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Middle East - JAH CO.IP
JAH Update Morocco, Libya and Bahrain

MOROCCO

 

Please be advised that the Moroccan Trademark Office (OMPIC) has announced that as of 28th May, 2018, trademark registration certificates and renewal certificates will be issued electronically in a digital PDF format bearing the official stamp of OMPIC.  Such a move is aimed at expediting and facilitating registration process of trademarks, whilst the certificate will have the same legal value for enforcement purpose.

 

In this connection, we would be pleased to share the list of trademarks which are due for renewal under this jurisdiction in 2018. We kindly request you to peruse the said list to ensure that no trademarks of your concern are under threat of expiry.

 

In Morocco, the validity of the trademark registration is ten years as from the filing date.  Thereafter, a trademark registration is renewable for further consecutive periods of ten years each.  The renewal fees of a trademark registration can be paid during the last 6 months of the current protection period. There is a 6-month grace period within which a late renewal application can be filed, but such a late renewal application is subject to the payment of additional fees.

 

LIBYA

 

Please be advised that owing to the long term of instability and destruction wrought by the civil war under this jurisdiction and intermittent functioning of the trademark office, it has come to our attention that many registered trademarks have been left without any representation due to the fact that several local IP agents could no longer viably conduct their operations due to safety concerns. Therefore, we have compiled a list of trademark registrations eligible for renewal for whom no agent or address of service is available with the TMO. Kindly peruse the list and write to us if you wish to effect the renewal for any of the said trademarks

 

In the meantime, we wish to kindly point out that any trademark that had been published under this jurisdiction and was not faced with any opposition by other third parties within a non-extendable three month from the date of publication the mark is virtually considered to be registered, enforceable against third parties and eligible for renewal after the elapse of ten years as from the filing date in spite of the lack of issuance of the registration certificate.

 

It should be noted that since the issuance of the registration certificate is expected to face delays it is also possible for the owner of the mark to obtain an official certificate confirming the registration of their mark whose term of opposition has passed without any third-party action.

 

BAHRAIN

 

Kindly note that substantive examination of pending patent applications in Bahrain have commenced as of May 29, 2018. Please check your records as follow up for all the patents filed under this jurisdiction so that examination reports have been received. If you wish us to obtain for you the status of your patents please write to us.

 

For further information or clarification please contact us at info@jahcoip.com

Publication of First Trademark Gazette Aden(TMO)- YEMEN

Further to our series of newsletters with reference to the setting up of a new trademark registry at Aden Yemen, we are pleased to announce that the trademark office has now published its first gazette online which can be viewed here.

 

We wish to remind our readers that official proclamation regarding the setting up of the office was issued by the Ministry of Industry and Trade in Aden on 20 February 2018. The legitimate government in Aden used to be in charge of trademarks Office in Sana’a; however, when the national salvation government(by coup) took control over Sana’a region, the official government retreated to Aden region which resulted in the formation of Trademark Office (TMO) in Aden- Yemen which has started functioning independently from the current TMO in Sana’a.

 

Please be advised that the announcement had clarified adopting of the same Yemeni Law No. 23 of 2010 on Trademarks and Geographical Indications, with the opposition period as 90 days from publication date. The subject gazette was issued on 26/5/2018 with 8 new applications as filed with them. The registry has confirmed that the issuance of the gazettes will be on a monthly basis.

 

Kindly contact us at info@jahcoip.com for more information to secure rights under this new jurisdiction and also in extending the existing trademark registrations from S’anaa Yemen.

JAH Update Yemen, UAE and Iran

Yemen: The Ministry of Industry and Trade in Sana’a has published an announcement with regards to Aden’s Ministry proclamation

 

Following the proclamation of the Ministry of Industry and Trade under the rule of the legitimate government in Aden dated 20 February 2018, the ministry of Industry and Trade under the national salvation government has published an announcement in the local newspaper “Attawra” dated 23 May 2018 in response to Aden’s proclamation on identifying the competent authority for intellectual Property Protection and Trademarks Registration.The said notification reflects the following points:

1)      General Department of Intellectual Property Protection- General Office of Industry and Trade ( S’anaa) explicitly states that the trademark registration services is part of its function at the business services sector and that it has not authorized The Office of Industry and Trade in Aden to receive or complete the procedures for trademarks.

2)      The accuracy and requirements are merely available at the General Office of Industry and Trade ( S’anaa) and the office in Aden does not meet the same.

3)      The proclamation is not based on relevant law or its implementing regulation and that any action fulfilled at Aden will not be considered legal and shall not confer protection.

 

Lastly the notice reiterates the illegality of the proclamation and invalidity of any registration sought at the trademark office in Aden. The complete copy of the gazette publication available in English and Arabic has been enclosed herewith for your kind perusal.

As a background, please be advised that the legitimate government in Aden used to be in charge of trademarks Office in Sana’a; however, when the national salvation government (by coup) took control over Sana’a region, the official government retreated to Aden region which resulted in the formation of Trademark Office (TMO) in Aden- Yemen which has started functioning independently from the current TMO in Sana’a.

 

In the meantime, our colleagues in Aden has got in touch with the local Registry and got the information that Aden Trademarks Office started receiving many trademarks applications and they are in the process of issuing the first trademarks Gazettes for opposition purpose. For the time being, there is no website where public can check the opposition gazette at the Aden office; however, the official Gazette will be available for collection at the Ministry of Industry and Trade which will contain publication of trademarks applications for opposition purpose as well as Commercial Agencies and other Ministerial regulations.

Please be advised that at this stage there is ambiguity as to the cycle of the Gazette issuance, related costs, subscription, registration etc ; however, since the proclamation clarified adopting of the same Yemeni Law No. 23 of 2010 on Trademarks and Geographical Indications, the opposition period will remain as 90 days from publication date.  In this regard, please note that the situation at the office in Aden is still at its nascent stage and lacks many essential elements regarding setting up of a trademark office and the processing of applications including publication hence we will have to exercise patience and await further developments.

We believe that this rebuttal issued by the authorities in S’ana is a very serious and significant change that international brand owners need to be aware of since many other third parties will make use of this opportunity to register other trademarks rights in Aden in Bad Faith and there is no clear outcome to civil war that can be predicted at this stage.

Rest assured we are following the matter closely from our side and shall update you with any developments in due course and meanwhile, we shall also upload the first gazette to be issued by Aden Trademark Office on our website upon its availability.

 

UAE: Administrative Procedures Enabling Trademark Holders to Prove Counterfeit

 

For better fighting against counterfeit products, IPR directorate at Dubai Customs has undertaken following procedures to prove counterfeiting products at the time of filing a complaint:

 


Change of Name and Address Are Now Undertaken Simultaneously at One Official Fee

 

Following a meeting with the Head of Intellectual Property Department with IP licensed agents in UAE on 02 May 2018 it has been stipulated that a recordal of change of name and address of a registrant of a trademark registration can be undertaken simultaneously at one official fee. This new practice rescinds previous practice whereby two separate recordals of change of name and address should be carried out at two official fee for each recordal.  It is also noteworthy to indicate that a recordal of agent for service for subsequent registration actions is optional.

 

Iran; Adoption of Locarno Agreement

 

Iran has endorsed Locarno Agreement Establishing an International Classification for Industrial Designs which will come into effect as of 12 July 2018 becomingthe 55th contracting party to the Locarno Agreement, and the first to join since 2014.

JAH Yemen Update

Trademarks rights in Yemen are at risk.

 

Following the ongoing unrest in Yemen which leads to the division of the country into two parties; one party in Sana’a- Yemen under the national salvation government and the other party in Aden – Yemen under the rule of the new legitimate government,  JAH would like to advise its clients/ associates that the Minister of Industry and Trade Decision in Aden – Yemen has issued an official Circular on 20 February 2018 stipulating a number of regulations among of which is that Trademark Office (TMO) in Aden- Yemen starts functioning independently from the current TMO in Sana’a and adopting the same Yemeni Law No. 23 of 2010 on Trademarks and Geographical Indications.

 

In this connection, please note that as of the above Minister Decision date, Trademark Office in Aden- Yemen has started receiving new trademarks applications independently from trademarks Office in Sana’a and in order to secure all the existing trademarks rights previously filed/registered in Sana’a, the Minister of Industry and Trade Decision in Aden calls for recording the said trademarks rights by submission of copies of evidentiary documents; i.e. a copy of registration certificate or last renewal certificate for registered trademarks or an extract of a trademark from the Trademark Office for pending trademarks (filed or published).

 

In view of the above, please be alerted that registration of trademarks in Sana’a will no more provides a legal protection to trademarks in Aden – Yemen and therefore all applicants who filed trademarks applications after 20 February 2018 in Sana’a Trademarks Office need to file a sperate trademarks applications with the Trademarks Registry in Aden – Yemen as well. However, existing trademarks which filed/registered in Sana’a before the date of 20 February 2018 are to extend their protection by recording their particulars to the database of Aden Registry.

 

Consequently, we have come to know that Trademarks Registry of Aden has recently received many new trademarks applications and they are in the process of issuing the first trademarks Gazette for opposition purposes. No regulations have been issued with regard to other trademarks actions except filing of new trademark applications and extension of protection of existing trademarks in Sana’a to Aden. Likewise, same regulations will be applied to patents and designs.

 

Please find hereunder the filing requirements and official fees for filing a new trademark application as well as extending the protection of the existing marks into the database of Aden’s Registry

 

  • Extension of the protection to Aden Registry:

 

  • *A copy of registration certificate or last renewal certificate for registered trademarks or an extract of a trademark from the Trademark Office for pending trademarks (filed or published).
  • *Power of attorney is not required.

 

Official fees for recording existing trademarks particulars from Sana’a to Aden Registry and issuance of official certificate proving the recordal action are 13 USD.

 

  • Filing a new trademark application at Aden Registry:

 

Documents required for filing new trademarks applications under Aden legislation are:

 

  1. A Power of Attorney, legalized up to a Yemeni Consulate Abroad which is not required if we already possess this document used previously for filing in Sana’a.
  2. A copy of Certificate of Incorporation or extract from commercial register of the applicant company which is not required if this document was lodged with previous trademarks in Sana’a.
  3. Print of the trademark if not a word mark.

 

Official fees for filing a trademark application per class: 96 USD

Publication and registration fees of trademark application per class: 100 USD

 

In light of the foregoing, we urge our clients and associates to secure their trademarks rights with Aden Registry as clarified above in order to mitigate any issues which would arise when enforcing trademarks against third parties who are using or attempting to register these trademarks on Bad Faith.

 

For further information or clarification please contact us at info@jahcoip.com

JAH Update Rwanda

RWANDA

 

INTRODUCTION OF RENEWAL ACTION AND APPROACHING DEADLINE

Existing trademark registrations under Rwanda Law 31/2009 of 26 October 2009, effective from 14 December 2009 on Protection of Intellectual Property are scheduled for renewal in 2019.  The Law states that: existing registrations can be renewed within ten years of the entry into force of the Law, i.e. by 14 December 2019.  We request all instructions for filing of renewal applications for all registered trademarks since 1904 till 2009 to be sent to us by 26/10/2019; in order for us to have sufficient time to take action timely and properly.  In Rwanda, there are no lapsed trademarks because it is the first time to introduce renewal action of trademarks according to IP Law of 2009.  The documents needed for effecting a renewal of trademark registrations are: a notarized Power of attorney and a simple copy of the certificate of registration.  The time frame to receive the certificate of Renewal is 2 to 4 weeks from filing the renewal application.

 

OPPOSITION TERM

The term for filing an opposition to an application for a trademark or a geographical indication has been increased from 30 days to 60 days (non-extendable), and the term within which the applicant for registration must respond is 14 days. A power of attorney must be submitted at the time of filing with a possible extension term of 7 days for late submission of POA.

 

For further information or clarification please contact us at info@jahcoip.com