News 2016       | March & May

Jurisdictional Update in Bahrain

30 May 2016

Bahrain has increased the official fees to conform to the Law 6/2016 of the GCC Trade Mark Law and its Implementing Regulations which has come into immediate effect as of May 29, 2016. The new official fees for filing up to registration for a trademark registration have dramatically increased from 330 USD to 1722 USD. The new official fees will cover all trademarks matters filed from 29 May 2016 as well as retroactively for pending trademarks applications as regards their publication and registration fees: for a copy of the new official charges as circulated by the Ministry is available here.
Accordingly, Maddock & Bright IP Law Office is amending its schedule of charges with this effect in order to keep it available upon request.

Furthermore, the Bahraini Trademarks Office has issued new stipulations to enforce the Article 11 of Executive Regulations of GCC Trademark Law issued with the decision No. 65/2016, according to which the accepted trademark applications will be published on the official website (www.moic.gov.bh) of the Ministry of Industry, Commerce and Tourism every Thursday.

All parties have the right to oppose the registration of any trademark within a period of 60 days from the publication date by informing the TMO in writing and by payment of official fees in relation thereto.

On a related note, we wish to kindly draw your attention to the Gazette page to our website which provides recent gazettes of all Arab jurisdictions for your kind reference.

Jurisdictional Update in Kuwait

29 May 2016

The Kuwaiti Ministry of Trade and Industry approved Law no. 115 of 2016 on the regulations implementing patent Law no. 71 of 2013. The new Law was published on April 3, 2016 and has come into effect; the said law is the GCC Patent Law.

Accordingly, the Kuwaiti Patent Office has stopped accepting new patent applications and applicants are requested to seek patent protection by filing with the GCC regional patent office. Certificates of patents granted by the GCC Patent Office secure legal protection of the inventor's rights in all member states of the GCC which comprises the State of Bahrain, State of Kuwait, State of Qatar, Sultanate of Oman, Kingdom of Saudi Arabia and the United Arab Emirates (UAE). A patent granted by the regional patent office is valid for 20 years.

Jurisdiction Update in Iraq

4 May 2016

Following to the expedited examination of trademark applications by the TMO, we have come to know that the Registrar of trademark intends to apply the Chapter 2 Article 16 of the Trademark Law (Trademarks & Indications Law No. 21 for the Year 1957 with Amendments) strictly:

(Article 16)

“Where registration of a mark is not completed within six months from the date of the application by reason of default on the part of the applicant the Registrar may inform the applicant, in writing, to complete the registration within the period prescribed in the regulation made under this law. Otherwise he shall be considered as having abandoned the application”.

As per the verbal circular, all the applicants who have pending applications under the series number 60,000 will be informed to submit the requisite documents within 7 days of the issue of the notice and in failure, those applications which have incomplete documentation will be considered as abandoned. Therefore, we urge all agents and applicants to check their records for applications series filed under the above reference and complete the documentation immediately.

Jurisdiction Update in Kuwait

3 May 2016

An official notification has been issued by the trademark authorities stipulating that all new renewal applications to be filed in this jurisdiction will require the original registration certificate for endorsement purpose at the time of filing. As per the old practice, a renewal application could be filed and the original documents could be submitted at a later date. Please note if you do not possess the original registration certificates our firm can assist you in issuing a certified copy of the registration certificate which can be used for renewal purpose.

Saudi Arabia Online Renewal of Trademarks

27 March 2016

Following to our earlier news alert on probable increase of publication fees for renewal in Saudi Arabia we have been informed by the authorities of the following:

  1. Renewal of Trademark will be filed and completed online. The e-filing will commence immediately i.e. 27 March, 2016
  2. The Publication fee will be raised to 3000 SAR from 300 SAR.

As such, the total official fees for Trademark Renewal per class will be 6000 SAR or 1600 USD.



Documentary requirement for renewal:

  1. A Power of Attorney legalized up to Saudi Arabian consulate.
  2. It was mandatory to submit registration certificate for the renewal of trademarks according to the earlier procedure, for endorsement. (However, we are not sure whether the originals will be required anymore as the renewal applications are filed online. We can only confirm the exact requirements once we receive the official information from the Trademark Office).

The recordals are also said to be filed via online procedure, however it is expected to take some more time before being implemented.

New Stipulations in Afghanistan

22 March 2016

The Trademark Office of Afghanistan has adopted a new classification system as a multi-class application is not possible anymore and all trademarks applications shall be filed according to the single class applications. The said decision was communicated via email circular by the AFGHAN TRADEMARK AND PATENT Office. It is not clear in the time being how the TMO is going to treat pending trademark applications as well as trademark registrations following this new classification system. We shall not fail to circulate more information regarding the same as and when issued.

Renewal of Trademarks and Africa Update

22 March 2016

Saudi Arabia

As a follow up to our earlier news alert on probable increase of publication fees for renewal in Saudi Arabia we have been informed by the authorities of the following:

  1. Renewal of Trademark will be filed and completed online. The e-filing will commence immediately i.e. 27 March, 2016
  2. The Publication fee will be raised to 3000 SAR from 300 SAR.

As such, the total official fees for Trademark Renewal per class will be 6000 SAR or 1600 USD.

Documentary requirement for renewal:

  1. A Power of Attorney legalized up to Saudi Arabian consulate.
  2. It was mandatory to submit registration certificate for the renewal of trademarks according to the earlier procedure, for endorsement. (However, we are not sure whether the originals will be required anymore as the renewal applications are filed online. We can only confirm the exact requirements once we receive the official information from the Trademark Office).

The recordals are also said to be filed via online procedure, however it is expected to take some more time before being implemented.

Uganda

Please be advised that the Ugandan Trademarks registry has recently published a list of trademarks eligible to be renewed in 2016-2017. Kindly check with your records so as to maintain your IP rights within this jurisdiction.

Zanzibar

Please be advised that there is a new law in Zanzibar, following the enactment and promulgation of the Zanzibar Industrial Property Regulations of 2014 (the “Regulations”). Succinctly, these long awaited Regulations, for the smooth implementation of the Zanzibar Industrial Property Act of 2008 (the “New Act”), were enacted and published by the Minister of Justice and Constitutional Affairs in the Government Gazette of 17 April 2015, but made available to the public towards the end of last year 2015. With the promulgation of the implementing Regulations in 2015, it is now possible to file and obtain protection in respect of various IP rights provided for under the New Act.

The New Act has provisions which consolidates and codifies the laws on protection of Trade and Service Marks, Patents, Geographical Indications, Industrial Designs, Layout Designs of Integrated Circuits and Utility Models, into one piece of legislation. Furthermore, for the first time in Zanzibar, the New Act provided for the protection and registration of Service Marks, Collective Marks, Certification Marks as well as nontraditional marks such as Sound, Colour and Scent Marks.

Few salient issues addressed in these Regulations are:-

  1. International and National Patents can now be filed in Zanzibar.
  2. Registrar to apply the International Patents Classification System under the Strasbourg Agreement, as updated in its subsequent editions.
  3. Utility Models can now be filed in Zanzibar.
  4. Introduction of Payment of maintenance Annual Fees, for Patents and Utility Models.
  5. Clarity on how some apparent ambiguous provisions in the New Act should be construed.
  6. Industrial Designs can now be filed and protected in Zanzibar.
  7. Layout Designs (Topographies) of Integrated Circuits can now be filed in Zanzibar.
  8. Service Marks, Collective marks, certification marks as well as nontraditional marks, can now be filed in Zanzibar.
  9. Procedure for reclassification of trademarks.
  10. Geographical Indications can now be filed in Zanzibar.
  11. Categorization of goods for the purposes of the registration of Geographical Indication, provided in the Third Schedule.
  12. Provision of Security of Costs, in opposition matters, in respect of Applicants/Opponent with no immovable property in Zanzibar.
  13. Priority can be claimed based on an earlier application.
  14. Evidence under the New Act to be filed by either Statutory Declarations or Affidavits.
  15. English or Kiswahili to be used as official language.
  16. Registered User or License Agreement can now be recorded in Zanzibar.
  17. No refund of Official fees once paid.

Mozambique

The Council of Ministers of Mozambique approved a new Mozambique Industrial Property Code on 31 December 2015 (“the New IP Code”). The New Code, published under Decree no. 47/2015, will come into force on 31 March 2016, replacing the 2006 Industrial Property Code (the “2006 IP Code”).

Differences between the 2006 IP Code and the New IP Code relate mainly to revised time periods, re-wording and clarification of certain sections, administrative and format revisions. A limited number of substantive legal changes have been made. Unfortunately the New IP Code was not published for comment and concerns pertaining to issues such as delays in handing down decisions by the Administrative Courts have not been addressed. Short, unextendable deadlines for responding to official actions and provisional refusals have been retained.

Jurisdictional Updates in Tunisia

14 March 2016

The European Patent Validation Law, has been finally approved in this jurisdiction after much deliberation. The said law passed in the legislature will enter into force following issuance of the related implementing regulations which is expected to be published in the coming days. Although Tunisia is not an EPC member state, the Law provides the country a quasi-EPC status with regards to patent procurement, and is expected to encourage more filings and more foreign investment. Validated European patent applications and patents will have the same legal effect as Tunisian national applications and patents or national phase of PCT applications, and will be subject only to Tunisian patent legislations. Moreover, the agreement will facilitate the procedures as such validation will not require further examination in the country.

Please note that, the Moroccan Patent Office signed a similar agreement in December 2010, saw the law voted in December 2014, and entered into force on May 1, 2015.Therefore EU patents can extend protection to the emerging North African economies of Tunisia and Morocco which have recently registered more than 5% of growth.

Jurisdictional Updates in Iraq

13 March 2016

The trademark authorities are exploring the mechanism of adopting the registration procedure currently being used in Erbil TMO for Kurdistan. Presently in Kurdistan, when filing a new trademark application it is obligatory to conduct search of the mark as to prior rights and distinctiveness. In case the Trademarks Registrar refuses the application for registration due to the presence of a prior right or non-distinctiveness he will call for the withdrawal of the application and will not accept the payment of the official fees for filing of same. If the search report is clear, the applicant has to file the searched mark and settle all fees to be paid i.e publication and registration within one month time from the date of the search. The intention of the authorities is to reduce the time frame for registration which currently stands at 36-52 months in Iraq (Baghdad).