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JAH Update Oman and Bahrain with respect to GCC Trademark and VAT Law
6 Nov 2018

OMAN

 

As per the new stipulations issued by the Omani Trademark Registrar it is now permitted to file trademark applications in the name of individuals in Oman provided that the applicant submits a letter in any form; i.e. a declaration or an attestation certified, proving that she/he is engaged in business, trade or industrial activities and such document can be obtained from the Chamber of Commerce or from any equivalent official party such as the Ministry of Economy, Commerce or Industry where the applicant resides. Alternatively, the applicant can submit a simple copy of the mark home application or registration certificate in the home country if available which is preferable or of any other country in its absence.

 

The above is in compliance of the GCC Trademark Law (The Trademark Act of the Member States of the Cooperation Council for the Arab States of the Gulf) Article 4, to which Oman became party to on 25th July 2017 by the Sultanic Decree No. 33 of 2017.

 

Article 4

 

The following categories of applicants shall have the right to register their trademarks:

 

1- Any natural or legal person holding the nationality of any GCC State, whether such a person is a manufacturer, producer, merchant professional or a service enterprise owner.

 

  1. Foreign persons residing in any GCC State wherein they are authorized to engage in commercial, industrial, professional or service business activities.

 

3- Foreigners holding the nationality of any state that is a member to a multilateral international convention to which a GCC State is a party or any residents therein.

 

It is permitted under the practice of the Omani Trademark Registrar to file trademark applications and obtain filing number and date as well as the official filing certificate, renewal, recordal of change of name, address, assignment or license agreement without the complete required documents which should be submitted within 60 days from the date of filing at no additional cost; otherwise, a penalty of official fees of USD 55 will be due after the said 60 days term without a time limit.

 

Trademark Requirements for Individuals:

 

  1. A power of attorney, with an Apostille certification if the country of the applicant individual is a member of the Hague Convention; otherwise the power of attorney should be legalized up to an Omani consulate abroad.
  2. A certified copy of a letter in any form; a declaration or an attestation proving that she/he is engaged in business, trade or industrial activities and such document can be obtained from the Chamber of Commerce or from any equivalent official party such as the Ministry of Economy, Commerce or Industry where the applicant resides. Alternatively, the applicant can submit a copy of the mark home application or registration certificate in the home country if available which is preferable or of any other country in its absence.
  3. A certified copy of the hone or foreign application/registration (priority document) in case priority is to be claimed

 

BAHRAIN

 

Bahrain is set to become the third Gulf Cooperation Council (GCC) member state to introduce a VAT system. The Bahrain parliament has voted to approve a draft law that will lead to the introduction of the new taxation system on January 1, 2019. The VAT will apply to goods and services at the standard rate of five percent, with some limited exceptions which are expected be clarified in due course.

 

As per the unified GCC VAT agreement (Unified VAT Agreement for The Cooperation Council for the Arab States of the Gulf), to which Bahrain is a party each member state of the GCC is expected to establish their own separate national legislation concerning the VAT and as such the detailed compliance requirements and set of rules will be outlined in each respective legislation. GCC member states were mandated that any 2-member states should to implement VAT law within 1 year; accordingly, UAE and Saudi Arabia introduced VAT on January 1, 2018. The process of introduction of VAT in other GCC countries is at various stages of preparation with Bahrain likely to implement first followed by Oman, Kuwait and Qatar.

 

The Sultanate of Oman has announced that VAT would be introduced in 2019, most likely mid-2019. The Kuwaiti parliament is yet to vote on the VAT bill which should be introduced in the upcoming session before the year-end. Accordingly, the expected timeline of introduction of VAT in Kuwait is late 2019 or even 2020. We await the announcement of Qatar in this relation in due course.

JAH Update Kuwait, Oman and Libya
8 Oct 2018

KUWAIT

Please note that renewal of trademark registrations are now filed online in Kuwait, in the Trademark Office’s drive to completely digitalize the various processes undertaken by TMO.

Kindly note that the system being very new most of the data available in the online portal is incomplete and the onus is on the agent who wants to renew the mark to complete the missing details. There are also certain instances where some of the old marks are not available in the online portal and the agent needs to coordinate with the Kuwaiti Trademark Office to enter the mark details in the online portal enabling the agent to process the renewal request and settle the renewal fees accordingly.

In view of the above, it is recommended to send us the renewal orders in time ( preferably 1 week along with a copy of the registration certificate or last renewal/recordal certificate in order to secure the details of the mark and complete the missing information in the online portal before proceeding with the renewal request and to settle the renewal fees accordingly.

OMAN

The patent office in Oman announced that it is possible to search the patent database for patent applications filed or entered in Oman using bibliographic data of the priority applications or PCT publications. The search results will be provided officially

On a related note, as Oman is also party to the GCC Patent System, it is also advised that the search be also conducted alongside at the same time.

LIBYA

Kindly note that following an escalation in fighting around Libyan Capital of Tripoli we have been receiving a constant stream of queries from clients and associates regarding the functioning of the trademarks office. We wish to kindly clarify that the trademark/patent offices are functional and are accepting applications normally.

Change of filing requirement for POA – Afghanistan
1 Sep 2018

The Afghan Trademark Registration Office (ATRO) has stipulated that it is no longer permitted to file trademarks applications unless with the presence of at least scanned copy of the notarized and legalized POA up to the Afghani Consulate abroad. This decision has been put into effect as of 29/08/2018.

 

As a background, please note that ATRO used to accept filing a trademark application without the legalized power of attorney at the time of filing which can be submitted within three months from the date of filing at no additional cost. However, ATRO has recently changed this practice and started requiring scanned copy of the legalized POA at the time of filing with effect from the date 29/08/2018 allowing to submit the original POA within one month from the date of filing.

 

In this connection, please note that in absence of Afghani Consulate in the home country of the applicant, it is possible to complete the channel of legalization locally in Kabul from our side provided that the power of attorney is sent to us notarized by a Notary Public and attested by the Ministry of Foreign Affairs of the applicant home country. This service of local attestation of power of attorney or any other IP related documents is solely provided for those clients residing in a country where Afghanistan Embassy/Consulate is not available; otherwise, it will be considered as an illegal act.

 

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

Trademarks applications at “risk” in Kuwait
16 Aug 2018

We wish to kindly update all clients and associates that we have recently received an Official Circular from the Kuwaiti Trademarks Office informing local agents that they set a non-extendable deadline of 31/08/2018 for all trademarks applications for registration filed before 01/01/2018 to clear the following:

 

  • To enter the details of all filed pending applications in the IPAS system (the new internal system for records adopted by the Kuwaiti Trademark Office) for the purpose of examination
  • To settle publication fees for all examined and accepted trademarks applications for registration

 

Failure to attend to the above within the prescribed deadline will result in the lapse of the application.  Attached is a copy of the circular as received from the Kuwaiti Trademarks Office for your reference.

 

JAH will be writing to our clients separately with respect to their trademarks and for trademarks not registered through our firm, we would be pleased to extend our services.

 

Kindly mail info@jahcoip.com for the related requirements and charges so as secure the protection of your trademarks at the earliest duly noting that an original legalized POA is must to undertake the aforementioned actions.

JAH Update Lebanon,Swaziland, Namibia and Somalia
9 Aug 2018

LEBANON

 

The Trademark Office in Lebanon has requested that all requests for recordal of assignments and mergers to be filed under this jurisdiction from June 29, 2018 to be accompanied by the original registration certificate.

 

As per the earlier procedure the TMO used to issue a simple declaration attesting to the recordal but now fresh certificates will be issued in the name of the assignee or the new entity following the merger. The original certificate of registration will be kept with the registry for their records.

 

SWAZILAND

 

The passing of the Intellectual Property Tribunal Act of 2018, which seeks to establish a decision-making body which will be responsible for hearing all matters and disputes involving intellectual property rights; the Act has entered into force without any accompanying regulations. The Patent and Design Act of 1997 and the Patent, Designs and Trade Marks Act of 1936 have now been replaced with the Patents Act more details are yet to be published.

 

NAMIBIA

 

The Namibian Industrial Property Act, 2012 has come into effect on 1 August 2018; it repeals the Patents, Designs, Trade Marks and Copyright Act, 1916, the Patents and Designs Proclamation, 1923 and the Trade Marks in South West Africa Act, 1973. This Act provides for the registration and protection and administration of patents, utility model certificates, industrial designs, trademarks, collective marks, certification marks and trade names.

 

SOMALIA AND SOMALILAND

 

We are pleased to note that publication of cautionary notices is now possible under both the jurisdictions. Prior to 1991 the Trade Marks Registry in Somalia was in operation and it was possible to file trade mark applications; however, the ensuing civil war lead to the breakup of the country. In the absence of Trademark Law protection of trademarks is only by publishing a cautionary notice in the leading newspaper and online. Therefore, there is no provision for renewal of the mark. However, the cautionary notice(s) may be re-published annually.

 

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

JAH Update UAE and Iran
30 Jun 2018

UAE

 

We wish to kindly draw your attention to the UAE TMO has now completed the preparation of the electronic renewal services for trademarks as part of their ongoing effort to swift gradually to services online. It is now possible to file the renewal application which will be published immediately in the next Gazette issue for which clips of publication can be uploaded together with the publication of local gazette in order to issue the electronic renewal certificate.

 

It has also been clarified that for all renewal applications filed as of 06/12/2015, it is possible to upload publication of local newspapers and issue the electronic renewal certificate.  This news follows the TMO announcements of issuing certificates electronically as of November 2017 for trademark registration and option of conducting official searches online as of April 21, 2018

 

These e-services, among others provided by the TMO, replace previous procedures that required the submission of documents and applications in person.

 

IRAN

 

Please note that Iran Intellectual Property Office has announced that as of May 30, 2018 the followings will apply to all PCT cases in Iran for granted, pending and future cases.

 

  1. Terms of protection: 20 years from PCT filing date, not Iranian application date, IIPO will issue a notification for all granted patents with regard to this error.
  2. PCT patents are subject to annuity payments from PCT filing date and all past annuities must be paid, thus patent applications filed on May 30, 2018 onward are subject to additional annuity payments. PCT applications and granted patents prior to May 30, 2018 must pay the missing annuities at the time of next annuity payment.
  3. PCT applications that are in the process of registration must pay the missing annuities prior to IIPO granting the patent.

 

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

JAH Update Morocco, Libya and Bahrain
7 Jun 2018

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
30 May 2018

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
27 May 2018

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
2 May 2018

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
28 Apr 2018

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

JAH Update IRAQ
28 Apr 2018

IRAQ

 

Transliteration of Latin trademarks into Arabic no longer a must at the time of filing

The Trademark Office in Iraq announced that trademark applications may be filed in Latin script without having to submit the Arabic transliteration of the mark. This update rescinds the previous registration requirement whereby the addition of Arabic transliteration; i.e. the way the Latin word(s) is spelled out to a Latin mark was a must, which provides for the protection of the transliteration of a registered mark without having to file a separate application for same.

 

With the new procedure in place at the TMO, it becomes advisable to register the transliteration of the mark in Arabic as a separate registration. Another advantage of registering the Arabic transliteration of the mark is that it may mitigate issues that would arise when it comes to enforcing trademark rights against third parties using or attempting to register confusingly similar Arabic transliterations. It is worth noting that it is easier to enforce marks in the same language—Arabic, in this case.  JAH always recommends that the trademark be filed exactly as it is being used or intended to be used in order to establish concurrence between actual use and registration of the trademark and as such avoiding to any possible cancellation action based on non-use.  However, registering the trademark in Arabic version; i.e. the way it is spelled out is to avoid third parties registration of Latin marks in Arabic or their attempts to use the Arabic transliteration of a registered in Latin characters.

 

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

JAH Update UAE
28 Apr 2018

UAE

 

PAPERLESS (ONLINE) SEARCH

The Trademark Office of UAE launched an electronic searching system with respect to trademarks

filed or registered in the UAE on 19 April 2018. However, the online trademark searching system is not accessible to the public and it is merely an added feature to accredited UAE agents access portal. The official fees to be paid to conduct the searches remain the same; however, the search request can be now made online by and results thereof received in the same medium.  This follows the recent move by the TMO to issue certificates electronically as of November 2017. These e-services, among others provided by the TMO, replace previous procedures that required the submission of documents and applications in person by agents. Overall the system encourages efficiency and smoother process for undertaking work at the TMO.

 

Trademark registration before the Dubai Department of Economic Development (DED):

Dubai Department of Economic Development (DED) launched an innovative online gateway for the registration of registered trademarks by active brand owners in the Dubai market.  The online portal will assist the Department of Economic Development (DED) in their routine market checks for any counterfeit products and the trademark owners/agents will be notified of the DED’s encountered infringements. Brand owners are however still required to lodge official complaints for the DED to take action against any infringing parties. We outline hereunder for you the required documents for the recordal of registered trademark with the Department of Economic Development (DED) as follows:

  • A simple copy of the UAE trademark registration certificate
  • A legalized Power of Attorney by the UAE Consulate in the name of the registrant as shown in the certificate of registration which is not required if we already possess one granted for registration of the trademark.

 

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

JAH Update OAPI
28 Apr 2018

OAPI

Adoption of NICE 11th EDITION and reclassification existing services under Class 42

11th edition of Nice Classification – version 2018 has been adopted by OAPI trademarks office as of 01/01/2018 and all new trademark applications filed henceforth should abide by this classification. Still, however, the trademark office has accepted the use of 11th edition of the Nice Classification -version 2017 up till 31 March 2018. As of April 1, 2018, the trademarks office has enforced the adaptation of 11th edition of the Nice Classification – version 2018. The official circular clarifying aforementioned matter can be referred to for confirmation.  In previous editions of the classification system, class 42 included services such as “providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes”. However, since the adoption of the above most recent edition, these services are re-classified into classes 42 to 45.  As for existing registrations in class 42, the registrar has put forward the following options to be implemented only at the time of renewal, taking into account the availability of the new classes 43, 44 and 45.

 

OPTION ONE:

Extending existing registrations in class 42 to add classes 43, 44 and 45 respectively or any of these classes will not incur additional cost except the fees for renewal of the extended class (es) at time of renewal:

 

  • Official renewal fee in one class (42): USD 925 
  • Official fees for each additional class: USD 190

 

The renewal certificate issued after the re-classified service classes will bear the same registration number and filing date in the accordance to the initial trademark application.

 

OPTION TWO:

If registrant does not wish to maintain part of the services initially filed under class 42, the registrant will have to apply for renewal and the same will be published in class 42. Simultaneously the owner ought to submit a recordal of partial abandonment of services previously covered in class 42 and currently re-classified in either 43….or more.

 

  • Official fees for the restriction/partial abandonment is USD 490 per trademark

Re-classification request has additional follow up procedures such as examination and publication.  However, after re-classification the trademark will not be faced with a rejection for the new classes due to relative grounds of identical or closely similar trademarks filed after 1 April 2018 in any of these classes as such rights are already in force.  Also, for new trademark being filed under classes 43, 44, 45 a prior right search will not be undertaken for existing trademarks under class 42. The trademark for the new re-classified classes will not be open to third-party oppositions at the time of publication of renewal since such application is concerning only renewal of rights of the prior registration (with the same registration number and application date). It is not considered as a new registration. On the other hand, the trademark holder may object to the registration of similar marks filed in classes 43, 44 or 45 after 1 April 2018 on the basis of his prior right.  Extension request cannot be undertaken as a separate action and must await the renewal date to proceed.

 

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

 

31 Mar 2018

YEMEN- New deadline stipulations for trademark prosecution

 

In pursuant to Ministerial resolution No. 20 dated 18 March 2018 in regard to setting up deadlines (time frames) for the prosecution of trademarks it has been decided that:

 

  1. Trademark applications suspended for 12 consecutive months from filing date by applicant or his agent due to non-payment of publication fees or failure in completing filing formalities or any other reason caused by applicant shall be considered abandoned and as never existed.
  2. Accepted trademarks with conditions or rejected trademarks by Registrar or Appeals Committee which applicant or his agent fails to complete registration process within 12 consecutive months from date of decision shall be considered abandoned and as never existed.
  3. Applicant or his agent’s failure to complete publication formalities of an accepted trademark in sixty days from notification of acceptance will result in the abandonment of trademark which will be considered abandoned and as never existed.
  4. Applicant of a trademark application will be given ninety days from expiry of opposition term to receive opposition plea in order to file a response to same; otherwise trademark application will be considered abandoned and as never existed.
  5. This decision is applied to all the pending applications filed before or after the date of this decision which has come into effect on 18/3/2018.

 

KUWAIT- Change in filing formalities after the adoption of online system

 

As of 1 April 2018 the Kuwait Trademark Office has upgraded its system and undertaken the necessary procedures towards switching filing trademarks to a completely online system and as such the documentary requirements will now be fulfilled online by uploading the same and originals of which should be submitted for verification within three months though the Kuwaiti Trademark Registrar is not strict in applying this deadline. The earlier practice of filing trademarks without the presence of the original documents have been discontinued even if there is a priority claim with an imminent deadline.   Pursuant to this new system statement of goods/services should be selected from the Nice Classification, 11th edition noting that there will be no additional cost for selecting a large number of items of goods or services to be included in the trademark application and class heading is no longer applicable and copies the filing document should be available on time of filing which are as follows:

 

  1. A PDF copy of power of attorney legalized up to a Kuwaiti Consulate abroad or in its absence any Arab consulate available in home country of Applicant Company; the original of which should be submitted within three months though the Kuwaiti Trademarks registrar is not strict in applying this deadline.
  2. A simple PDF copy of the certificate of incorporation or an extract of the applicant entry in the commercial register or any equivalent document attesting to the legal existence of the applicant company (neither legalization nor original is required).
  3. A certified copy of the corresponding home or foreign registration/application (priority document) legalized up to a Kuwaiti Consulate abroad or in its absence any Arab consulate available in home country of Applicant Company in case of claiming priority; the original of which should be submitted within three months though the Kuwaiti Trademarks registrar is not strict in applying this deadline.

 

KUWAIT- PCT national phase entries start

 

Kuwaiti Patent Office started to accept filing of Patent Cooperation Treaty (PCT) applications designating Kuwait and entering into the national phase, as of March 27, 2018 noting that the PCT came into force in Kuwait on September 9, 2016 following three months of depositing its instrument of accession with the World Intellectual Property Organization (WIPO).  According to the announcement of the Kuwait Patent Office, the time limit to file a PCT application in this jurisdiction is 30 months from the priority date if PCT application is filed with priority claim or 18 months from the international PCT application’s filing date.  It is declared in the Kuwaiti Patent Office announcement that the only document required for filing PCT applications is a power of attorney legalized up to a Kuwait consulate abroad or in its absence any Arab consulate in the home country of applicant company as per the practice of Kuwaiti  IP authorities.

 

We shall follow up the matter with the Kuwaiti Patent Office for further details about the procedures, requirements and fees which will be provided soon.

 

 

For more information or clarification please write to us at info@jahcoip.com.

JAH NEWS UPDATE QATAR-IRAN-SYRIA
5 Mar 2018

QATAR – Provides respite to design owners through copyright law

 

As JAH & CO. IP had reported earlier, the Qatari Trademarks, Commercial Indications, Trade Names, Geographical Indications, and Industrial Designs & Models Law no. 9 of 2002 was issued on June 8, 2002 and published in the Official Gazette coming into force on September 2002; however, the authorities have not yet established the necessary office for receiving design applications, nor have they drafted the implementing regulations yet.

 

In light of the above and as an alternative measure, protection was sought out by publishing cautionary notices at regular intervals in local newspapers. Though such publication is not effective as a registration and are not deposited with any government department they will help in defining the owner’s interest in industrial property, announcing the ownership thereto and alerting the public against any possible infringement and could be a legal value when submitted in court, in the event of infringement, thereby claiming ownership of the design and alerting third parties against further infringement.  There is no standing regulation as to when a cautionary notice should be republished.

 

Now, we would like to advise our associates and clients that the Legal Counsellor at the Intellectual Property confirmed that designs and models owners can obtain a legal protection of their designs and models through registration as a copyright under copyright law no. 7 of 2002 until the implementation regulations of the design law is issued and actual filin of designs is put into effect. The following are the requirements to file a design as a copy right in Qatar

 

• POA, legalized
• Name of designers
• Subject of the work
• 5 copies of the work
• Detailed specification of the work
• Written declaration of the ownership of the work
• Approval of the work by the competent department in the applicant’s country

 

IRAN – Incorporation of additional classes to existing registrations

 

It has been noticed recently that the Iranian Trademarks Registrar often requests applicants who file a separate application of additional classes of goods and services for existing registrations of the same mark to incorporate the additional classes into their previous registration. Therefore, it is recommended for any interested who have a registered mark in certain classes of goods/services and wishes subsequently to register the same trademark for different classes of goods/services to file a request for the addition of the concerned class of goods/services to the previous registration instead of a seeking a standalone registration. The request of addition of the classes to the previously registered registration mark will undergo substantive examination for absolute and relative grounds and publication in the official gazette for opposition purpose. In absence of any obstacle during examination and opposition, the recordal of additional class will be endorsed overleaf of the original registration certificate and it will enjoy the same protection term of the previous registration.

 

SYRIA – Reorganisation of  Intellectual Property cases

 

Please be advised that Syrian Ministry of Justice has recently announced that all IP related legal cases should be handled by the FIFTH Civil court of First Instance in lieu of the FIRST Commercial Court of First Instance. This Ministerial decision was stipulated on 24 February 2018 in order to organise  the back log and work load of legal cases being currently handled by courts in Syria. The FIFTH Civil court of First Instance will handle appeals against trademark registrar’s refusal decisions, oppositions against registration of trademarks, counter oppositions cases as well as infringement and cancellation actions.

 

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

JAH Update for Afghanistan, Oman and Yemen
21 Feb 2018

AFGHANISTAN – Lump sum collection of filing and registration fee for trademarks

 

JAH & Co. IP would like to advise its associates and clients that as of January 2018 Afghani Patent & Trademark Office (APTO) has started to collect filing, classification and registration official fees at the time of filing and prior to substantive examination for absolute and relative grounds noting that registration fees are non-refundable in case of rejection or opposition. No changes have been introduced to the time of paying official publication fees which will be collected after examination and issuance of acceptance notification. The official notification can be referred to here.

 

OMAN – Adopting the latest edition (11) of Nice Classification

 

The Eleventh Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification) has been officially adopted in the Oman, according to the Trademark Office at the Ministry of Commerce and Industry.

 

The Trademark Office is now ready to receive trademark applications for goods and services under the same edition of the classification.

 

Yemen – Evidentiary documents issued by Yemeni Chambers of Commerce proving prior use becomes critical ruling in opposition cases.

 

The Yemeni Trademark Registrar has stipulated that any opposition lodged against the registration of a published trademark application based on prior use, either party can submit an official notification from any of the Yemeni Chambers of Commerce evidencing use of the opposed trademark in the Yemeni market with all relevant information respective to use including date of first use, class number, statement of goods/services in respect of which trademark has been used and any other documents proving Legitimacy and prior use of trademark and description of the mark which will be sufficient for obtaining a ruling decision in favour of the party who has used the trademark beforehand. This comes in compliance with article no. 5 of Yemeni Trademark Law 23 of 2010.

 

For the Chambers of Commerce to issue an evidentiary use document they will nominate a committee to conduct a market search and investigation to conclude prior actual use based on evidences from the market. The official notification can be referred to here.

 

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

JAH Jurisdictional Update – Iraq & Angola
1 Feb 2018

Iraq

The Iraqi Trademark Register has issued a new stipulation to pay the publication fees of accepted trademarks within seven days from the notification of acceptance and failure to comply therewith will result in a penalty for late payment of publication fees of USD 42 per mark.

 

On a separate note the Iraqi Trademarks Registrar has started to issue official notifications for removal of old trademarks bearing the filing numbers of 51000 to 72000 (which are still pending) with a seven days time limit to re-file new trademark applications for the same trademark or the concerned old applications will be removed from the Trademark Register and considered as never existed.

 

Trademarks which will be re-filed as of now or within the seven days from notification will remain on trademark records until the newly re-filed trademarks are examined, as the examination process will be connected to the priority filing number of the old trademark.

 

ANGOLA

Angolan PTO issued a notification as per document attached requesting all applicants or their attorneys of pending trademark applications numbered from 5001 to 20757 to present the following documents in order to update the files respective to these trademarks and complete their registration process within a non-extendable deadline ending on 20 December 2018:

 

  A copy of the official filing receipt or application as filed;
–  Power of Attorney translated into Portuguese language and dully legalized up to an Angolan Consulate

of the applicant’s country or in the nearest Consulate.
  Certificate of Incorporation or Commercial Register of applicant company, proving the company’s

commercial activity in its native country translated into Portuguese language and dully legalized up to

an Angolan Consulate of the applicant’s country or in the nearest Consulate..

–  Receipt of the granting fees and/or renewal payment;

 

In light of the above, in case the above numbered trademark files are not updated within the deadline set out above by presenting the requested documents, it will lead to their removal from Trademark Register according to the above official notification.

 

Trademarks that fall within these numbers 5001 – 20757 and have already been registered or refused are excluded from this updating process.

 

For further information please write to us at info@jahcoip.com

JAH Conferences – 2018
30 Jan 2018

2018 has begun with a flurry of activity and we look forward to meeting our friends and colleagues; upcoming IP meetings which delegates of JAH will be attending are as follows :

Event Date Location
PTMG 96th Conference 19 – 20 March 2018 Porto – Portugal
CITMA Spring Conference 2018 21 – 23 March 2018 London – United Kingdom
INTA 140th Annual Meeting 19 – 23 May 2018 Seattle, Washington – USA
ECTA 37th Annual Conference

 

MARQUES 32nd Annual Conference

 

AIPPI World Congress

13 – 16 June 2018

 

18 – 21 September 2018

 

23 – 26 September 2018

Athens – Greece

 

Paris – France

 

Cancun – Mexico

 

Please let us know if you wish to arrange a meeting with us during any of the above events

10th Edition of Nice Classification in West Bank
9 Jan 2018

JAH & Co. IP would like to inform its clients and associates that the Trademarks Authorities at the Ministry of National Economy in West Bank has officially adopted the tenth edition of the International Classification of Goods and Services for the purpose of the registration of trademarks under the nice agreement (Nice Classification). Accordingly, the Trademark Office is now ready to receive trademarks applications for goods and services under the 10th edition of the classification

 

For further information please write to us at info@jahcoip.com.

VAT applied in Saudi Arabia
4 Jan 2018

JAH & Co. IP would like to inform its clients and associates that:-

 

Pursuant to the implementation of the Value Added Tax (VAT) of 5% in the Kingdom of Saudi Arabia in relation of goods and services, please note that all new IP cases to be undertaken and pending cases to be completed on or after 1 January 2018 will be subject to a 5% VAT on professional charges only.

 

Exception to this regulation, VAT will also be subject to official fees of publication for all trademarks actions i.e. publication of trademarks for opposition purpose and post registration actions such renewal, recordal actions since publication work is carried out by the company Thiqah for business-related services (Thiqah ) which is an independent entity from Trademark Office.

 

For further information please write to us at info@jahcoip.com

New VAT Legislation in UAE & Saudi Arabia
19 Dec 2017

JAH & Co. IP would like to inform its clients and associates that Value Added Tax (VAT) legislation has been enacted in UAE and Saudi Arabia which will be put into actual effect as of 01 January 2018. Accordingly, all new IP cases to be undertaken and pending cases to be completed on or after 1 January 2018 will be bound to a 5 % VAT on legal charges.

 

For further information please write to us at info@jahcoip.com

JAH Jurisdictional Update Afghanistan, Kuwait and Saudi Arabia
12 Dec 2017

In the ever changing landscape of IP regulations in the MENA jurisdiction, JAH is pleased to update our readers and keep them abreast of the latest updates.

 

NO GRACE PERIOD FOR RENEWALS IN AFGHANISTAN

 

Please be advised that as per the Trademark Registration Law (2009) Article 20 (3) adopted in Afghanistan, a trademark which has not been renewed within the last six months of the ten years protection period stands expunged. However, the Trademark Office has been applying previously an arbitrary grace period of 6 months (sometimes more) to assist in maintenance of rights and allowing late renewal. Now, the said practice has come to an end as of December 2017 and consequently it is no more allowed to renew trademark registration after the expiry of the protection period.  Hence the only possible means to preserve trademark rights would be to renew the registration within the last 6 months before expiry date as per the law.

 

ON-LINE FILINGS IN KUWAIT

 

Kuwait becomes the latest GCC country to adopt online system of filing of trademarks. It is expected that the new system (which is in its pilot stage) will facilitate and streamline the process of trademark registration with strict adherence to deadlines and requirements. The trademark office has undertaken the necessary procedures towards switching filing trademarks to a completely online system and as such the documentary requirements can be fulfilled online by uploading the same and originals of which should be submitted within a non-extendable three months from filing date and failure to comply therewith will result in the lapse of the filed trademark application. Also, trademark applications can still be filed electronically without the necessary documents at the time of filing. The earlier practice of filing trademarks using paper files has been discontinued. Thus, simple copies of colored copies of the legalized POA and priority document in case of priority claim shall fulfill the documentary formalities of filing of trademarks.

 

POA VALIDITY TERM DECLARED IN SAUDI ARABIA

 

The Saudi Trademark Office declared that the validity of the Power of Attorney is now five years from the date of execution, unless the duration on the POA is stated unlimited or the POA is revoked by a new POA. The above directives are put in effect subsequent to a memo of the Ministry of Justice on March 15, 2016, but was implemented recently by the trademark authorities. It is worth noting that a scanned colored copy of the POA will be sufficient at the time of filing in support of trademark application, the original of which may be submitted at a later stage with no time limit, but before the trademark matures into final registration. JAH has revised its POA format as unlimited.

 

For further information please write to us at info@jahcoip.com

JAH Update Qatar, UAE, Iraq and Oman
30 Nov 2017

In its constant follow up of updates in IP laws, regulations and practices JAH would like to advise our readers regarding the recent practice with respect to trademark filings in Qatar, renewals as adopted by the registrar in Oman and publication procedures as adopted in Iraq.

 

QATAR: Trademark Office Adopts The 11th Edition

 

We are pleased to inform you that Qatar Trademark Office has adopted the Nice Classification 11th Edition for filing of trademarks.

 

UAE: issuance of trademarks registration electronically.

 

The UAE Trademarks Office has recently sent circular informing local agents that starting from 27 November 2017 the registration official fees would be settled electronically and as such the trademarks registration certificate will be issued in electronic form only.

 

IRAQ: Trademarks publication in three publications Gazette issues.

 

Please be advised that the Iraqi Trademark Office has issued a verbal circular regarding the change in publication of trademark applications procedure as adopted by the registry. According to which trademark applications once examined and accepted will be published in the Official Bulletin for opposition purposes three times in short intervals; say one month and the opposition term of 90 days will be calculated from the third notice of publication. Any interested party may oppose the published trademark during this period.

 

The Iraqi Trademarks registrar started to implement the three publications system with the Official Bulletin no. 557 issued on 20 November 2017. That is to say, trademarks published in the Bulletin no. 557 will be republished on the Bulletin no. 558 and 559 and the opposition term of 90 days will be calculated from the Bulletin No. 559.

 

OMAN: Lapsed Trademarks for non-renewal Can Be Renewed At Any Time

 

As per Omani Trademark Law (Law on Trade Marks, Descriptions and Secrets and Protection from Unfair Competition (promulgated by the Royal Decree No. 38/2000), Section 41 the renewal fees of a trademark registration can be paid during the last 12 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. Technically any trademark that has crossed the late renewal deadline of 6 months would be considered lapsed and there shall be no restoration of lapsed registered marks; however, in order to assist trademark owners reserve their rights of their registered trademarks the registrar does accept renewing of lapsed trademarks anytime even if it has not been renewed during its term of protection or the subsequent 6 months grace period.

 

For better understanding we would illustrate this matter by the flowing two examples:

 

  • If a registered trademark filed in 1997 and has not been renewed in 2007 it is still possible the renew the mark provided that we settle the official fees with penalty for the previous protection term of ten years from 2007 – 2017 and the official fees with penalty for the current protection term from 2017 till 2027.
  • If a registered trademark filed in 2002 and has not been renewed in 2012 it is still possible the renew the mark by settlement of the official fees with penalty for the protection term from 2012 till 2022.

 

On a related note, according to the Trademarks Law and practice of the Omani Trademarks Registrar the registration by a third party of a similar or identical mark to one that has lapsed due to non-renewal shall be admitted only after a period of three (3) years from the date on which notice of the termination of the mark was published in the Official Gazette.  However, since the Omani Trademarks Office does not publish notices of the termination of the lapsed marks, there exists a local practice whereby the registrar will contact the owner and request a late renewal of the non-renewed trademark if the same presents an obstacle to registration of similar or identical trademark in the name of other third party at the time of examination of the newly filed similar or identical mark. If no positive action is received for the late renewal request within one month from the date of notification the said trademark would be expunged from the records and the new trademark application that was rejected at the examination stage due to pre-existing rights would be approved at the time of appeal.

 

Kindly note that the above measures are not expressly stated in the trademark law and are adopted in practice by the trademark office to ensure existing rights.

 

For further information please write to us at info@jahcoip.com

Qatar Adopts Online Filing of Trademark Applications
15 Nov 2017

We are pleased to inform you that the Qatar Trademark Office has upgraded its system and undertaken the necessary procedures towards switching filing trademarks to a completely online system. Please note that the documentary requirements will now be fulfilled online by uploading the same upon filing and originals of which should be submitted within a month from the date of filing as per the current practice. The earlier practice of filing trademarks using paper files in the presence of the original power of attorney has been discontinued. Thus, simple copies of coloured copies of the legalized POA, certificate incorporation or extract from the commercial register of applicant company and priority document if applicable to fulfill the documentary formalities of filing of trademarks. It is expected that the same system will be adopted for renewals, recordals and all other trademark related actions in the coming days of which you will be apprised in time. The change of practice for filing of trademarks in further to the switch to online filing of patents earlier this year.

 

JAH & Co. IP wishes to also add that we are the first agent in the country who has had the opportunity to pioneer the new system and have successfully filed trademark online under no. 118507 on 8th November 2017 as per the below particulars:

Also we are pleased to advise our clients and associates that obtaining trademark registration in individual names will be possible in Qatar as of 15 November 2017 and only document required is a power of attorney legalized up to the Qatari Consulate abroad.

 

For further information please write to us at info@jahcoip.com

JAH Update Oman and Kuwait
12 Nov 2017

JAH would like to keeps its clients and associates abreast with the following updates received from the PTO of Oman and Kuwait:

 

Oman: The Omani Patent Office has requested all patent applicants to pay the substantive examination fees for all patents formally accepted in 2016. It has been announced that the fees have to be paid within 2 months from the announcement date (November 1, 2017). The official notification has been attached herewith for your kind reference.

 

Kuwait: The Trademark Office in Kuwait has implemented new procedures whereby they start issuing separate certificates for renewal and recordal actions which include changes of name or address, assignments and mergers while the original registration certificates is no longer required for endorsing these actions thereon. As per the old practice, the renewal or recordal actions were endorsed onto the back of the original registration certificates without the issuance a fresh certificate reflecting the action.

 

For further information please write to us at info@jahcoip.com.

JAH Jurisdictional Update
31 Oct 2017

IRAQ

 

New directives issued by the Iraqi Trademark Office on 30th October 2017 have brought in force the stipulations of article no.15 of Iraqi Trademark Law No.26 of 1957 which pertains to the publication of renewals, recordals of change of name & address, merger, assignment etc in the Official Gazette. The said stipulations are expected to come into play from November 2017.

 

According to the notified decision, an official fee of (200000 IQD equivalent to 170 USD) will be incurred for the above-mentioned actions and will be applied for newly filed actions and retroactively for pending actions which have not yet been issued with their certificates.

 

TUNISIA

 

The President of the European Patent Office, and the Director-General of Tunisia’s National Standardization and Industrial Property Institute (INNORPI), Amel Ben Farhat, announced that starting December 1, 2017 European Patents can be validated in Tunisia and thus regarded as national Tunisian ones.

 

The validation agreement with Tunisia, the third to enter into force following similar agreements with Morocco and the Republic of Moldova, will bring to 43 the number of countries where an invention can be protected through the single European examination and grant procedure. Under this Agreement, that was signed in Munich, Germany in July 2014, European patent owners and applicants will be able to validate their European patent legal rights in Tunisian territory, subject to Tunisian patent legislation.

 

VAT

 

UAE and Saudi Arabia are set to implement VAT( Value Added Tax) in their jurisdictions.

 

All IP matters in Saudi Arabia and United Arab Emirates filed as on 1 January 2018 will be subject to VAT, as well as all pending stages for the previous work delegated to us; thus our invoices issued on or after this date will reflect the new VAT rate.

 

More detail on these and other provisions will be contained in the Implementing Regulations and will be informed to you soon.

Increase of Official Fees for Trademarks in Egypt
16 Oct 2017

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 info@jahcoip.com

Increase of Fees in Syria
4 Oct 2017

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 info@jahcoip.com

Morocco Increased IP Official Fees
26 Sep 2017

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 info@jahcoip.com.

GCC Trademark Law in Oman
2 Aug 2017

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 info@jahcoip.com.

JAH Update – Kurdistan
2 Jul 2017

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:

 

CLASSIFICATION

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.

 

OBLIGATORY SEARCH

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.

 

Filing requirements:

  1. A power of attorney legalized up to an Iraqi consulate abroad, which requires local legalization by Ministries of Justice and Foreign Affairs in Kurdistan.
  2. 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.
  3. 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:

 

  1. A legalized power of attorney should be submitted with the official letter by the Iraqi Trademarks Registrar.
  2. A letter issued by the Trademark Office in Baghdad confirming that the trademark has been registered or at least accepted.
  3. 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.

 

New Patent Stipulations in UAE
24 Jun 2017

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.

 

*Substantive Examination:

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.

ECTA 2017
24 Jun 2017

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 info@jahcoip.com to arrange for a suitable time to meet.

JAH Jurisdictional Update Iraq and Jordan
14 Jun 2017

JAH wish to keep their readers abreast with the following jurisdictional updates in countries under our purview:

 

Iraq

 

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:

 

  1. Scientific name of the product;
  2. Trade name of the producer;
  3. Pharmaceutical formula of the product;
  4. Name of manufacturing company if not the applicant, and
  5. 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:

 

  1. 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.
  2. A certificate of home registration legalised up to the legalized to Iraqi Consulate for class 5 only.
  3. 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.
  4. 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.
  5. 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.

 

Jordan

 

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 Jurisdictional Update Kurdistan
23 Apr 2017

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 info@jahcoip.com.

INTA Meeting
12 Apr 2017

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 info@jahcoip.com to arrange for a suitable time to meet.

JAH Jurisdictional Update Qatar, Jordan and Libya
30 Mar 2017

JAH takes great pleasure in keeping its readers apprised with regards to the recent updates in our jurisdictions:

 

QATAR

 

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.

 

JORDAN

 

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.

 

LIBYA

 

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.

Turkish trademarks piracy in GCC countries
13 Mar 2017

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:

  1. 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
  2. The applicant/registrant’s conduct in applying for/registering the mark is inconsistent with norms of reasonable, honest, and fair commercial behavior.
  3. 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.

RE: JAH Jurisdictional Update
9 Mar 2017

JAH & Co. IP would like to inform its valued clients and associates of the latest updates in various countries:

 

BAHRAIN

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.

 

EGYPT

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.

 

INDIA

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:

 

  1. Fees for filing trademark application for one mark in one class is increased from Rs. 4000 (USD 61) to Rs. 9000 (USD 138).
  2. The renewal fees for one mark in one class increased from Rs. 5000 (USD 75) to Rs. 9000 (USD 138).
  3. 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).
  4. 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 info@jahcoip.com

JAH Event Calendar
26 Feb 2017

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 info@jahcoip.com.

 

March 2017

 

PTMG Spring Meeting, Paris, France 13-14 March 2017

 

May 2017
INTA Annual Meeting Barcelona, Spain 20-24 May 2017

 

June 2017

 

ECTA 35th Annual Conference Budapest, Hungary, June 28-1 July 2017

 

September 2017

 

MARQUES Annual Meeting, Prague, 19-22 September 2017

 

October 2017

 

AIPPI World Congress Sydney, Australia, 13-17 October 2017

 

FICPI Open Forum, Venice, Italy,  25-28 October 2017

 

November 2017

 

APPA 67th Council MeetingAuckland, 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.

General Power of Attorney Middle Eastern and African countries
20 Feb 2017

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 info@jahcoip.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.

Increase in Publication Fees for Trademark Recordals in Saudi Arabia
10 Feb 2017

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.

JAH Jurisdictional Update Iraq, Qatar and UAE
8 Feb 2017

IRAQ

 

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.

 

Qatar

 

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.

 

UAE

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 info@jahcoip.com

RE: JAH Qatar Update
30 Jan 2017

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 info@jahcoip.com

JAH Jurisdictional Update January 2017
19 Jan 2017

JAH would like to keep their readers abreast with the recent jurisdictional changes in countries under our purview:

 

TURKEY

 

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.

 

KUWAIT

 

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.

 

ARIPO

 

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 info@jahcoip.com

JAH Jurisdictional Update IRAN,SAUDI ARABIA,KURDISTAN & KUWAIT
8 Jan 2017

IRAN

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.

 

SAUDI ARABIA

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.

 

KUWAIT

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.

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

JORDAN PCT ACCESSION SOON
21 Dec 2016

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.

 

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

Kurdistan Suspends Filing- World Trademark Review Article
15 Dec 2016
wtr
Kurdistan Filing Suspended
7 Dec 2016

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.

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