Algeria: Protecting Creativity alongside China
Monday, 27 October 2014
Algeria and China recently signed a memorandum of understanding on copyright protection. The memorandum outlines the framework of the comprehensive strategic partnership of cooperation between the Algerian National Office of Copyright and Neighboring Rights and the National Copyright Administration of China.
UAE: Signing of the Beijing Treaty
Monday, 27 October 2014
United Arab Emirates recently signed the Beijing Treaty on Audiovisiual Performances. The treaty regulates copyright for audiovisual performances and expands the performers' rights.
Other signatories in the region include Cyprus, Djibouti, Jordan, Morocco, Qatar, Syria, and Tunisia. The treaty is expected to enter into force once it has been ratified by 30 eligible parties.
UAE: Signing of the Marrakesh Treaty
Monday, 27 October 2014
United Arab Emirates recently signed the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.
As the name suggests, the treaty is concerned with the enablement of copyright exceptions to facilitate the creation of accessible versions of books and other copyrighted works.
Other signatories in the region include Cyprus, Djibouti, Iran, Jordan, Lebanon, Morocco, Sudan, Tunisia, and Turkey.
Iraq: Accession to the Singapore Treaty
Wednesday, 15 October 2014
Iraq has recently acceded to the Singapore Treaty on the Law of Trademarks. The treaty will enter into force on November 29, 2014 and will establish common standards for procedural aspects of trademark registration and licensing in the country.
Other signatories in the region include Lebanon and Turkey.
MENA: Stitching the Seams to Protect the Fashion Industry
Thursday, 2 October 2014
Maddock & Bright IP Law Office would like to inform its Clients, Friends & Colleagues that innovation and creativity are penchants of the fashion industry; an industry that dictates style worldwide. A fashion item may even transcend its physical form and be hailed as a trend setter and an inspiration for decades. The process of production in the fashion industry relies on a substantial investment of both inventiveness and capital. This feature offers trademark owners in the fashion industry relevant information on trademark protection in the Middle East and North Africa region.
Classification
There are no specific requirements when it comes to the registration of marks in classes that the fashion industry may be interested in, such as classes 3, 9, 14, 18 and 25. Concerning the specification of goods, some Trademark Offices, will accept an application claiming the whole class without specifying the particular goods. The use of class headings of a particular class constitutes a claim to all of the goods falling within this particular class and implicitly covers any goods directly related to the class headings - that is, covers more than the literal meaning of the class headings. Other TMOs, such as those of Jordan, Oman, and Sudan, request the applicant to specify the goods in the class wherein the actual language used in describing the goods will define the parameters of the scope of protection of a registration.
Search and Examination
Search among related classes, such as class 18 and a class 9, 14 and 25, is not performed on an ex-officio basis. When it comes to examination, a mark is not usually rejected on relative grounds based on the existence of a prior mark in a related class unless the mark is considered to be well-known in the country. Unlike common-law countries, MENA countries have no express anti-dilution provisions in their trademark laws. Nevertheless, many countries have introduced provisions to their trademark laws on the likelihood of confusion between conflicting marks as part of their implementation of the TRIPS Agreement.
Enforcement
Trademark owners should be willing and ready to adopt a trademark protection model that incorporates both the legal and regulatory approaches in order to formulate a well-established trademark protection strategy.
Legal Approach
To claim infringement, the trademark owner must establish that perpetrators are using their registered mark in connection with the sale or advertising of goods without consent and that this use is likely to cause confusion. Infringement is usually proven if the marks are sufficiently similar that consumer confusion can be established.
Administrative Approach
It is possible in some countries to apply administrative procedures in the fight against infringements. This is done by filing a complaint with the competent authorities such as the Commercial Anti-Fraud Department in Saudi Arabia, and the Dubai Economic Department in the UAE. All these bodies usually consider complaints against counterfeits or look-alikes only, and raids are carried out if the findings are conclusive.
Border Measures
Customs recordal procedures are available in Algeria, Morocco, Sudan, Tunisia, and the UAE. This process allows customs officials to be on the lookout for counterfeit goods and take, ex officio, prompt and proactive action to confiscate them, thus avoiding judicial action delays.
Signboard Requirements and Protection of Marks in Arabic
An important aspect to consider is the signboard requirements in countries of the region. Egypt, Jordan, Saudi Arabia, UAE, Oman, Qatar and Syria require that trademarks appear on signboards in Arabic - either by law or by common practice. This implies that the use of an Arabic mark will become necessary and registration is recommended. If a trademark has been registered, then it is much easier to demonstrate and to enforce rights through an infringement action.
Lists where registering an Arabic trademark is advisable, despite not being a requirement by law:
Lebanon
Does the law require Arabic to be on the signboards?
No
Is registration in class 35 in Arabic advisable?
No
Bahrain
Does the law require Arabic to be on the signboards?
No - can be in Arabic, Latin, or a combination of both
Is registration in class 35 in Arabic advisable?
No
Egypt
Does the law require Arabic to be on the signboards?
Arabic and Latin
Is registration in class 35 in Arabic advisable?
Yes
Jordan
Does the law require Arabic to be on the signboards?
Yes - the mark in Latin can also be displayed along with the Arabic mark
Is registration in class 35 in Arabic advisable?
Yes
UAE
Does the law require Arabic to be on the signboards?
Yes - the mark in Latin can also be displayed along with the Arabic mark
Is registration in class 35 in Arabic advisable?
Yes
Oman
Does the law require Arabic to be on the signboards?
Yes - the mark in Latin can also be displayed along with the Arabic mark
Is registration in class 35 in Arabic advisable?
Yes
Qatar
Does the law require Arabic to be on the signboards?
Yes - the mark in Latin can also be displayed along with the Arabic mark
Is registration in class 35 in Arabic advisable?
Yes
Kuwait
Does the law require Arabic to be on the signboards?
No
Is registration in class 35 in Arabic advisable?
No
Syria
Does the law require Arabic to be on the signboards?
Yes
Is registration in class 35 in Arabic advisable?
Yes
Qatar: Cracking Down on Cybercrime
Wednesday, 17 September 2014
Qatar issued Law no. 14 of 2014 in an effort to combat cybercrime and set punishments for offences committed on the Internet.
The law also alludes to the protection of intellectual property. Chapter 2, Section 5, Article 13 of the law describes the penalties of infringing IP rights will result in imprisonment up to the max of three years and a fine of 500,000 Qatari riyals (US $137,300).
This move comes as an addition to the already established GCC cybercrime law, which was issued last year.
Libya: Patent Office Resumes Normal Operations
Monday, 15 September 2014
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.
Kuwait: Accession to the Berne Convention
Thursday, 11 September 2014
Kuwait acceded to the Berne Convention for the Protection of Literary and Artistic Works on September 2, 2014. The Convention will enter into force on December 2, 2014.
Other states in the region that are part of the Convention are Algeria, Bahrain, Cyprus, Djibouti, Egypt, India, Jordan, Lebanon, Libya, Morocco, Oman, Qatar, Saudi Arabia, Syria, Tunisia, United Arab Emirates, and Yemen.
Kuwait: Accession to the Paris Convention
Thursday, 11 September 2014
Kuwait became the 176th country to accede to the Paris Convention on September 2, 2014. The Convention will enter into force on December 2, 2014.
With Kuwait’s accession, all the Gulf Cooperation Council member countries have now acceded to the Convention. This paves the way for the GCC Patent Office to also deposit its instruments for accession. Although both the Kuwaiti and the GCC patent laws were aligned in some aspects with the Convention practices, such as claiming a 12-month priority on novelty, this move is an indication of Kuwait’s desire to further align itself with the international IP community in general, beyond its WTO membership and accompanying TRIPS agreement.
Until now, the Kuwaiti Patent Office has acted as a deposit system for patents. Patent applications filed with the Kuwaiti Patent Office were examined as to form until such time as the regulations are published and further prosecution through decision is implemented.
As for trademarks, the Kuwaiti Trademark Office has still not clearly defined the requirements for submission of the priority document. A certified copy will be the standard procedure but the time frame for filing the document has not been defined yet.
With this accession, all Arab countries are now members of the Convention, with the exception of Gaza and the West Bank.
MENA: A Closer Look at Design Protection
Monday, 1 September 2014
Local Design Laws: Design laws, among other norms of positive legal systems such as trademark and patent laws, were introduced in the past in almost all of the countries of our region, either by their own codes or by including them in general codes. Basically, such laws explore and discuss the designs protected, the duration of protection, the transfer of rights, the procedures, penalties, and remedies, and the scope of protection. International Design Conventions: Only Egypt, Morocco, Syria, and Tunisia from our region are members of the Hague Agreement Concerning the International Registration of Industrial Designs. Most countries are members of the WTO, which, of course, extends to the TRIPS agreement. TRIPS, Part II address each intellectual property right in succession.
Examination:
Novelty is a requirement in all jurisdictions except for Algeria, Cyprus, Gaza, Lebanon, Libya, Morocco, Sudan, Syria, Tunisia, Turkey, West Bank, and Yemen.
Applications with Multiple Figures:
It is possible to submit applications with multiple figures in all jurisdictions except for Ethiopia, Gaza, India, Iran, and Pakistan.
The list below includes information on the duration, examination, and renewal of designs in addition to applications with multiple figures (if possible) in the MENA region.
Algeria
Duration
1 year from filing date
Renewal
For one term of 9 years
Bahrain
Duration
10 years from filing date
Renewal
For one term of 5 years
Cyprus
Duration
5 years from filing date
Renewal
For four terms of 5 years each
Djibouti
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years each
Egypt
Duration
10 years from filing date
Renewal
For one term of 5 years with a 3-month grace period
Ethiopia
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years each
Gaza
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years each
India
Duration
10 years from filing date
Renewal
For one term of 5 years
Iran
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years each
Iraq
Duration
7 years from filing date
Renewal
Not possible
Jordan
Duration
15 years from filing date
Renewal
Not possible
Kuwait
Duration
10 years from filing date
Renewal
For one term of 5 years
Lebanon
Duration
25 years from filing date
Renewal
For one additional term of 25 years
Libya
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years
Morocco
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years
Oman
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years each
Pakistan
Duration
10 years from filing date
Renewal
For two consecutive terms of 10 years
Saudi Arabia
Duration
10 years from filing date
Renewal
Not possible
Sudan
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years
Syria
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years each
Tunisia
Duration
5, 10 or 15 years from filing date
Renewal
For two consecutive periods of 5 years, where the initial duration was 5 years and for a further period of 5 years where the initial duration was 10 years
Turkey
Duration
5 years from filing date
Renewal
For four consecutive terms of 5 years each
UAE
Duration
10 years from filing date
Renewal
Not possible
West Bank
Duration
5 years from filing date
Renewal
For two consecutive terms of 5 years each
Yemen
Duration
10 years from filing date
Renewal
Not possible
OAPI: Protecting New Plant Varieties
Monday, 1 September 2014
The African Intellectual Property Organization became the seventy-second member of the International Union for the Protection of New Varieties of Plants. The Convention entered into force on July 10, 2014. Other members of UPOV in the MENA region are Jordan, Morocco, Oman, Tunisia, and Turkey.
The list below sums up information on Plant Variety Rights in MENA countries. It lists the countries where Plant Variety Applications may be filed and the relevant Law in addition to the annuities and protection term of each application.
Cyprus
Annuities
The implementing regulations of Law 21 (I) / 2004 have still not been issued yet.
Protection Term
The implementing regulations of Law 21 (I) / 2004 have still not been issued yet.
Egypt
Annuities
-
Protection Term
25 years from date of grant for trees andgrapevines, and 20 years for other agriculturalproducts.
India
Annuities
-
Protection Term
25 years from date of grant.
Iran
Annuities
-
Protection Term
18 years from the date of grant.
Jordan
Annuities
A maintenance fee is due annually and is payable during thefirst 4 months of each year following the year during whichthe plant variety is granted.
Protection Term
25 years from date of filing for trees andgrapevines, and 20 years for other agriculturalproducts.
Morocco
Annuities
A maintenance fee is due annually on the anniversary of thedate of grant.
Protection Term
20 years from date of grant for species of greatculture, and 25 years for species of arboricultureand vine.
Saudi Arabia
Annuities
A maintenance fee is due annually and is payable duringthe first 3 months of each year following the year the plantvariety application was filed with a further grace period of 3months (April-June) with payment of a surcharge.
Protection Term
25 years from date of filing for trees andgrapevines, and 20 years for other agriculturalproducts.
Tunisia
Annuities
New plant variety certificates shall be subject to the paymentof an annual fee of which the amount and conditionsof payment and utilization shall be laid down by a Decree.
Protection Term
The breeders’ rights shall subsist for 20 years forordinary varieties and for 25 years for varietieswhere development of the production elementsnecessitates longer timescales. Those periods shallbegin to run as from the grant of the new plantvariety certificate.
Turkey
Annuities
A maintenance fee is due annually and is payable in Januaryof each year following the date of grant.
Protection Term
25 years from the date of grant for ornamentals,vegetables, and field crops, and 30 years from thedate of grant for trees, vines, and potatoes.
UAE
Annuities
The implementing regulations of Law 17/2009 have still not been issued yet.
Protection Term
The implementing regulations of Law 17/2009 have still not been issued yet.
São Tomé and Príncipe: Taking a Seat at ARIPO
Monday, 1 September 2014
São Tomé and Príncipe became the 19th member of the African Regional Intellectual Property Organization on May 19, 2014.
Other member states are: Botswana, Liberia, Malawi, Namibia, Sierra Leone, Swaziland, Tanzania, Uganda, Zimbabwe, and Sudan.
Trademarks:
Filing Requirements:
1. Power of attorney, simply signed. A separate power is required for each application.
2. Copy of priority document, if priority is claimed, with verified French or English translation.
3. 10 prints of the mark for each application. Items 1 and 3 must be submitted at the time of filing. Document 2 may be submitted within 3 months from filing date.
Classification:
The International Classification of Goods and Services (9th Edition) is followed. A single application may include several classes. However, the same application may not include both goods and services.
Opposition:
Registrations are published in the Official Gazette. Oppositions may be filed within 6 months from publication date.
Protection Term:
Trademark registrations are valid for 10 years from filing date and are renewable for like periods.
Documents Required for Renewal:
Power of attorney, simply signed.
Use Requirements:
Use of a trademark is not required for registration or renewal of a mark. However, a trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 consecutive years preceding the date of filing for cancellation.
Search:
An official search can be conducted for word marks and devices. A separate application is required for search in each class. The search report discloses similar and identical trademark registrations as well as applications.
Assignment:
Trademark rights may be assigned with or without the goodwill of the business concerned.
Documents required:
1. Power of attorney from the assignee, simply signed.
2. Original or certified copy of deed of assignment.
Change of Name/Address
Documents required | Change of Name:
1. Power of attorney, simply signed.
2. certificate of change of name, simply signed with verified French or English translation.
Documents required | Change of Address:
- Power of attorney, simply signed.
Licensing:
License recordal is compulsory in order to be effective against third parties.
Documents required:
1. Power of attorney, simply signed.
2. Original or certified copy of license agreement.
Merger:
Documents required:
1. Power of attorney, simply signed.
2. Original or certified copy of certificate of merger.
Marking:
Marking is optional.
Registration Time Frame:
The time frame for completing the registration process is 8 to 12 months.
Patents:
Filing Requirements:
1. Power of attorney, simply signed.
2. 1 set of the specification, claims, and an abstract in English.
3. 1 set of the formal drawings, if available.
4. Copy of priority document, if priority is claimed.
5. Deed of assignment.
- Item 1 must be submitted at the time of filing or within 2 months from filing date.
- Items 2 and 3 must be submitted at the time of filing.
- Item 4 must be submitted within 3 months from filing date. Item 5 can be submitted once available.
Opposition:
No provisions.
Search:
Possible.
Examination:
As to form, novelty, inventiveness and industrial applicability.
Annuities:
A maintenance fee is due annually on the anniversary of the filing date.
Protection Term:
The term of protection is 20 years from filing date.
Compulsory License:
A patent has to be worked. Working of the invention in each designated country is subject to the provisions of the applicable national law.
Yemen: Similarity of Marks
Monday, 1 September 2014
the Court of First Instance in Yemen ruled in favor of Arla Foods, owner of the trademark DANO in class 29 against Salem Abdul Rahman Bajersh Corporation for registering the trademark SANO in the same class. The Court of First Instance in Yemen ruled in favor of Arla Foods, owner of the trademark DANO in class 29 against Salem Abdul Rahman Bajersh Corporation for registering the trademark SANO in the same class. The Court decided that the trademark SANO is an imitation of DANO, causing damage to the interests of Arla Foods and leading to unfair competition. The verdict reached ordered the defendant to cancel the Registrar’s decision no. 13 which accepted the trademark SANO (registration number 44193) and bear all Court expenses. The Court decided that the trademark SANO is an imitation of DANO, causing damage to the interests of Arla Foods and leading to unfair competition. The verdict reached ordered the defendant to cancel the Registrar’s decision no. 13 which accepted the trademark SANO (registration number 44193) and bear all Court expenses.
Jordan: Administrative Courts to Replace the Higher Court of Justice
Thursday, 21 August 2014
A Royal Decree has been issued ratifying the Administrative Courts Law No. 27 of 2014. The Law, which was published in the Official Gazette on August 17, 2014 and comes into force after 60 days from its publication in the Official Gazette, abolishes and replaces the Higher Courts of Justice Law No. 12 of 1992 and establishes a two-degree adjudication system for administrative disputes.
Whilst the New Law introduces some major changes to the administrative judiciary system, most of the essential features of the Higher Court of Justice Law are maintained.
According to the new Law which is due to enter into force on October 17, 2014, all administrative decisions, including those issued by governmental bodies such at the Trademarks and Patents office, are now subject to appeal before the “Administrative Court” within 60 days as of the day of issuance of the appealed decision.
While decisions issued by the Higher Court of Justice were final and cannot be appealed, according to the new law, all decisions issued by the Administrative Court shall be subject to appeal before the “Higher Administrative Court” within 30 days of the date of issuance of the appealed decision.
By virtue of article 39 of the Law, all administrative cases currently under consideration by the Higher Court of Justice are to be referred to the Administrative Court as of October 17, 2014 from the point where it was left off.
