ethics. 

5. To reveal to third parties any information which the Private Notary has acquired due to his position.

6. To take any registers, documents, instruments or any such official papers from the place of work without a decision of the Chief Justice of the competent court, or to combine any of them with the file of a case under trial without the approval of the competent court;

8. To provide any entity, with the exception of the concerned parties, with information from the registers, except with a written request by a judicial or governmental competent authority.

9. To authorize the signature of a federal or local government employee on a certificate, document or other paper signed in the course of carrying out their duties.

In addition to the above, a Private Notary may not be engaged in any transaction if the person who requests the notarization is a relative or if the Private Notary has an interest in the matter. This is to avoid any conflict of interest. 

It is expected that the Notary services provided by Private Notaries will be launched in Dubai before the end of the year. So far, 21 Private Notaries have applied to provide this service throughout Dubai from a number of licensed law firms, including Al Tamimi & Co.

Currently the service is only available in Dubai, though the notarization of documents by Private Notaries will be accepted throughout the UAE.

A similar provision to in the new Dubai law exists within the UAE Federal law system (see Federal Law No.4 of 2013). It is likely that a similar practice will be introduced on the Federal level in the future.

The Private Notary service is one of Dubai’s recent initiatives to privatize certain sectors to make it convenient for the public to reach services that are essential to the public. This is in recognition of the growth of the city and its population and the need for these services to be provided more widely in the city.

- See more at: http://www.tamimi.com/en/magazine/law-update/section-8/october-4/dubai-lawyers-can-now-act-as-public-notaries.html#sthash.fhKD6QvW.dpuf

UAE - Trade Mark Office announcement about errors in publications

The Trade Mark Office in the UAE has a considerable workload and limited resources. The resulting pressure manifests in many ways. Recently the error rate in publications in the Trade Mark Journal by the Trade Mark Office and in registration certificates has been high. 

On 6 November 2014 the Trade Mark Office issued a circular to "Trademark Registration Offices and Respected Law Firms" stating: "All Offices and Agents Registration and law firms, starting from the number of bulletin (146) to all Offices and Agents review their scores published ARB and correct errors during the period of objection, a (30) days prior to the payment of the final Registration fee where the Ministry will not modify any Certificate after it has been issued."

This part of the Empty Quarter believes that the Trade Mark Office is seeking to ensure that all agents check the publications in the Trade Mark Journal and report any errors to the Trade Mark Office before the end of the opposition period to ensure that errors are corrected before the registration certificate is issued. This is to be commended. Agents should check the publications in a timely manner.  This part of the Empty Quarter hopes that the Trade Mark Office will make the required corrections so that the registration certificates can start to be issued with the correct details. 

UAE - new regulations from the Patent Office

News from good friends AGIP, Saba and SMAS about changes announced by the Patent Office.

The announcement from AGIP (here) reports:

UAE Issues New Regulations Related to Patent Examination Fees 29 Oct 2014

ABU-DHABI – The Patent Office at the United Arab Emirates recently issued new regulations related to patent examination fees.

By virtue to the regulations, all patent applications filed as from November 1, 2014, have to pay the examination fees upon filing the application, if all the formalities are met. Otherwise, the examination fees should be paid within 90 days from the filing date upon completing the formal requirements of the application.

The announcement from Saba (here), reports:

UAE: Substantive Examination Fees Due
November 03, 2014

The United Arab Emirates Patent Office declared on October 26, 2014 that the substantive examination fees for patent applications submitted between 2011 and 2013 will be due within 90 days from the date of announcement. Effective November 1, 2014, filing and examination fees will have to be paid for all new patent applications.

This comes in light of the country’s recent collaboration with South Korea, which has dispatched patent examiners to the UAE Patent Office to assist in the construction of an infrastructure to manage patent applications.

Should you have any questions, or require any additional information, please contact us at info@sabaip.com
The announcement from SMAS, by email, reports:

Dear Colleagues,

We would like to draw your attention that the UAE Patent Office has set in place a policy to finalize the pending applications accumulated during the past years, and accordinglyhas issued a notification to pay the Search and Substantive Examination fees for the pending applications for the years 2011, 2012 and 2013 and for the new applications within the prescribed period of 90 days starting from 1 November 2014 in order to proceed with the examination and search procedures.

Therefore, the UAE patent office requested applicants to:

1- Pay the official fees of US$1920 for the first Substantive Examination; otherwise the application will be considered abandoned.

2- Pay all the late and payable annuities till the date of this notification for the years 2011- 2013.

3- Submit a CD and a hard copy of the full specification in English language according to the last amendment submitted to the patent office.

4- Ensure that the submitted documents include the Bibliographic Data in English language according to the official forms of the UAE patent office.

A copy of the UAE Patent Office notification with the English translation thereof is enclosed herewith for your review.

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

SMAS kindly provide a translation of the announcement by the Patent Office which reads:

UNITED ARAB EMIRATES

MINISTRY OF ECONOMY

26 October 2014

Re: Payment of the Search and Substantive Examination Fees for Patent applications

Dear Sirs,

In the framework of cooperation between the UAE Patent Office and its strategic partners as well as the common carefulness towards the clients' interests and the work requirements, the Patent Office has set in place a strategy to finalize the applications accumulated during the past years.

Therefore, you are requested to pay the search and examination fees of the patent applications as per below:

• The pending applications for the years 2011, 2012 and 2013, within the prescribed period of 90 days from date of this notification.
• The new applications after completing all the required documents within the prescribed period of 90 days starting from 1 November 2014 in order to enable the patent Office to proceed with the examination and search procedures.

In order to proceed with the said procedures, the followings are requested:

1-      To Pay the official fee of 7000AED for the first Substantive Examination; otherwise the application will be considered abandoned.

2-      To pay all the late and payable annuities till the date of this notification for the years 2011, 2012 and 2013.

3-      To submit a CD and a hard copy of the patent description and abstract in English language according to the last amendment submitted to the patent office and it should be arranged and numbered.

4-      To ensure that the submitted documents include Bibliographic Data in English language and in the official form of the UAE patent office.

Note: This notification is considered as a legal notice for each application in order to proceed with the Substantive Examination and International Search.

Best regards,

Director of Industrial Property Department

Khalfan Ahmed Al-Suwaidi

UAE acceds to the Beijing and Marrakesh Treaties

News from WIPO today that the United Arab Emirates has acceded to both the Beijing Treaty on Audiovisual Performances and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.

Beijing Notification No. 6
Beijing Treaty on Audiovisual Performances
Accession by the United Arab Emirates

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the United Arab Emirates, on October 15, 2014, of its instrument of accession to the Beijing Treaty on Audiovisual Performances, adopted at Beijing on June 24, 2012.

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

October 15, 2014
Marrakesh Notification No. 3
Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled
Accession by the United Arab Emirates

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the United Arab Emirates, on October 15, 2014, of its instrument of accession to the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired or Otherwise Print Disabled, adopted at Marrakesh on June 27, 2013.

The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached in accordance with Article 18 of the said Treaty.

October 15, 2014

Libya - Patent Office resumes normal operations

Following the earlier post here reporting that the Trade Mark Office may resume normal operations there is the very welcome news here from good friends Saba & Co in their October 2014 Bulletin that the Patent Office has already resumed normal operations. The item reads:

The Libyan Patent Office has resumed operations as of September 15, 2014. There are indications that the Trademark Office may follow suit. We will be closely monitoring the situation and updating you accordingly.

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

Kuwait acceds to the Berne and Paris Conventions

News from WIPO via a newsletter from early September that:

Paris Notification No. 220Paris Convention for the Protection of Industrial Property
Accession by the State of Kuwait

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the State of Kuwait, on September 2, 2014, of its instrument of accession to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Stockholm on July 14, 1967, and as amended on September 28, 1979 (Paris Convention).

The Paris Convention will enter into force, with respect to the State of Kuwait, on December 2, 2014. On that date, the State of Kuwait will become a member of the International Union for the Protection of Industrial Property ("Paris Union"), founded by the Paris Convention.

September 2, 2014

Berne Notification No. 268Berne Convention for the Protection of Literary and Artistic Works
Accession by the State of Kuwait

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the State of Kuwait, on September 2, 2014, of its instrument of accession to the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886, as revised at Paris on July 24, 1971, and amended on September 28, 1979.

The Berne Convention will enter into force, with respect to the State of Kuwait, on December 2, 2014. On that date, the State of Kuwait will also become a member of the International Union for the Protection of Literary and Artistic Works ("Berne Union"), founded by the Berne Convention.

September 2, 2014

Morocco - Afro-IP reports on IP policy in Morocco

A report from mid-September from the ever interesting and useful Afro-IP blog continuing the useful review of IP polocies in Africa comes to Morocco. The report reads:


Morocco does not yet have an IP policy nor was this Leo able to find any information on the development of such a policy. She decided to poke about to see what the country has been up to recently in the hope that this would reveal what a Moroccan IP policy is likely to prioritise.

Morocco is party to a Free Trade Agreement (FTA) with the US (see full text here) and a co-operation agreement with the EPO (see here). Pursuant to her signature of the FTA, Morocco has a TRIPS- plus IP regulatory framework. Presumably also linked to this relationship with the US, Morocco was the only African country involved in the negotiation and conclusion of the ill-fated Anti-Counterfeiting Trade Agreement, which she signed in 2011 (see here). All of this may be an indicator that the country favours a strong (read TRIPS plus) regime which this Leo fears may not be appropriate for a developing country. However, the country has shown some appreciation of the need to have a properly nuanced IP regime that caters for users through its signature of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled. It remains to be seen when the county will ratify the treaty and how her IP policy would balance her FTA obligations with user and societal rights.

....................
WIPOLex entry here
for a discussion of the Morocco-US FTA see Omar Aloui 'Intellectual Property Rights' in Gary Clyde Hufbauer, Claire Brunel and Dean DeRosa (ed.s) Capitalizing on the Morocco-US Free Trade Agreement: A Road Map for Success (Policy Analyses in International Economics) (2009) pp147 - 162 ; full text here
Thank you, Afro-IP!

Libya - Trade Mark Office may restart operations

Further to earlier an post here with news in late August and early September that the Libyan Trade Mark Office had suspended operations there is news in the September 2014 newsletter from NJQ & Associates that thwe Libyan Trade Mark Office may restart operations in mid-October, after the Eid Al Adha holiday. 

Egypt and Oman sign a memorandum of understanding on substantive examination of patents

News from NJQ & Associates that Egypt and Oman have signed a memorandum of understanding on substantive examination of patents. The September 2014 issues of the NJQ & Associates newsletters says:

On 13 September 2014, the Head of the Academy of Scientific Research and Technology in Egypt and the Minister of Industry in Oman has signed a memorandum of understanding agreement with respect to cooperation in the field of patents and other intellectual property matters between both countries.

Accordingly, there will be an exchange of practices between both patent offices, and the Egyptian Patent Office (EGPO) will host researchers from the Oman Patent Office (OPTO) for training in substantive examination of patent applications in Oman. The EGPO will also send examiners to the OPTO for training purposes. Additionally, all pending patent applications in Oman will be examined by the EGPO.

Needless to say, the EGPO is an accepted examiner at WIPO and PCT offices.

For more information or assistance you may contact our Egypt office at egypt@qumsieh.com

The news has also been reported by Saba & Co in the October 2014 Bulletin here which reads:

The Omani and the Egyptian Patent Offices signed a memorandum of understanding on September 10, 2014 in which the two offices will work together towards the development of capabilities at the Omani Patent Office.

The Egyptian Patent Office will also act as the examining office for all pending and new patent applications filed in Oman. The Egyptian Patent Office is the only Arab office that serves as an International Search Authority, as well as an International Preliminary Examination Authority.

The expected procedure in brief is as follows: upon passing examination as to form, the examination fees will be due. Following examination and upon acceptance, the application will be published in the Official Gazette. There will be an opposition period of four months, after which, assuming no opposition is filed, the application will be granted and the granted patent will be re-published in the Official Gazette and the related registration certificate (Letters Patent) will be issued.

The official fees related to this new procedure will be officially published and the examination process further described as soon as additional steps have been completed.

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

Syria – legalisation of Powers of Attorney – update

Further news (earlier post here) from good friends AGIP about legalisation of Powers of Attorney in Syria in a news alert dated 3 October 2014:

DAMASCUS – Further to the press release statement of September 28, 2014, we would like to provide the following update on the legalization of the Power of Attorney in Syria.

After strenuous efforts, in liaison with other parties, we could persuade the Syrian Foreign Ministry to receive the Powers of Attorney with an earlier signing date up to one year backdate, and the Ministry will, thereafter, proceed with forwarding the POAs to the concerned security departments. The POA procedures will be as follows:

The Foreign Ministry receives the original POA giving receipt number and date, and then forwards this document to security departments for approval or rejection. If rejected, the original POA is retained with the Ministry. If accepted, the POA is further sent to the Interior Ministry, which in turn, will forward it to other security departments for clearance. Such procedures will take more than (4) months.

Syria – Legalisation of Powers of Attorney

News today from good friends AGIP about Powers of Attorney in Syria. This compounds the difficulties faced by rights holders in having Powers of Attorney legalised for use in Syria (securing rights in Syria reported here and here). The news from AGIP reads:

DAMASCUS – The Ministry of Foreign Affairs and Expatriate at the Syrian Arab Republic set new procedures for the legalization of Power of Attorney. According to the new procedures, the Ministry will not entertain the Power of Attorney which signing date exceeded three months.
The new procedures come in compliance with the Ministry’s regulations to obtain a clearing approval from the Boycott Office on the Power of Attorney before proceeding with the procedures, without yet coordinating such a request with the Boycott Office.
Accordingly, with the new imposed request, the Ministry is reluctant to receive new Powers of Attorney until they receive further input from the Boycott Office or other concerned authority.
We would like to point out that the Powers of Attorney which we recently received from our clients with their applications are suspended until the Ministry issues clear instructions. The clients may file their applications without the Power of Attorney in order to obtain an early filing date. However in case the local procedures are delayed beyond 6 months (which is the permissible period to submit the missing documents supporting the application) or the applicant name is not approved by the authorities; the applications will go abandoned.
Therefore, our clients, at their discretions, can either file their applications in Syria and later submit the Power of Attorney after its local super-legalization - at the hope that the POA procedures are completed within the ensuing (6) months, or delay the filing until the local POA procedures are successfully completed.
It is worth mentioning that the aforesaid piece of news does not cover those companies, for which we already hold legalized Powers of Attorney on their behalf as we can smoothly reproduce true copies of the previous POAs on file locally.
As for the current POAs, which we have just received from our clients and the Foreign Ministry is still reluctant to entertain: in case the 3-month POA validity from the signing dates lapses, we will need fresh legalized POAs.
Our Syria office is following up the matter with concerned authorities, and will keep our clients posted about any development.
This part of the Empty Quarter hopes for better news soon.

UAE – Company searches

There is no single company register in the United Arab Emirates. Companies are registered in one of the emirates, generally by the local Department for Economic Development. Where there are free zones, the company may be registered by the free zone authority. Companies will then generally be required to register with the Chamber of Commerce in that emirate.  Generally the local Departments for Economic Development and / or the Chambers of Commerce will make some information about the company available either on a web page or in response to a request in writing.

The Dubai Department for Economic Development makes some information available on its web site. Additional information has been available on written application to the Dubai Chamber of Commerce.

News reaches this part of the empty quarter that the DCCI has recently decided to amend the information it makes available. The DCCI will no longer provide information about the shareholders and shareholdings in a company. This part of the empty quarter cant help but feel that this does not help those contemplating some form of relationship with or action against a company in Dubai.  There is also news that a similar change in practice has taken place in Abu Dhabi.

UAE DRP - WIPO decsion - huawei.ae

News from WIPO (here) of the decision to order the transfer of the huawei.ae domain from a local registrant to Huawei.

The full wording of the decision is:

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Huawei Technologies Co. Ltd. v. Jingeng Hong

Case No. DAE2014-0004

1. The Parties

The Complainant is Huawei Technologies Co. Ltd. of China, represented by Muscovitch & Associates, Canada.

The Respondent is Jingeng Hong of the United Arab Emirates (“UAE”).

2. The Domain Name and Registrar

The disputed domain name is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2014. On July 28, 2014, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On July 31, 2014, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2014. The Center received several informal email communications from the Respondent on August 6 and 7, 2014. The Respondent did not file a formal Response.

The Center informed the parties on August 27, 2014, about the Commencement of the Panel appointment process. On August 27, 2014, the Complainant submitted unsolicited supplemental filings to the Center, and on August 28, 2014, the Respondent sent further unsolicited email communications to the Center.

The Center appointed Sebastian M.W. Hughes as panelist in this matter on September 2, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 2, 2014, the Respondent sent a further unsolicited email communication to the Center.

4. Factual Background

A. Complainant

The Complainant is a company incorporated in China and the owner of numerous registrations worldwide for the word and device trade mark HUAWEI (the “Trade Mark”), the earliest dating from 1997, including registrations in the UAE.

B. Respondent

The Respondent is an individual located in the UAE.

C. The Disputed Domain Name

The disputed domain name was registered on November 13, 2013. It has not been used in connection with an active website.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant is a global provider of information and communications technology under the Trade Mark.

The Complainant employs over 150,000 people worldwide and its products are sold in 170 countries worldwide.

The disputed domain name was previously registered by one of the Complainant’s subsidiaries, before its registration was inadvertently allowed to lapse in 2012.

The disputed domain name is confusingly similar to the Trade Mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant. The Respondent is not using the disputed domain name in respect of a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name.

The Respondent is a cybersquatter who has demonstrated a pattern of registering “.ae” domain names which correspond with the brand names of well-known Chinese companies, including , , , and .

The disputed domain name has been registered and used in bad faith. The Trade Mark is a well-known mark and, given the notoriety of the Trade Mark, the Respondent must have known of the Complainant and of the Trade Mark when it registered the disputed domain name.

In response to a letter of demand from the Complainant’s representatives requesting transfer of the disputed domain name, the Respondent claimed to be in the business of “buying and selling domain names and network space, domain name investment, and creating websites”, and refused to transfer the disputed domain name to the Complainant on the basis of “first come, first served”. The Respondent also claimed “And we registered more domain names including but not limited to huawei.ae”.

B. Respondent

The Respondent did not file a formal Response, but asserted in its informal email communications that the disputed domain name had been legally registered, and that the Respondent had legitimate rights in the disputed domain name.

6. Discussion and Findings

6.1 Supplemental Filings

Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.

As neither party has provided sufficient reasons to satisfy the above criteria, the Panel determines that it will not admit the supplemental filings in this proceeding.

6.2 Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 6(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by many years.

Apart from the country-code Top Level Domain “.ae”, the disputed domain name is identical to the Trade Mark.

The Panel therefore finds that the disputed domain name is identical to the Trade Mark and holds that the Complaint fulfils the first condition of paragraph 6(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 6(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the burden is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with abona fide offering of goods or services. The Respondent has adduced no evidence to show that the disputed domain name has been actively used.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 6(a) of the Policy.

C. Registered or Used in Bad Faith

Pursuant to paragraph 6(b)(ii) of the Policy, the following conduct amounts to registration or use of a domain name in bad faith on the part of a respondent:

ii) You have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.

The evidence clearly shows that the Respondent has engaged in a pattern of registering “.ae” domain names which are identical to the trade marks of several well-known Chinese companies. The Respondent has tacitly admitted this fact in its response to the Complainant’s letter of demand. Furthermore, the Respondent has steadfastly refused to transfer the disputed domain name to the Complainant.

For the foregoing reasons, the Panel concludes that the disputed domain name has been registered or used in bad faith. Accordingly, the third condition of paragraph 6(a) of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.

Sebastian M. W. Hughes
Sole Panelist
Dated: September 16, 2014

Turkey - public holidays

News from good friends Deris that there are nationwide public holidays in Turkey from 3rd October to 8th October 2014 and on 28th and 29th October 2014.

Syria - legalisation of documents - an update

Follow the earlier post here about the difficulties of and a possible solution for legalisation of documents for use in Syria here is an update.

The Lebanese Consulate in the USA has recently declined to legalise a document destined for Syria. The Lebanese Consulate in the UK has recently legalised a document destined for Syria.  While past acts are no indication of future performance, this part of the Empty Quarter hopes that the Lebanese Consulate in the UK will keep legalising!

Libya - Trade Mark Office suspends operations

News from good friends SMAS in late August, and AGIP and Abdelhadi in early September that the Libyan Trade Mark Office has once again suspended all operations due the unrest in the country.

This part of the Empty Quarter hopes for peace and stability for the Libyan people.

Eid Al Adha 2014 holidays

News from good friends Kadasa & Partners that the public sector will be closed in Saudi Arabia from Sunday 28 September 2014 to Thursday 9 October 2014. With the weekend now falling on Friday and Saturday this results in the last working day being Thursday 25 September until Sunday 12 October 2014. These closures will affect the Saudi Trade Mark and Patent offices as well as the GCC Patent Office.

The UAE government has announced (here) that all government departments will be closed on Sunday 5th and Monday 6th October for the Edi Al Adha. The Trade Mark and Patent Offices will re open on Tuesday 7th October 2014.

News from good friends Abdelhadi IP that the Egyptian Patent & Trademark Offices and the Courts will be closed until Monday 6th October, reopening, along with their offices, on Tuesday 7th October 2014. 

News from good friends SMAS that the Yemeni Trade Mark and Patent offices will be closed from Friday 3 October to Saturday 11 October, reopening in Sunday 12 October.

News from good friends SMAS that the Iraqi Trade Mark and Patent offices will be closed from Friday 3 October to Saturday 11 October, reopening in Sunday 12 October.

Eid Mubarak!

South Sudan trade mark news

A report from the ever interesting and useful Afro-IP blog reads:

A news release from the Talal Abu-Ghazaleh Intellectual Property Group, citing information received from Lysaght & Co., brings news that the South Sudan Ministry of Justice has taken a decision to be guided by the Sudan Trade Marks Act of 1969, relying on Article 198 of the Transitional Constitution of the Republic of South Sudan 2011. This latter Act states that "All current Laws of Southern Sudan shall remain in force and all current institutions shall continue to perform their functions and duties, unless new actions are taken in accordance with the provisions of this Constitution". 

A draft Trade Marks Bill is reported to be currently before Parliament. However, until it is passed, the provisions of the old Sudanese Trade Marks Act are being followed, and it is now possible to file applications with the Ministry of Justice. Since any trade marks filed now will be enforceable when the new law comes into force, it is recommended that anyone wishing to protect their trade marks in South Sudan should do so as soon as possible. 

The Berne Convention, Yemen and the UAE

News received in July 2014 from WIPO that:

Yemen has done something to do with the Berne Convention.  More detail here: Berne Convention for the Protection of Literary and Artistic Works – Declaration by the Republic of Yemen Relating to Articles II and III of the Appendix to the Paris Act (1971)

The United Arab Emirates has, also, done something to do with the Berne Convention.  More detail here: Berne Convention for the Protection of Literary and Artistic Works - Declaration by the United Arab Emirates Relating to Articles II and III of the Appendix to the Paris Act (1971)

Berne Notification No. 266

Qatar trade mark application examination delays

Further to earlier posts here, here, and here, news from good friends SMAS in July 2014 that the Qatari Trade Mark Office was examining applications with numbers in the 78000 range.

Yemen joins the World Trade Organisation

News from good friends Saba & Co in their July 2014 IP Bulletin that Yemen has joined the World Trade Organisation. The full report is available on their website here and is reproduced for ease of reference here:

Yemen became the 160th member of the World Trade Organization on June 26, 2014. The country now observes the TRIPS Agreement. Other WTO members in the region are Bahrain, Djibouti, Egypt, Jordan, Kuwait, Mauritania, Morocco, Oman, Qatar, Saudi Arabia, and Tunisia. Countries with observer status are Algeria, Iraq, Lebanon, Libya, Sudan, and Syria. Yemen is also affiliated with the World Intellectual Property Organization, Paris Convention, and Berne Convention.

New patent filing requirements in Bahrain

News from good friends Saba & Co in their July 2014 IP Bulletin that there are new requirements for patent filing in Bahrain. The full report is available on their website here and is reproduced for ease of reference here:

The Bahraini Patent Office introduced new requirements for supporting patent filings, including national and PCT entries that were implemented on May 1, 2014. The additional requirements are retroactive to pending applications; with the BPO issuing notices and setting a deadline for completing the requirements for the pending cases.

Applicants are required to submit the Arabic translation of the complete specifications as well as a legalized/Apostilled Power of Attorney for PCT national stage entries. A copy of the international publication and the complete specifications in English are also required. The documents must be submitted during a non-extendable three month period from the filing date in Bahrain. A simple copy of the POA is required at the time of filing until the legalized original is filed.

In accordance with the new requirements, the BPO began requesting a signed inventor assignment form, in addition to a simple copy of the priority document that does not have to be certified, a copy of the PCT specifications, both having to be in English and Arabic (if different than the priority and/or the specifications being filed), and in addition a copy of the International Search Report.

The same deadline of three months applies for the submission of these supporting documents, whereas four months for the Arabic translation of the specifications. The requirements also apply to all pending patent applications in Bahrain.

The table offers a summary of these requirements, including national applications. This may signify the BPO’s way of indicating that it is gearing towards beginning the examination and granting process of patent applications; however there have not been any concrete or official declarations regarding this.

GCC Trade Mark Law published in Saudi Arabia

News from good friends Saba & Co in their July 2014 IP Bulletin that the GCC Trade Mark Law has been published in Saudi Arabia. The full report is available on their website here and is reproduced for ease of reference here:

The revised GCC trademark law was recently approved for publication in the Kingdom of Saudi Arabia. The GCC trademark law was initially ratified in 2006 and was approved by the Saudi government in 2007. The governments of Oman and Bahrain, however, could not approve the draft at that time due to their US Free Trade Agreement obligations. The GCC Trade Cooperation Committee had to convene more frequently to address concerns raised by Bahrain and Oman. The draft GCC trademark law was then further revised following the assemblies that had taken place. The aim of the GCC Trademark Law is to replace the local trademark laws of the member states – which are: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates. The result is a unified implementation of the trademark regulations. Unlike the GCC Patent Law, the GCC Trademark Law is not expected to offer a unified filing system. Trademark applications would still be filed separately in each GCC member state for protection. The GCC Law will be exacted once implementating regulations are issued, which is not in the foreseeable future. The fifty-article GCC Trademark Law outlines the general directives and rulings governing trademark registration, renewal, assignment, and cancellation procedures in the GCC countries. The main features of the law, as approved by the GCC Supreme Council, are as follows:

• The definition of a trademark has been broadened to include sound and smell marks
• A trademark may be individual or collective
• A separate application is required for each class
• Claim of priority, based on an earlier-filed foreign application, is possible
• Trademark applications accepted by the Registrar will be published for opposition purposes.
• Oppositions must be filed within 60 days from publication date
• Trademark registrations are valid for 10 years from filing date and are renewable for like periods.
• There is a grace period of six months for late renewals
• A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of five consecutive years after registration
• The Law shall recognize famous trademarks that are well-known in the GCC member states and shall ensure protection thereof even if the marks are not registered
• The Law gives the right to trademark owners to initiate civil and criminal actions against any infringing party. Penalties include a maximum of five year imprisonment and payment of fines
• of up to US $ 270,000

EU Customs enforcement in 2013

The European Commision has released its report on enforcement by Customs against infringement of intellectual property rights in 2013. The report is available here. There is interesting information on countries from which goods have originated. In the region this blog seeks to cover the country mentioned the most is the UAE. Other countries mentioned are Egypt, Morocco, and Syria.

Saudi Customs requires letter from the rights holder confirming the results of the examination

News in July 2014 from good friends Kadasa & Partner that the Ministry of Finance, Customs Department, Customs Affairs, General Directorate of Records & Customs Tariff, Department for Anti-commercial Fraud & IP Protection has, in an undated announcement, reported that the His Excellency the Director General of the Customs Department has issued a directive requiring that a letter from the rights holder be submitted by the local lawyer when confirming whether goods in a shipment are genuine or counterfeit. The letter must be signed and stamped.

Eid Al Fitr 2014

Eid Mubarak!

Egypt - the Patent and the Trade Mark offices will be closed from Monday 28 July to Wednesday 20 July 2014.

GCC - the GCC Patent office, based in Saudi Arabia, will be closed from 22 July to Saturday 2 August, reopening on Sunday 3 August 2014.

Saudi Arabia - the Patent and Trade Mark offices will be closed from 22 July to Saturday 2 August, reopening on Sunday 3 August 2014.

United Arab Emirates - the Patent and Trade Mark offices will be closed from 25 July to Saturday 2 August, reopening on Sunday 3 August 2014.

European patent validation: EPO signs pact with Tunisia

A very useful note on this news from the Afro-IP blog here.

UAE - DDED - raising money for charity by shredding counterfeit bags

A very interesting story on Emirates 24/7 about an initiative of the Dubai Department for Economic Development to raise awareness of counterfeit goods while raising money for charity.