We wish to kindly draw your attention the fact that the Egyptian Trademarks Office has recently announced an increase in the official fees for Trademarks. The increase will be effective starting October 15th, 2017. The increase will cover new applications as well as retroactively those applications, which relevant publication and registration fees have not been paid yet.
In light of this increase, JAH will amend its schedule of charges related to trademarks services offered in Egypt.
For further information please write to us at firstname.lastname@example.org
We wish to kindly draw your attention the fact that Syria recently announced an increase in publication fees by the ministerial Decision No./2133/ dated on 28/09/2017.
The increase in the publication fees effected Trademarks, Industrial designs and Assignment applications), as following:
- 317% for Syrian individuals.
- 234% for Syrian companies.
- 186% for foreign individuals and companies.
This official fee increase will be effective as of 15th of October, 2017.
This increase of publication fees will affect all applications submitted to the Trademark Office retroactively as per the below;
- Applications filed or accepted and not yet published, will be subject to official fee increase of 260 US$ for opposition publication and 130 US$ for publication after registration as in Syria a trademark is published at two instances.
- Applications already published for opposition purposes, will be subject to official fee increase of 130 US$ (130 US$ for publication after registration only).
- Applications matured to registration and whose publication period ended before the effective date of this new decision, will not be effected by the increase.
It’s important to remember that according to Art. (34/b) from the Syrian trademark law No./8/ for the year 2007, Procedures of substantive examination, publication and opposition shall be applied to the renewal applications of marks registered before the enforcement of this law and only for one time.
The table below shows the exact change in the official fees:
|Item||Old Fee US$||New Fee US$|
|Publication fees – Trade Marks Journal (for first ten words in the list of goods/services)||70||200|
|Publication fees after registration for new applications (or renewals) (for a list of goods/services of 10 words)||70||200|
|Fees for additional set of 10 words in the list of goods and services||4||6|
|Publication Fee – Recordal of Assignment, License, Merger, Pledge (First Mark)||50||100|
|Publication fee for each Additional Trademark Recordal of Assignment, License, Merger, Pledge in the same Application for the same Owner||10||30|
|Publication fees for the recordal Name or Address or Legal form (First Mark)||50||100|
|Publication fee for each Additional Trademark in the same recordal Name or Address or Legal Form Application for the same Owner||10||30|
|Search Records (per mark, per class)||10||15|
For further information kindly contact email@example.com
The Moroccan Office of Industrial and Commercial Property, has recently announced an increase in the official fees for all IP matters including Trademarks, Patents and Designs. The increase will be effective starting October 1st, 2017. The official fees are reduced when the filing formalities are made online noting that only operations related to trademark (filing & renewal), Industrial design (filing & renewal) and annuities, are operational via the online services for the time being. A copy of the tariffs as issued by the Moroccan Trademarks Office is a available at this link.
In view of the above and as there are four days left before the new official fees will come into force we recommend filing your proposed trademarks, patent and design during this remaining period in order to benefit from the old fees.
For further information please write to us at firstname.lastname@example.org.
We are pleased to inform you that Oman has officially adopted the Gulf Cooperation Council Trademark Law as of Monday July 31, 2017. The decision, which was promulgated by Royal Decree no. 33 of 2017, was published in the Official Gazette(Official Gazette No. 1204) on July 30, 2017. The issuance of the Implementing Regulations by the trademark authorities are expected soon.
For more information on the GCC Trademark law or its implementing regulation please contact email@example.com.
We are pleased to inform you that after a prolonged delay, the Kurd Trademark Directorate has recommenced accepting of new trademark applications as of today. Please note that towards the end of 2016 the trademark office had suspended all its operations and also updated the official fees for various services thereafter.
Please note that the requirements to file trademarks under this jurisdiction along with the detailed information are as follows:
7th edition — multiclass application with local sub-classification. Multi-class and sub-classes systems are applied at the Kurdistan Trademarks Office and the total costs for registration of a trademark depend on the number of sub-classes covered by the application. International classes of the goods and services to be covered by the application are divided into subclasses which is similar to the International Classification.
When filing a new trademark application it is obligatory to combine the same with a request for an obligatory search of the trademark 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. It is obligatory to conduct a prior search before placing a new trademark application on the records of the Kurdish Trademarks Register or coupled with the application for registration of the trademark which will be treated as a substantive and formal examination report to the trademark once filed and abased thereon the application will proceed towards publication and registration or otherwise refused. The official search results will remain in force for three months after the release of the search reports within which the application can be filed based on the search results as an official and substantive examination. For conducting an official search the list of goods/services or the sub-classes from the Iraqi Classification should be provided, noting that all the sub-classes included in the search must be filed with the application.
- A power of attorney legalized up to an Iraqi consulate abroad, which requires local legalization by Ministries of Justice and Foreign Affairs in Kurdistan.
- An extract from the commercial register or certificate of incorporation of the applicant company, legalized up to an Iraqi consulate abroad, which requires local legalization by Ministries of Justice and Foreign Affairs in Kurdistan.
- A certified copy of the home registration certificate of the trademark or in its absence a certificate proving that the applicant has a factory in the home country and in its absence a certificate from the factory from which the good is making in favor of the applicant; any of the aforesaid documents should be legalized up to an Iraqi consulate abroad, which requires local legalization by Ministries of Justice and Foreign Affairs in Kurdistan.
An application for registration of a trademark can be filed with a simple copy of the legalized power of attorney, whilst the original legalized power of attorney and other supporting documents should be submitted before the expiry of the three months opposition term. An extension of one month can be requested which might encounter an approval or refusal.
Requirement 2 is not applicable if the applicant is an individual.
If the trademark is already registered or accepted for registration in Iraq and the owner of the trademark wishes to extend its legal protection to Kurdistan an official letter should be issued by the Iraqi Trademarks Registrar in Baghdad with a certified copy of the registration certificate of the trademark and addressed to the Registrar of Trademarks in Kurdistan furnishing him with the complete details of the concerned trademark registered in Iraq with a report on its latest as registered or accepted in order protect the same and accredit its registration under Kurdistan jurisdiction so that no subsequent closely similar or identical trademarks will be accepted for registration for a third party.
Requirements for recordal of trademark registered or accepted into Kurdistan:
- A legalized power of attorney should be submitted with the official letter by the Iraqi Trademarks Registrar.
- A letter issued by the Trademark Office in Baghdad confirming that the trademark has been registered or at least accepted.
- A certified copy of the Iraqi certificate of registration.
- Registration of trademarks in Kurdistan alone will not give protection to the trademark in Bagdad, Iraq where a separate registration should be sought therein directly.
- As for the trademark search, it takes approximately 7 to 10 working days to be completed.
- It takes approximately 5 – 7 months for a trademark to be registered.
- When filing a new trademark application at the Kurdish Trademarks Office, the applicant or his agent should submit a pledge in the effect that the trademark has not been previously registered in Baghdad- Iraq and in case it is confirmed that the same trademark was registered earlier for a third party in Baghdad – Iraq and not for the same applicant, the Trademarks Registrar in Kurdistan will cancel the trademark automatically without referring to the competent civil court.
Please let me know if you require anything further. We look forward to being of assistance to you and your clients.
JAH would like to inform their clients and associates that as per the official circular received from UAE Patent Office on 20 June 2017 here have been recent notices regarding the payment transactions of patent procedures in UAE which we would like to state in the following sequence:
*Formal Examination Requirements:
Formal examination requirements should be fulfilled within 90 days from the date of filing the patent application otherwise, the application will automatically lapse and payment of restoration fees will be applicable to revive the same.
It was mandatory under the old practice to pay substantive examination fees within 90 days from the date of filing the patent. Now, it is stipulated to settle the substantive examination fees only upon receiving an official notification from UAE patent Office in which these fees are to be paid within 90 days from the date of receiving the notification; otherwise, the application will automatically lapse and payment of restoration fees will be applicable to revive the same.
Also, the UAE Patent Office specifies that for the second and third substantive re-examination, there are new fees to be paid.
Annuity fees payment:
For national patent, annual maintenance fees are due on the anniversary of the national filing date. Annuities can be settled within a three-month from the due date without any consequences and an extension of time of another three-month is allowed for settling the due annuities with a surcharge.
For entry phase application of a PCT patent annual maintenance fees are calculated from the International filing date and late years annuities are paid at the time of filing or within three months of the national phase entry in UAE. an extension of time of another three-month is allowed for settling the due annuities with a surcharge.
Failure to pay the annuity fees within the prescribed deadline the application will automatically lapse and payment of restoration fees will be applicable to revive the same.
To come to a conclusion, lapsed patent in UAE for non-submission of documents, payment of requisite fees etc. can be revived by payment of restoration fees.
For more information, regarding you patent applications filed in this jurisdiction please feel free to write to us.
We are glad to announce that members of JAH Team representing our various offices across the MENA region will be attending the Annual ECTA Conference in Budapest Hungary from Jun 28 to 30 2017 and will be quite delighted to meet you.
Should your schedule permit, it would be great to connect and catch up with you in Budapest. Kindly email us at firstname.lastname@example.org to arrange for a suitable time to meet.
JAH wish to keep their readers abreast with the following jurisdictional updates in countries under our purview:
The Trademark Office in Iraq has revised formalities for trademark registrations in class 5(A) in which they now require only a soft copy of the home registration certificate to be submitted in support of trademark applications at the time of filing whereas the original copy legalized up to the Iraqi Consulate can be submitted within six month-time from the date of filing with no extra fees.
It should be noted that under the previous requirements, applicants were required to provide the following information when filing a trademark application in class 5:
- Scientific name of the product;
- Trade name of the producer;
- Pharmaceutical formula of the product;
- Name of manufacturing company if not the applicant, and
- Name of local distributor, if any.
Now all of these previous requirements for filing a trademark application in class 5 have been dropped and it is now substituted by way of submitting a copy home registration certificate legalized up to the Iraqi Consulate. For the ease of you reference please find hereunder the filing requirement for a trademark registration in Iraq:
- A power of attorney duly legalized up to the Consulate of Iraq. If no Iraqi consulate is available in the home country of applicant or the applicant cannot legalize it up to the Iraqi Consulate, legalization can be made by the Qatari Consulate and we shall complete the legalization in Qatar at the cost of USD 315. The legalized Power of Attorney MUST be also legalized in Iraq from (the Central Bank, General Tax Commission and the Ministry of External Affairs) to be acceptable by the Iraqi Trademarks Office.
- A certificate of home registration legalised up to the legalized to Iraqi Consulate for class 5 only.
- The classes and subclasses of the goods to be covered by the application. The wording of the list of goods/services to be protected should conform to the local classification, which is similar to the International Classification. Iraq currently follows the 7th edition of the Nice Classification with a local sub-classification system, and a single class may include several sub classes.
- A certified copy of the priority document (home or foreign application/registration) duly legalized up to the Iraqi Consulate which needs to be locally attested in Iraq.
- Obligatory search before trademark registration has now been adopted with each class of goods or services to be searched separately with official request. The Official Search Fees for each class of goods have been reported to be 20,000 Iraqi Dinar (+/- 19 USD). The time frame to conduct the official search will be one month time.
As reported to you earlier Jordan became the 152nd member of the Patent Cooperation Treaty (PCT) on March 9, 2017, and the most recent Arab state to accede to the PCT. We are pleased to inform you that The Accession Procedures of Jordan to the Patent Cooperation Treaty (PCT) with the Secretary General of WIPO have been completed and the Accession into the said Treaty has entered into force, as of June 9, 2017. Thus, any PCT application filed on or after June 9, 2017 will automatically include the designation of Jordan; and the Jordanian nationals and residents will be able to submit international patent applications through the Jordanian Patent Office.
Though there are fixed fees by WIPO for Jordan PCT national phase which can be found on WIPO website there is a possibility that these fees might change as this allowed for any contracting state in the PCT. We shall revert to you with the exact information as soon as the Jordanian Patent Authorities confirm the requirements and fees.
Please let me know if you require anything further. We look forward to being of assistance to you and your clients.
JAH & Co. IP would like to keep all its readers abreast of the recent changes in the jurisdiction of Kurdistan:
News has it that there has been an increase in Official fees for all trademark related matters in this jurisdiction which will be applied retroactively. However, the trademark office is still not accepting fresh applications as they are trying to clear the back log of the processed applications. For applicants who have already completed the clearance search (with free search reports), will have to filed their applications paying the new fees; likewise, applicants whose trademarks have survived the opposition period will have to pay the registration fees as per the new tariffs.
As a background on the trademark registration procedure in this jurisdiction; the applicable law for trademarks registration in Kurdistan Region is the Iraqi Law No. 21 of 1957, and further, the applicable Classification is the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement, which is the same Law and Classification adopted by the Iraqi Trademarks Office in Baghdad – Iraq. The application undergoes a compulsory pre-filing search and, upon receiving a free report, the trademark application can progress to filing in which the Filing and Publication fees will have to be paid together while the registration fees can be settled as soon as the opposition period of 90 days is concluded.
As an alternative action to direct trademark registration with The Kurd Trademarks Office, the old practice pertaining to the extension of trademark protection has been reactivated. In other words, it is now possible to extend the protected of a trademark registered in Baghdad to cover Kurdistan as well; a procedure is as effective as direct trademark registration with Trademark Office in Kurdistan. If the trademark is already registered in Iraq and the owner of the mark wishes to extend its protection to Kurdistan, an official letter should be issued by the Iraqi Trademarks Registrar in Baghdad with a certified copy of the registration certificate of the mark and addressed to the Registrar of Trademarks in Kurdistan furnishing them with the complete details of the concerned trademark along with a report on its latest particulars in order protect the mark and accredit its registration under Kurdistan jurisdiction so that no subsequent closely similar or identical trademarks will be accepted for registration for a third party. A legalized power of attorney should be submitted with the official letter by the Iraqi Trademarks Registrar.
We shall update you with our next news alert as and when the trademark office starts accepting new applications.
In separate news, please note that the patent and design charges in Iraq have been increased with immediate effect.
For further information please write to us at email@example.com.
Dear Friends and Colleagues,
It is hard to believe that we are already in April and this year’s INTA is just a few weeks away. We are also glad to announce that members of JAH Team representing our various offices across the MENA region will be attending the 139th Annual Meeting in Barcelona, Spain from May 20 to May 24, 2017 and will be quite delighted to meet you.
Should your schedule permit, it would be great to connect and catch up with you in Barcelona. Kindly email us at firstname.lastname@example.org to arrange for a suitable time to meet.
JAH takes great pleasure in keeping its readers apprised with regards to the recent updates in our jurisdictions:
The Qatari Patent Office has recently started receiving and processing local and international applications for patents and copyrights in electronic form by dedicating an online Portal https://services.mec.gov.qa. Trademarks applications are expected to follow suit soon.
As one of the most advanced jurisdictions in this region, Qatar IP Department is pouring strenuous efforts into updating its system and procedures. Furthermore, Qatar approved the Industrial Designs Draft Law along with its Implementing Regulations on March 15, 2017 which is expected to bring changes to the existing system for design protection in the country which involves publishing of cautionary notices.
It should be noted that as there is no statutory design protection in force in Qatar, the only available means for protecting designs is through publishing cautionary notices in Arabic and English in local newspapers. Cautionary notices define the owner’s interest in industrial property, announce the ownership thereto and alert the public against any possible infringement. Such publication of notices could be of considerable assistance in case of litigation. There is no standing regulation as to when a cautionary notice should be republished. A cautionary notice is not as effective as a registration and is not deposited with any government department. Consequently, republication of cautionary notices at reasonable intervals acts as a reminder to the public and helps ward off eventual infringers.
We are pleased to announce that Jordan has become the 152nd member of the Patent Cooperation Treaty (PCT) and the most recent Arab state to accede to the PCT. The Treaty is expected to enter into force on June 9, 2017 and in the meantime an awareness campaign and training is being undertaken by the Jordanian Patent Office.
Please note that the Trademark Office in Libya is currently issuing the Registration Certificates of the trademarks holding the filing numbers from 6000 to 6500. Given the current circumstances in Libya and the backlog of applications at the Trademark Office, the issuance of the registration certificates is expected to face delays. However, we are pleased to announce that applicants who are interested in obtaining any official certificate proving that their trademarks have been registered with the Libyan Trademarks Office can obtain an official testimony confirming the registration of any trademark whose term of opposition has passed without third party action. For more information on the matter, please feel free to contact us.
As a part of our constant endeavor to keep our readers abreast of the current issues faced in our jurisdctions we are pleased to provide a legal brief on a recent case dealt by our firm in Qatar. Our client “SİMİT SARAYI YATIRIM VE TİCARET ANONİM ŞİRKETİb” is a Turkish company and the original owner of the trademark “SİMİT SARAYI” registered in home and foreign countries in class 30 and was faced with a matter of trademark squatting in Qatar.
A Qatari company has succeeded in obtaining prior registration for the same mark as well as the trade name “SIMIT SARAYI” in an attempt to block any trademark/trade name registration of our client in Qatar.
Following our client’s instructions, we have filed a cancellation action (on bad faith) against the registration of the mark and Trade name.
The legal case was initiated on the following grounds:
- The applicant/registrant knew of the third-party’s rights or legitimate interests in a mark identical to or substantially identical to the mark applied for/registered, where such knowledge is actual or may be inferred from the surrounding circumstances; and
- The applicant/registrant’s conduct in applying for/registering the mark is inconsistent with norms of reasonable, honest, and fair commercial behavior.
- The applicant/registrant’s is not using the mark and trade name in Qatar.
The case has been ruled in favor of our client as the court called for the cancellation of both the defendant mark and trade name.
To conclude, Qatari trademark law and practice grant protection to well-known trademarks which have been targeted by third parties (on bad faith bases), even if the trademark in question has not been previously registered in Qatar.
In this perspective, we should emphasize that Qatar has a smooth opposition system and bad faith trademark applications will be rejected by the Trademark Office, if opposition is filed by the genuine rights holder. However, in spite of this many such registrations do occur and most detrimentally when the well -known mark owner plans to enter Qatar; the only option to be availed being the canceling of the existing bad faith registration.
JAH & Co. IP would like to inform its valued clients and associates of the latest updates in various countries:
A new electronic system has been introduced in this jurisdiction for the filing of trademarks on an online platform. The salient features include the submitting of the applications with POAs online and also the provision of adding conditions to the application; eg. disclaiming use of exclusive words etc. It is also meant to add flexibility to the local agents in handling such cases; furthermore it is anticipated the system would be expanded to include all trademark related procedures in the near future.
The Egyptian Patent Office issued a decision to increase the official fees of several patent related services, including the fees for substantive examination. These fees went into effect retroactively for all new patent applications filed on or after February 13, 2017. The patent examination fees have been increased from EGP 7,000 to EGP 17,530 and are expected to be revised on an annual basis.
The Indian government announced new Trade Marks Rules, 2017 thereby repealing the Trade Marks Rules, 2002. The new Rules aim to simplify and streamline the trademark registration process and upgrade the system to the international standards with an increase in official fees:
- Fees for filing trademark application for one mark in one class is increased from Rs. 4000 (USD 61) to Rs. 9000 (USD 138).
- The renewal fees for one mark in one class increased from Rs. 5000 (USD 75) to Rs. 9000 (USD 138).
- While there is only nominal increase in official fees for filing the notice of opposition from Rs. 2500 (USD 38) to Rs. 2700 (USD 41), the fees for filing counter-statement to notice of opposition increased from Rs. 1000 (USD 15 ) to Rs. 2700 (USD 41).
- Lower official fees proposed for individuals, start-ups and small entities and not yet declared
Despite the above increase in Official Fees JAH & Co. IP will maintain its professional charges without change.
In case you have any inquiries concerning the above, please feel free to contact us at email@example.com
JAH is glad to announce that some of its members will be attending various IP events throughout the ongoing calendar as outlined below.
Our delegates to each event will be more than happy to have a discussion with you. Therefore, if you are interested in scheduling a meeting with our colleagues, please feel free to contact us at firstname.lastname@example.org.
PTMG Spring Meeting, Paris, France 13-14 March 2017
INTA Annual Meeting Barcelona, Spain 20-24 May 2017
ECTA 35th Annual Conference Budapest, Hungary, June 28-1 July 2017
MARQUES Annual Meeting, Prague, 19-22 September 2017
AIPPI World Congress Sydney, Australia, 13-17 October 2017
FICPI Open Forum, Venice, Italy, 25-28 October 2017
APPA 67th Council Meeting, Auckland, New Zealand, November 4-7, 2017
We shall be looking forward to meeting you out there and strengthening our business relationship for years to come.
JAH would like to inform its clients and associates that we have been using a general power of attorney in Middle Eastern Countries for the last five years, which our clients find more convenient, time saving and cost efficient. The executed general power of attorney should be legalized up to the Qatari Consulate in the applicant’s home country, by virtue of which we can issue and execute sub-powers of attorney to our local branch offices across the MENA region. In this respect we wish to kindly draw your attention to the fact that there are official charges and office expenses that will be involved for the issuance of the sub- powers; however, it will save clients both efforts and charges involved in completing the legislation procedures at each individual Embassy or Consulate. Please note that we shall issue the sub powers attorney in Qatar where our headquarters is located; in the general power of attorney, your clients can specify some or all MENA jurisdiction countries upon their wish and the same will be used for handling any intellectual property matter in these countries.
Please write to us at email@example.com for details regarding the execution of sub-powers of attorney for countries of interest; including the associated formats and charges to be incurred for each country of interest.
The Saudi Trademark Office issued an official circular yesterday, announcing a drastic increase in the official publication fees for the following trademark recordal actions:
- Recordal of Assignment or Merger from 500 SAR to 1500 SAR ( 405 USD)
- Recordal of Change of Name and/or Address from 500 SAR to 1500 SAR (405 USD)
- Recordal of License Agreement or cancellation of the same from 1000 SAR to 2000 SAR ( 540 USD)
- Recordal of Mortgage Agreement of a trademark or cancellation of the same from 1000 SAR to 3000 SAR ( 810 USD)
- Amendment of goods and services by removing or restricting the list of goods and services from 1000 SAR to 1500 SAR ( 405 USD)
- Amendment of form of the mark for trademark registration from 500 SAR to 1500 SAR (405 USD)
- Cancellation of a trademark registration by owner 3000 SAR ( 810 USD)
- Change of name and address of agent for service from 500 SAR to 1500 SAR (405 USD)
The above drastic increase in the official publication fees will come into force from February 19, 2017 and will be applied retroactively for recordals already filed with the Trademark Office.
It is worth mentioning that the recordal of change of name and address of agent for service when taking over a trademark application or registration by another agent is optional as of now.
It has recently been noted that the trademark registrar in Iraq has started requesting copies of home registration certificates for certain trademarks applications. This is not a mandatory requirement; however, we recommend that to submit one of the aforementioned documents at the time of filing in order to avoid delay in the examination of the trademark and consequently ensure smooth processing.
The Patent Office in the jurisdiction has held a training workshop for local agents for the online system for filing patents and has started accepting e- filings. It is expected that the new procedures for each stages of patent process will be adopted gradually.
We are pleased to inform you that the online e-filing of patents has become fully functional in this jurisdiction and there is also the option to search published and registered patents using the system.
We also wish to elaborate on a new Federal Law that has been approved recently in UAE for combating commercial fraud as it specifically addresses counterfeit goods .The new Law No. (19) of 2016 has been published in the Official Gazette on December 15, 2016, and has come into force the following day replacing Law No. 4 of 1979. For counterfeit goods, they are defined in the Law as goods that bear a trademark that is identical or similar to a registered trademark, enabling registered brand owners to take action against goods bearing similar marks, in addition to goods bearing identical marks. However, the law does not clarify how the trademark shall be determined whether it is sufficiently similar with a registered trademark or not, as this shall be determined upon the decision of the Higher Committee for Combating Commercial Fraud, which is yet to be established under the Ministry of Economy.
The Committee is entrusted, among other duties, with developing strategies and policies of combating commercial fraud, studying obstacles experienced upon the enforcement of the Law and proposing a mechanism for handling such obstacles and issuing regulations for the activities of the subcommittees. This is a positive development and a way forward in an attempt to harmonize the implementation of the Law on a federal level. It remains to be seen whether the Committee would also work on harmonizing procedures before competent authorities in handling brand owners’ complaints against commercial fraud.
We await more updates regarding the law and its implementing regulations.
Should you have any questions, or require any additional information, please contact us at firstname.lastname@example.org
JAH would like to inform our valued clients and associates that we have received an administrative communique from Qatar Trademark Office that they will stop following the 7th international classification of goods and services in which services under classes 43, 44 & 45 was still classified under class 42. Under this old practice applicants seeking registration for services under Classes 42, 43, 44 and 45 it was possible to file one trademark application under Class 42 and only incur the cost of one class. Now as per the new notification, this practice will cease and thus it is possible to designate services available in classes 43, 44 & 45 starting from February 12, 2017 noting that Qatar follows a single class application system. A separate application should be filed with respect to each class of goods or services and a separate sum of official fees is to be paid for each class.
Please note we are yet to be informed regarding the status of the pending application filed as per the old system and are awaiting the issuance of the official notification which will be released within few days. Rest assured we are following the matter from our side and shall revert to you in due course.
Should you have any questions, or require any additional information, please contact us at email@example.com
JAH would like to keep their readers abreast with the recent jurisdictional changes in countries under our purview:
Turkey announced the adoption of Law No. 6769 on the Protection of Industrial Property Rights; the new Law was passed before the Grand National of Assembly on December 22, 2016 and entered into force on the date of publication in the official gazette on January 10, 2017. It repeals and replaces the Decree Laws on Patents and Utility Models, on Trademark and Service marks, on Industrial Designs, and on Geographical Indications. The new law stipulates the restructuring of the internal organization of the Turkish Patent Institute that was aptly renamed the Turkish Patent and Trademark Office.
The main changes in the Law includes the acceptance of co-existence agreements and letters of consent, thereby enabling the applicants to overcome relative grounds rejection with the prior right owner’s approval. With respect to oppositions, the Law makes a clear distinction between well-known trademarks registered in Turkey and those which are not, thus; the owner of an unregistered well-known trademark will, therefore, be able to oppose applications for a mark identical or similar to a well-known trademark. Furthermore, the Law stipulates that if the owner of the opposed application can claim that the opposing party has not used its trademark for more than five years without a justified reason after its registration date and in case of this defense, the Turkish Patent and Trademark Office will request the opposing party to provide substantial evidence regarding the use of the trademark. If they are not provided, the opposition will be rejected.
An increase in the official fees for IP matters have also been announced. The increase also applies to EP Validation, search and examination, and the annuity maintenance fees for patents and utility models. Until the implementation regulation of the new laws are issued we expect further developments and shall update you accordingly.
Further to our news alert informing of the Kuwait Trademarks Office stipulation for the payment of official publication fees for the recordal of change of name, address, assignment and actions in the official gazette, we have been informed that the registry will now start issuing separate certificates for the renewal and recordals matters. The earlier practice was to endorse on the backside of original certificates with the undertaken renewal and recordal actions.
The African Regional Intellectual Property Organization (ARIPO) recently amended the Harare Protocol on Patents and Industrial Designs and announced an increase in official fees. The amendments entered into force on January 1, 2017 the changes were announced at ARIPO’s 40th Administrative Council Session (Harare, Zimbabwe) in December 2016.
Some of the notable amendments include:
An increase in official fees including new fees for additional or existing services and additional provisions for post-grant amendments were also announced along with restoration of rights for patents, utility models and industrial designs.
Should you have any questions, or require any additional information, please contact us at firstname.lastname@example.org
Please be advised that the Iranian Trademarks Registrar has revised the requirements for filing of a trademark application in which a copy of the certificate of incorporation or extract of a commercial register has to be now legalized up to Consulate of Iran abroad. Under the old practice, the Iranian Trademarks Registrar was not strict in requiring such legalization of the certificate of incorporation and it was a rarely requested requirement and a scanned copy used to be sufficient in this regards. However, now the Iranian Trademarks registrar has applied this requirement strictly and a copy of the certificate of incorporation or extract of commercial register has to be legalized up to the Iranian Consulate abroad for new trademark applications and oppositions and must be submitted within 60 days from filing date provided that a simply copy is presented at the time of filing, this deadline may be extended by a period of extra two months.
Please note that in October 2016 GCC Trademark Law was implemented in Saudi Arabia, stipulating publication charges for the recordal of change of name and address in the official Gazette; however, these publication fees were not applied immediately and thus JAH was charging only the exact Official fees for the recordal action excluding publication fees. Now, the Saudi Trademarks Office has implemented the publication of recordal of change of name and address and accordingly have applied the relative fees for the aforementioned actions which is equivalent to 500 SAR or 135 USD as of 01/01/2017 for new recordal cases only and it is not applied retroactively.
KURDISTAN ( Northern Iraq)
Referring to our earlier circular announcing the suspension of trademark operations in this jurisdiction we are pleased to inform that the independent trademark office operating in Northern Iraq( Kurdistan) from Erbil has confirmed that they will recommence their services as of January 12, 2017.
Please note that the Kuwait Trademarks Office has stipulated the payment of official publication fees for the recordal of change of name, address, assignment and actions in the official gazette with effect from January 1, 2017 and it will also be applied retroactively for all such actions applied since increase in official fees which came into effect on January 1, 2016.
Also, there has also been a verbal circular issued by the Trademark Office stating that it is mandatory to submit a simple copy of the certificate of incorporation or certificate of incorporation without notarization or legalization. Earlier there was only the need for the legalized power of attorney for filing of trademark applications.
The Jordanian Council of Ministers has voted for the accession of Jordan to the Patent Cooperation Treaty (PCT).
The Council empowers and entrusts the Foreign Ministry with depositing its instruments with the WIPO thus ushering a new era of patent procurement in Jordan. It is expected that Jordan accession to PCT will be finalized by April 2017; however, the date on which the Treaty will go into force is yet to be determined.
JAH would like to inform its clients and associates that trademark filings in Kurdistan- Northern Iraq is suspended until further notice. In response to the many emails we have received to confirm the increase in official fee in this jurisdiction, we wish to shed light to the fact that the fees increase had been proposed by the trademark authorities in August and published in October though no action has been taken to implement the same. We expect the Kurdistan Trademarks Office to resume normal function in January 2017 with clear resolution on the implementation of new fees.
We take this opportunity to inform all interested parties that Iraq is divided into two trademark jurisdictions; Baghdad and Erbil where filings should be undertaken separately in order to secure trademark protection for the whole country; duly noting that the registries operate independently of each other and filing a trademark application in one jurisdiction does not automatically grant protection in the other. Erbil is the de-facto capital of the self-autonomous region of Northern Iraq- Kurdistan. This region represents immense interest to trademark owners around the world both in terms of covering the whole of Iraq and also for the tremendous potential it offers to brands.
We at JAH & Co. IP are excited to announce our attendance at the AIPLA (American Intellectual Property Law Association ) – 2016 , from October 27-29 at Washington D.C. Being a leading event in the IP world in the USA we see it as an ideal platform to meet our existing clients and associates. Members of JAH & Co. IP including our CEO Mr. Jehad Al Hassan will be attending the event and is looking forward to making your acquaintance.
If you would like to meet with Mr. Hassan or one of our attendees at the conference please contact email@example.com and we will be happy to schedule some time with you.
JAH is growing and expanding again!! We are pleased to announce the relocation and expansion of our Head Office to the new location in the heart of DOHA. Our practice is exclusively in the area of intellectual property and the new location allows us to better serve our clients as all internationally renowned companies and governmental bodies are closer to us than ever before.
“The opening of our expanded head office is a reflection of the success of the single window service that we offer to all our clients for the MENA region where all their cases are co-ordinated via the head office, which comes in line with our strategic plans for continued growth and development across the MENA” comments Mr. Jehad Al Hassan, CEO, “Our expanded premises and additional support staff here recognize that new and existing customers benefit from the competent, global services we offer, we also intend to provide exceptional local coverage to our clients and will strengthen current and future projects across the GCC.”
To visit us and to discuss any matters related to how we may assist you and your clients, feel free to contact us.
JAH & Co. IP would like to inform our clients and associates that in evaluation of the current increase in official fees in Saudi Arabia we have taken serious strides to streamline our efficiency and to facilitate our clients, we have decided to reduce our professional charges in 2016 for Saudi Arabia. Furthermore, we are pleased to inform you that we have reduced fees for Algeria, Egypt, Iran, West Bank and Sudan. We are now thoroughly studying our schedule of charges for other countries where we operate and we will be considering our fees as well and advise you accordingly.
We are prominent regional IP firm for IPR services, domain name registration, infringement watch and legal representation in the Arab Region through our own fully staffed operating offices, and a Regional Office in Qatar to coordinate activities in multiple countries. Our firm runs IP business in al the Arab countries through our own operating office; therefore we would be pleased if you would avail yourselves to our services in these countries on high qualitative standards at highly competitive fees. Also, you will have the facility of one-window service where you can correspond with us at the Head Office while your daily work is being implemented in our various offices.
We at JAH & Co. IP are excited to announce our attendance at the FICPI (Federation International Des Coseils En Propriete Intellectuelle) – 2016 Open Forum, from October 5-8 at ST. PETERSBURG. Being a leading event in the IP world dedicated to bringing together a diverse set of audiences from all over the world including IP experts, owners and investors to discuss and find solutions for key issues and operational challenges faced by IP professionals today, we see it as an ideal platform to meet. Members of JAH & Co. IP including our CEO Mr. Jehad Al Hassan will be attending the event and is looking forward to making your acquaintance.
If you would like to meet with Mr. Hassan or one of our attendees at the conference please contact firstname.lastname@example.org and we will be happy to schedule some time with you.
JAH & Co. IP would like to inform you that the Saudi Trademark Office has officially increased the fees of trademark registration. As we have circulated earlier, the GCC TM Law and its Implementing Regulations had been published at the Official Gazette in Saudi Arabia (Um Al- Qura), issue No. 4625, on July 1st, 2016; pursuant to the Saudi Royal Degree No. M/51 dated April 26, 2014.
The new official fees as per below will be applicable starting today; October 2nd, 2016:
Filing Fees 270 USD/1000 SAR
Publication Fees 800 USD/3000 SAR
Registration Fees 1335 USD/5000 SAR
As you can observe the official fees for filing and publication have remained unchanged whereas the registration fees have been increased from 800 USD to 1335 USD bring the total fees for filing to registration for a trademark application to 2405 USD.
Last but not least, it remains to be seen whether the fees increase will retroactively apply to the pending applications or if there are going to be changes concerning renewals, recordals. … since there has been no official notification in this regards yet.
JAH & Co. IP we would like to advise you that the Sultanate of Oman declared officially as per enclosed circulation dated 21/09/2016 that the substantive examination fees for patent applications accepted formally in the year 2013-2014 are due for payment. This comes as a result to the 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. For the Omani Patent Office to examine all patents which are accepted formally within the above term (with completed formalities), a request by the applicant or his agent should be submitted for substantive examination with the payment of the examination fees of Omani Riyals 300 (equivalent to USD) .
Failure to submit the request for substantive examination for patents within two months from the date of this notification i.e. before 21/11/2016 the patent application will be considered cancelled in accordance with article 9 ( 5) a and b of the Industrial Property Law no. 67/2008.
JAH & Co. IP would like to inform its clients and associates that there are major procedural and fee changes in the offing in Saudi Arabia. The GCC TM Law and its Implementing Regulations had been published at the Official Gazette in Saudi Arabia (Um Al- Qura), issue No. 4625, on July 1, 2016.Pursuant to the Saudi Royal Degree No. M/51 dated April 26, 2014, the GCC TM Law shall come into force in Saudi Arabia within (90) days from the publication of the Implementing Regulations of the GCC TM Law (September 27, 2016).
Following are the verbal information’s provided by the Saudi Trademark Office:
- Possible Hike in Official Trademark Registration Fees from USD 1870 to USD 2400
- The opposition period will be shortened to 60 days from the current 90 days for all new applications filed on or after the implementation of Law
- The oppositions are to be filed with the Higher Committee of the Trademark Office, swapping the current practice of filing opposition with the court.
- There would be official fees for Appeals to Minister & Oppositions
- Similar to the implementation of GCC Trademarks Law in other gulf states it is expected that the increase fees would be applied retroactively for pending applications in terms of publication and registration.
In this event we would like to encourage all our clients to file their Trademarks prior to the implementation of GCC Trademark Law in order to avail the old official registration fees. For detailed quotes and information please contact us at email@example.com.
On behalf of all the members of JAH & Co. IP, we welcome the new joiners to complement our Head Office Team. In its constant endeavor to maintain prompt and precise service as well as improved staff diversity, JAH is proud to introduce five fresh faces to its ever expending horizon. It gives us great pleasure to add vibrant experience and people from diverse educational backgrounds to improve the innovative solution we offer to our clients and associates.
On this occasion, JAH CEO, Mr. Jehad Al Hassan expressed his great delight stating ” We hope you will have an amazing time working with us and are really glad that you’ve joined us. Welcome aboard!”
- Kuwait: Suspension of payment of publication fees for renewal and recordal actions until further notice.
We would like to bring to your kind attention that the payment of the publication fees for renewals, recordals of assignment, change of name and address actions of registered trademarks has been suspended by the Kuwaiti Trademarks Office until further notice. As per the requisite of the Kuwaiti Trademarks implementing regulations adopted on 27 December 2015, the aforementioned actions should be published in the official gazette in order to put said actions in actual effect with the trademarks registrar and endorsement of these actions on the respective registration certificates. However, the Kuwaiti Trademarks Registrar is currently effecting these procedures without payment of publication fees as they are not published in the official gazette. Likewise, the change of local agent of service recordation has also been suspended until further notice.
In view of the above, we shall raise our invoices for any of these actions waiving the official publication fees thereof. In case the trademarks registrar calls for the payment of the official publication fees of these procedures, which is unlikely to happen, we should attend to the same immediately, notify you with a copy of the official fiscal receipt and issue our invoice accordingly.
- Libya: issuance of trademarks registration certificates.
Please note that the Libyan Trademarks Office has issued registration certificates for the trademarks numbered 5000 to 6000 which are now available and ready for release by the registrar of trademarks upon payment of the official registration fees. In case you would like to avail our service in issuing the registration certificates for the aforementioned application series, kindly contact us at firstname.lastname@example.org for the requirements and associated charges.
In accordance with the WIPO notification no. 21/2016, and starting from the 1st August, 2016 the individual, payable fee for International Registrations designating the Syrian Arab Republic will be CHF39; a reduction from the current individual fee of CHF66.
Furthermore, we wish to kindly draw your attention to the Ministerial Decree No. 1540 of the Syrian Minister of Interior Trade and Consumer Protection which stipulates that the official Fees for patents have been increased in Syria. The increase was for publication fees mainly and for other disbursements.
The ministerial decision has entered into force in Syria on the 1st July, 2016.
Please note that the Abu Dhabi Department of Economic Development (ADDED) will introduce a number of measures and penalties based on law No. (2) of 2009 on the establishment of ADDED and Resolution No. 25 on the regulation of economic activities and license issuance.
“These authorize the ADDED to impose penalties that can even reach the closure of any establishment that is involved in commercial fraud,” said Khalifa bin Salem Al Mansouri, ADDED Acting Undersecretary. Al Mansouri said his department is committed to continuing its efforts to combat trading in counterfeit and fraudulent goods and to confiscate them across the emirate of Abu Dhabi through raids. He stressed the commitment of the ADDED to protect commercial activities across all sectors, especially those that are directly involved with consumers.
Al Mansouri stressed that in line with its endeavors to promote its role in the field of commercial protection in Abu Dhabi, ADDED has initiated procedures to enforce laws of competition and intellectual property protection, to develop electronic platforms to receive consumer complaints, to launch awareness campaigns to ensure consumer rights and protection and to enforce governance mechanisms along with strategic partners in the field of consumer protection.
Parts of reports from Emirates 24/7 and Khaleej Times.
Please note that the official fees of local attestation of powers of attorney or any other legalized document to be used for IP matters in Iraq & Kurdistan have increased and JAH has amended our charges accordingly. The local legalization of power of attorney or any other official legalized document must be locally legalized from the following authorities (General Commission for Taxes at Ministry of Justice, Legalization Directorate at the Ministry of Foreign Affairs and Central Bank) in order to be acceptable by the registrars of respective jurisdictions.
The Ministry of Economy at the United Arab Emirates announced that it will launch an online patent and design filing service offered by the PTO. The new web service will allow UAE local agents to file patents and designs applications online. Presently, all agents in the jurisdiction have been requested to register themselves for this service; however, the official notification regarding the commencement of this practice is yet to be issued.
We wish to kindly draw your attention to the latest PCT update that Djibouti has deposited its instrument of accession on the 23 June, 2016. Djibouti is the 150th Member State to join the PCT and the Treaty will enter into force for Djibouti on 23 September, 2016 and may be designated in PCT International applications from the said date. However, the law in Djibouti has not yet been amended to recognize the PCT, thus it is expected that there will be considerable delay before the country may do so.
In evaluation of the worldwide economic slowdown we have taken serious strides to streamline our efficiency and cope with the current economic situation, we have decided to reduce our professional charges in 2016 for Yemen, Iraq, Kurdistan, Iran, Djibouti and Angola. We are now thoroughly studying our schedule of charges for other countries where we operate and we will be considering our fees as well and advise you accordingly.
We wish to kindly inform our clients and associates that Iraqi Trademark Office has introduced a list of requisites for registration of trademarks to be filed under Class 5 for pharmaceuticals and other preparations for medical or veterinary purposes.
List of new requirements besides the required documents are as follows:
- International Nonproprietary Name
- Name of manufacturer
- Name of distributor
- Drug formulation/dosage form
Please note that persons interested in filing trademark applications covering pharmaceutical and veterinary preparations and sanitary preparations for medical purposes should take care to provide the above requisites. Please note that this will apply on all new as well as pending applications that have not been examined yet.
The system is expected to be similar to that of Syria which imposes filing requirements that are specific to class 5. The TMO in co-operation with the country’s Ministry of Health will decide upon the underlying applications before they are placed for examination. Accordingly, it is expected that the applications will be rejected on formal grounds if the applicant fails to provide all of the required information.
Further to our news alert regarding the change of multi class system in this jurisdiction to single class system, we wish to elaborate of some key points regarding the official suggestion letter of Afghanistan PTO to Ministry of Commerce and Industries in regard of single class applications:
1) The new regulation of filling separate applications per mark per class will only be applied for applications filed after March 11, 2016 and not for the previously filed applications.
2) Renewal and recordals of the trademarks which have been registered via multi class applications will be renewed and recorded via multi class applications.
3) Pending applications will follow the old system
Please note that it is now possible in Oman to cancel or ask the applicant to alter the registration of any trade name if it is similar to a registered trademark or any part of the trademark, or if it is similar to another trade name recognized nationally or internationally. These new stipulations were a part of the Ministerial Decision no. 124/2016, the Ministry of Commerce and Industry (MCI); furthermore, complaints against parties with trade names that infringe trademarks may now be filed at the said Ministry.
Kindly take note of the recent Ministerial Orders dated 17 March 2016 amending the Rwandan trademark law which have been implemented stipulating the following changes:
All powers of attorney required for a filing of trademarks now need to be notarized instead of the simply signed authorization used earlier. The term for filing an opposition to an application for a trade mark or a geographical indication has been increased from 30 days to 60 days, and the term within which the applicant for registration must respond is 14 days. The opposition document must contain specific information, including the grounds of opposition and the evidence along with the POA
JAH would like to advise its clients and associates that the Omani Intellectual Property Directorate, has issued new Circular stipulating that renewals for trademarks that are not originally registered by same agent should be filed with a pledge by the new agent declaring that the role will be restricted for renewal without undertaking any other action unless a change of agent name and address is recorded against the concerned trademark. It is clarified that those applications which do not have the change of agent of service recorded against them will not be accepted for renewal action without the above mentioned undertaking; otherwise the recordal of change of name and address of the agent will be obligatory.
As of 6 June 2016 new notice has been issued in the jurisdiction of Yemen stipulating that the use of class heading in trademark applications will no longer be an accepted practice.
This decision of the General Head of Intellectual Property Directorate has been issued in accordance with the Ministerial decision No. 239 of 2011, relating to the adoption of International Classification of Goods and Services.
It is impressed that trademark applications with class heading will be refused, and the applicant should specify the goods/ services for which registration is sought. Furthermore, use of the phrase “all goods and services” under a respective class will not be acceptable.
The said stipulation is only applicable to new applications filed after June 06, 2016 and not for the applications already filed or pending.
Please be advised that Bahrain has increased the official fees to conform to the Law 6/2014 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 today 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, JAH & CO. IP 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.
Please be advised that the West Bank Trademark Office has issued directives stating that it is no more permitted to file trademark applications in this jurisdiction without the original legalized power of attorney which has to accompany the application at the time of filing.
Earlier it was possible to file the trademark application without the required legalized power of attorney which could be submitted within two months from the date of filing which can be extended for one month time only. In this regards, for urgent applications please contact email@example.com
The Ethiopian Trademarks Office has issued new stipulations to enforce the Regulation of Renewal of 2006 Act No. 25 clause 4, which requires all renewals to be published with the Official Gazette and a local newspaper.
With immediate effect, the trademark office shall now record the effecting of a renewal registration and thereafter notify the same in the intellectual property gazette and a newspaper having nationwide circulation in Amharic. We wish to kindly clarify that the Amharic publications of the renewal is a must; however, requesting the same additionally in English is left to the discretion of the trademark owner.
Please note 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.
For more information regarding GCC PATENT please contact firstname.lastname@example.org
JAH & Co. IP wish to thank Prof.Dr. Heinz Goddar and Dr. Volker Scholz of BOEHMERT & BOEHMERT for their kind visit to our Head Office in Doha. The wonderful opportunity provided us with valuable insights and knowledge regarding ever evolving sphere of Intellectual Property Improvements and measures of patent protection in this jurisdiction was the key focus of the discussion. Mr. Jehad Al Hasan CEO of JAH hosting the dinner expressed his great pleasure and happiness at the visit and his personal friendship with the delegates.
We wish to thanks Prof.Dr. Goddar and Dr. Scholz for this wonderful opportunity.
Please be advised that 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.
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:
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.
JAH is growing again!! We are pleased to announce the relocation and expansion of our UAE Office to the new location near Embassy Area in Dubai. Our practice is exclusively in the area of intellectual property and the new location allows us to better serve our growing markets and support local business communities being closer to the Intellectual Property Office and the Foreign Embassies of UAE.
“The opening of our expanded office is a reflection of the steady growth and increasing number of local clients and associates, also adding to our strategic plans for continued growth and development across the MENA” comments Mr. Jehad Al Hassan, CEO, “Our expanded presence and additional support staff here recognizes that new and existing customers benefit from local, partnership driven support to complement our global services. Further we also intend to provide exceptional local coverage to our customers and will strengthen current and future projects across the Emirates.”
To visit us and to discuss any matters related to how we may assist you and your clients, feel free to contact us.
Please be advised that following the recent trend of increase in official fees for countries in the MENA region Morocco too has updated their trademark application fees:
The official fees for filing of one application in one class became MAD1200 (125 USD) instead of MAD1000 (up to 3 classes) and MAD150 (16 USD) for each additional class instead MAD108. Further the renewal official fees has also been increased to MAD 1440 (150 USD) and MAD180 (19 USD) for each additional class instead of MAD 1200 (up to 3 classes) and MAD120 respectively. The official notification can be accessed here.
Please be advised that the Ugandan Trademarks registry has published a 2nd list of trademarks eligible to be restored. We kindly request you to check your records so as to maintain your IP rights within this jurisdiction.
With rejuvenated energy and as a follow up to the recent adoption of the GCC Trademark Law, Kuwait’s Council of Ministers voted and published on March 27, 2016 a new law, Law no. 11/2016, which is a positive step in the country’s accession to the Patent Cooperation Treaty. Please note that the Patent Office is yet to introduce and publish new regulations; it also remains to be seen if patents are going to be granted in this jurisdiction anytime soon.
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:
- Renewal of Trademark will be filed and completed online. The e-filling will commence immediately i.e. 27 March, 2016
- 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
- A Power of Attorney legalized up to Saudi Arabian consulate.
- 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.
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.
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:-
- International and National Patents can now be filed in Zanzibar.
- Registrar to apply the International Patents Classification System under the Strasbourg Agreement, as updated in its subsequent editions
- Utility Models can now be filed in Zanzibar.
- Introduction of Payment of maintenance Annual Fees, for Patents and Utility Models.
- Clarity on how some apparent ambiguous provisions in the New Act should be construed.
- Industrial Designs can now be filed and protected in Zanzibar.
- Layout Designs (Topographies) of Integrated Circuits can now be filed in Zanzibar.
- Service Marks, Collective marks, certification marks as well as nontraditional marks, can now be filed in Zanzibar.
- Procedure for reclassification of trademarks
- Geographical Indications can now be filed in Zanzibar
- Categorization of goods for the purposes of the registration of Geographical Indication, provided in the Third Schedule.
- Provision of Security of Costs, in opposition matters, in respect of Applicants/Opponent with no immovable property in Zanzibar.
- Priority can be claimed based on an earlier application.
- Evidence under the New Act to be filed by either Statutory Declarations or Affidavits.
- English or Kiswahili to be used as official language
- Registered User or License Agreement can now be recorded in Zanzibar
- No refund of Official fees once paid.
Please find the regulation here.
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.
JAH & Co. IP would like advise our clients and associates that The Trademark Office of Afghanistan has shifted its classification system from multi-class to single class applications. The said decision was communicated via email circular by the AFGHAN TRADEMARK AND PATENT Office. The notification was not clear on how the TMO is going to treat pending trademark applications as well as trademark registrations following this new classification system. We shall circulate more information regarding the same as and when clarifications are issued.
Please contact email@example.com for contact details of the APTO for further confirmation.
JAH & Co. IP would like to inform its clients and associates that the Iraqi Trademark Authorities have stipulated new directives which will come into effect as of March 3, 2016.
The summarized version is bulleted for your easy reference:
• Obligatory search before trademark registration has now been adopted with each class of goods or services to be searched separately with official request. The Official Search Fees for each class of goods have been reported to be 20,000 Iraqi Dinar (+/- 19 USD). The authorities confirm that the time frame to conduct the official search will be 10 working days.
• Depending upon the official search report, the trademark can be progressed to registration or a negative report can be challenged at the court of law.
• The TMO has discontinued the practice of insisting on Arabic Transliteration to be included in the logo of the marks which are in non Arabic languages.
• The Registrar will continue accepting the new applications without the POA while the same can be filed belatedly within NON-EXTENDABLE SIX months from the filing date at no extra fees.
• For recordal of assignment, change of name/address, mergers and license; all requisite documents are to be submitted in the original at the time of filing. According to the current practice the original documents could be filed at a later stage after filing.
These new directives are expected to expedite the prolonged delays faced by the Iraqi TMO in which the registration was taking 2 to 3 years or more.
The official circular attesting to the above is to be published within the week.
JAH & Co. IP would like to inform our clients and associates the latest jurisdictional updates in countries of our operation:
Please be advised that 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).
The Controller General of Patents, Designs and Trademarks has issued an order dated 19 February publishing the revised Guidelines for Computer Related Inventions (CRI). The current guidelines are in line with the provisions of the Patents Act, 1970.
The guidelines published by the patent office on 21 August last year, were widely regarded as limiting developers. After consultation and research, the Patent office issued an order dated 14 December, 2015, keeping the guidelines in abeyance. In other words, the patent office is effectively saying no to all patents that are purely software-based. However, software will continue to be protected by the copyright law, but can’t be patented in India under very specific conditions which have been specified as shown below.
The patent office has accepted its three-part test to determine the patentability of CRIs:
- Openly construe the claim and identify the actual contribution;
- If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
- If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.
Such a test will ensure that applications for patents in the field of software will be rejected and only genuine applications claiming a novel hardware component along with software will be eligible for patent protection.
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.
In January 2016 the Ministry of Trade and Industry issued Decree 43/2016 amending Decree 92/2015 concerning the rules for the registration of the factories and Trademarks Owners eligible to export their products to the Arab Republic of Egypt. All factories, trademark owners and distribution centers that want to export products listed below must register at GOEIC (General Organization for Export and Import Control). This decree will come into force two months after the date of its publication. This is expected in April 2016.
Documents required for the registration are:
Factories must submit a registration form together with the following documents:
- Certificate of the legal status and the license of the factory
- List of the manufacturers products and it’s trademarks
- The trademark of the product and any licensed trademarks by the trademark owner
- A certificate to prove that the factory has a quality control system, issued by a body recognized by the International Laboratory Accreditation Cooperation (ILAC), or International Accreditation Forum ( IAF ) or from an Egyptian or Foreign Governmental body approved by the Ministry of Foreign Trade.
Licensees must submit a registration form together with the following documents:
- A certificate to prove registration of the trademark and a list of products manufactured under this trademark.
- A certificate from the trademark owner listing the distribution centers which are authorized to distribute products with this trademark.
- A certificate to prove that the trademark owner has a quality control system, issued by a body recognized by the International Laboratory Accreditation Cooperation (ILAC), or International Accreditation Forum (IAF ) or from an Egyptian or Foreign Governmental body approved by the Ministry of Foreign Trade.
In case of doubt regarding the authenticity of the documents, inspection may be required to ensure the authenticity of the documents.
We have been recently informed by the authorities at Ministry of Trade and Commerce imposed some updates on the patent registration procedures. Please be advised that applicants will be notified regarding payment of the advertisement fees to publish the patent application in the Intellectual Property Journal issue after acceptance of the patent. The advertisement would be published in the next issue.During the 2 month opposition period, if no oppositions were raised the applicant must furnish copies of the patent along with the granting fees, it is requested that publication and registration fees are paid on time to avoid delay of the issuance of the letters patent. Qatar has only recently started the granting of patents and clearing the back log of applications with the office.
The backlog in Design Applications filed between 2011 and 2013 have finally been brought under consideration of the Ministry of Economy and a circular letter stating that the department will commence to finalize them soon have been issued. Accordingly it should be noted that the publication fees should be paid within 60 days from circular or the application will be deemed abandoned.
JAH & Co. IP would like to inform our clients and associates that authorities in UAE will be setting-up dedicated courts to handle intellectual property rights disputes and small claims. The move is part of the UAE’s strategy to build up a knowledge-based economy and diversity away from hydrocarbons, gulf news report that Judge Jasem Saif Buasaibah, head of the judicial inspection department, commented “The move reflects the country’s keen interest in protecting intellectual property rights and making quicker and more effective decisions on intellectual property rights-related disputes,”
Further the judicial inspection department will provide specialized training to judges to help them understand the procedures and technicalities associated with IPR cases.
“Specialist judges recognize case patterns and legal issues, which reduces delays and facilitates the speedy resolution of cases. This saves time and allows court resources to be used more efficiently. With increased judicial competence in effectively and efficiently resolving IPR cases, confidence in UAE’s IPR litigation will also increase,” Buasaibah said.
The establishment of specialized IPR courts produces more knowledgeable judges and practitioners, who are better able to manage and preside over IPR matters. Because their subject matter is concentrated, specialized IPR courts are better equipped to remain current on new IPR issues and laws,” he said.
An intellectual property court has already been set up at the Abu Dhabi Court of First Instance.
Buasibah said small claims courts, which were earlier created at the Fujairah Court of First Instance, will be established at courts across the country.
The jurisdiction of small-claims courts typically encompasses private disputes that do not involve large amounts of money.
A small-claims court generally has a maximum monetary limit to the amount of judgments it can award, often in the Dh 20,000 and less. By suing in a small-claims court, the plaintiff typically waives any right to claim more than the court can award. The plaintiff may or may not be allowed to reduce a claim to fit the requirements of this venue. To bring the case to small-claims court, the plaintiff must prove that actual damages are within the court’s jurisdiction of Dh20,000 or less.
JAH & Co. IP would like to inform our clients and associates a detailed update on the adoption of new provisions regarding The Ministerial Decree No. 500 regarding the Implementing Regulations of Law No. 13 of the year 2015(GCC LAW).
Kindly note the following:
- Replies to office actions must be filed within 60 days from the date of issue of the refusal;
- Final refusals by the Registrar can be appealed through Appellant Committee within 60 days of notification. Said decision is subject for appeal before the Court within 60 days from issuance;
- Opposition period is now 60 days from the publication date. Previously, while accepted trademarks were published in 3 Gazettes with a 7 day period between each publication, the opposition period was 30 days from the date of the last publication;
- Replying to oppositions must be made within 60 days from the date of notifying the applicant about the opposition;