MENA Intellectual Property Newsletter December 2014 Middle East and North Africa region With the UAE celebrating its 43rd birthday on National Day (2 December 2014), comes a reminder of how young the country is. This also serves as a reminder of the youthful demographics of the region, with two-thirds of the population in the Middle East and Africa being under 30 years old*. This is more than an idle boast as to our youthfulness. The need to develop economies in line with population growth is a well-established driver for the development of knowledge-based economies in the region and, of course, to our favourite topic of intellectual property! Maybe it is a coincidence that we have plenty of market updates to report this month, or perhaps there is a link to National Day? We will leave it to you to decide. Either way, we have plenty to report this month happy reading! * 2012 - Euromonitor International from national/un statistics Market updates and insight from around the region Click here to read all updates. For further information, please speak to your usual contact in the Clyde & Co IP team, or email us at ip@clydeco.com. UAE Key change in patent procedure major or minor? This month we report on the Ministry of Economy announcing a change in time frame for payment of search and examination fees in the UAE. Effective 1 November 2014, examination fees for patent applications must be paid within 90 days from the application date and upon submitting complete supporting documents. In our Article of the Month Rob Deans and David Harper discuss whether this is a major or minor change in procedure. Click here for a link to the full article. UAE Trade Marks Gazette The latest edition of the UAE Trade Mark Gazette was published on 7 December 2014. This month s opposition deadline is 5 January 2015. Click here for a link to the UAE Trade Mark Gazette and further information. If you identify any marks that are of potential concern, or if you have any queries, then speak to your usual contact in the Clyde & Co IP team, or email us at ip@clydeco.com. The timeframe for arranging the legalisation of a Power of Attorney (which will need to be filed at the same time as any opposition) is generally around three weeks. With this in mind, please contact us as soon as possible if you identify any marks which you may wish to oppose. www.clydeco.com
Market updates and insight Bahrain Iraq Kurdistan Libya Oman Sound marks may be accepted in Bahrain In accordance with Circulation number 14/23-3 dated 18 November 2014, the Bahraini Trade Mark Office is now accepting trade mark applications for sound marks. In order to file an application for a sound mark, applicants must submit a copy of the composition of the sound mark and an MP3 audio file (or any other compatible format) of the composition. This application will then be examined in the same way as other applications and following acceptance, the musical composition of the mark will be published in the Official Gazette. For opposition purposes, an audio file of the sound mark will be available. This is a positive step towards the recognition of non-traditional trade marks in Bahrain. However, it remains to be seen how this will work in practice, in particular how the Trade Mark Office s register can be searched for sound marks, both for clearance and examination purposes. Iraq accedes to Singapore Treaty Following the Government of the Republic of Iraq depositing its instrument of accession to the Singapore Treaty on the Law of Trademarks earlier this year, this Treaty is due to enter into force in the Republic of Iraq on 29 November 2014. Iraq s accession of this Treaty will be welcomed by brand owners, which aims to provide an international framework for the harmonisation of administrative trade mark registration norms and procedures. English language details to be included on certificates of registration Previously the Northern Iraq Trademark Office (NIQ) issued certificates of registration in dual language (Arabic and Kurdish). Moving forward, the NIQ has stated that the applicant s details will also be included in English. Libya Trade Mark Office re-opens In previous editions we have provided updates from our colleagues based in our Tripoli office as to the operations of the intellectual property offices Libya. We have been informed that the Trade Mark Office re-opened on 7 December 2014, and it is accepting new trade mark applications. However, due to the continuing unrest in Libya, this work is being undertaken with caution and we will be continuing to monitor the situation, in particular with regard to possible further closures of the Trade Mark Office. Substantive examination fees for Omani patents The Sultanate of Oman recently declared that the substantive examination fees for patent applications filed between 2003 and 2007 will be payable within two months from 2 November 2014. This announcement follows the recent signing of a memorandum of understanding between the Omani and the Egyptian Patent Offices, under which the Egyptian Patent Office will examine pending and new patent applications filed in Oman. 2
Qatar Syria Syria UAE New Cybercrime Law in Qatar In September 2014, Qatar passed Law No. 14 of 2014 (the Cybercrime Law) which came into effect on publication. The law sets out a number of broad offences relating to the publication of online content, including copyright infringement, as well as the publication of false news or statements which undermine public order. Offences under the Cybercrimes Law are punishable by a fine and/or imprisonment. It is possible that social media users could be prosecuted under the Cybercrime Law. In addition, companies may be subject to a fine of up to QAR 1,000,000 if any offences under the Cybercrime Law are committed by its employees either in the company s name, on the company s website or on its official social media accounts. Israel Boycott Declaration not required in Syria It was recently announced that a legalised power of attorney must be accompanied with a legalised Israel- Boycott Declaration or release from the Boycott Office. However, objections were raised to this requirement on the basis that Syria is a Madrid member, which states that international trade mark applications are not required to comply with such formalities. A committee met on 13 November 2014 and agreed to waive the requirement to file an Israel-Boycott declaration. New regulations in Syria on powers of attorney On 22 September 2014, the Minister of Justice issued an official circulation extending the validity of foreign powers of attorneys from three monoths to one year, which will be calculated either from the date of notarisation or legalisation. Copies of Commercial Licences of UAE-based applicants required by Trade Mark Office The UAE Trade Mark Office has recently issued a notification which states that, with immediate effect, a simple copy of a current Commercial Licence must be submitted in support of all trade mark applications filed by UAE-based applicants. Failure to comply with this requirement may result in the application being rejected. Comment David Harper (Senior Associate) This requirement follows Article 7 of the Implementing Regulations to the UAE Trade Mark Law which provides that a copy of a Commercial Licence (or an equivalent document) must be filed with all trade mark applications. It is also broadly in line with Article 6 of the UAE Trade Mark Law which states that the entitlement to register a trade mark extends to natural persons and to bodies corporate which practise any commercial, industrial, professional or service business. This requirement will not create any difficulties for the majority of UAE-based applicants. However, problems may potentially arise with individuals working as artisans (who are not required to hold a Commercial Licence), and with businesses that have been set up by Decree (and which also will not hold a Commercial Licence). For these categories of applicants, it will be interesting to see what documents the Trade Mark Office will require to be submitted in support of applications. 3
UAE UAE Abu Dhabi New regulation for trade names The Abu Dhabi Government has issued a new regulation relating to the issuing of trade names in the Emirate of Abu Dhabi Administrative Resolution No. 7 of 2014 on the Rules of Trade Names in the Emirate of Abu Dhabi (the Regulations). Under the Regulations, the registration of trade names will be handled centrally by Abu Dhabi Business Centre, which forms part of the Abu Dhabi Department of Economic Development (the Business Centre). The Business Centre will be solely responsible for maintaining a central register of trade names. The Business Centre has the power to cancel and modify trade names, in the event that they are similar to an existing trade name. The Business Centre also has the authority to examine and settle disputes over trade names. The Regulations provide clarification regarding the relationship between trade marks and trade names by stating that a trade name must not be registered if it is identical or similar to a registered national or international trade mark, other than where it is filed by or on behalf of the trade mark owner. The Regulations also outline other restrictions as to what may be registered as trade names, including the need for approval where a UAE geographical name is used for non-government entities. Comment Jon Parker (Head of Trade Marks) While the Regulations are to be welcomed by brand owners, there are still a number of questions that are to be addressed over the coming months, such as whether the Business Centre will conduct searches against trade marks at the time a new trade name is filed, or if it will be left to brand owners to enforce their rights against potentially conflicting trade names. It should be noted that this is not a UAE Federal Law, and it only applies to trade names in the emirate of Abu Dhabi. It does not apply to trade names in Dubai or in other emirates, nor to Economic Free Zones in the Emirate of Abu Dhabi. We shall have to wait to see if other emirates will follow Abu Dhabi s lead. DED announces quarterly index to monitor levels of IP protection The Dubai Department of Economic Development has announced the launch of a quarterly indicator of the level of intellectual property rights protection in Dubai. This indicator will be known as the Dubai Index of Intellectual Property (IPR Index). The first IPR Index is due to be published following the first quarter of 2015. The IPR Index is designed to collect opinions and expectations of stakeholders, including brand owners, law firms, distributors and trading agencies. 4
UAE UAE UAE Seminar on combating counterfeiting November 2014, Dubai, UAE On 24 November 2014, the Italian Business Counsel of Dubai and the Northern Emirates held a seminar in partnership with Dubai Customs on Consolidated Efforts in Combating Counterfeiting. Speakers at the event included representatives of Dubai Customs, the President of the Italian Business Council, the Head of the Economic and Commercial Section of the Italian Embassy, the IP Attaché for the French Embassy, the Trade Counsellor for the EU delegation to the UAE, as well as the Marketing Manager for a leading UAE retailer. The seminar discussed the impact that counterfeit products have on consumers, brand owners and the economy at large. The consistent theme of the event was a desire for greater collaboration amongst all stakeholders and better education of consumers on the dangers and impact of counterfeit products. Dubai Customs used the event to announce a number of upcoming initiatives, which included this event itself as an example of collaboration between Dubai Customs and other stakeholders in the fight against counterfeits. It also announced that it will be looking to hold a roundtable in 2015 at which Government representatives, members of the IP profession, brand owner groups and other interested parties will be brought together to discuss matters further. Further information is expected in 2015. UAE Trade Mark Office announcement regarding publication errors On 6 November 2014, the UAE Trade Mark Office issued a circular requiring trade mark applicants and their representatives to check the details of their applications when published in the Trade Mark Journal, and to report any errors to the Trade Mark Office before the end of the opposition period. The circular also states that the Trade Mark Office will not correct any errors which are notified to it once a certificate of registration has been issued. Comment Jon Parker (Head of Trade Marks) This new practice is a worthwhile attempt to address a recent increase in errors appearing in certificates of registration issued by the UAE Trade Mark Office. This practice specifically targets errors appearing at the publication stage, so that these can be resolved before the certificate is printed and issued. However, there are occasions when errors appear at the registration stage which have not been included in the publication notices. The new practice does not specifically deal with this situation and we will need to wait to find out whether the Trade Mark Office will accept corrections to certificates of registration where the error has been made after publication. In any event, we expect that this new practice will help with the UAE Trade Mark Office s continued drive to streamline the registration process. In recent months the process has speeded up considerably, and we now expect to receive certificates of registration within approximately 12 months of the filing date, when previously the registration process was commonly taking two years or longer. Online insults are punishable in any emirate The UAE Courts have ruled that personal insults published on a website may be the subject of a prosecution in any emirate. In a recent case, the defendant was ordered by the Sharjah Court of First Instance to pay compensation to a woman he insulted on the Elaph news website, based in Dubai. The court reasoned that as the Internet could be accessed in any emirate, an offence committed on the Internet could be prosecuted in any emirate. In line with the principle which was applied in this case, the UAE Courts may be willing to accept jurisdiction over a case regarding content on a website operated anywhere in the world, provided that it is accessible in the UAE. 5
UAE: Key change in patent procedure major or minor? Authors: Rob Deans, Partner, Clyde & Co LLP David Harper, Senior Associate, Clyde & Co LLP With effect from 1 November 2014, the UAE Patent Office has changed its practice in relation to the payment of official fees for the substantive examination of patent applications. On the face of it, this practice change is innocuous. However, when considered in the context of other recent changes being implemented at the UAE Patent Office, it seems that this could be more significant than it initially appears. Specifically, this potentially heralds a significant change in the examination policy at the UAE Patent Office such that, moving forward, applications could be subject to substantive examination much more quickly than has previously been the case. The change in practice As from 1 November 2014, the official fees for the substantive examination of patent applications in the UAE are due either: At the time the application is filed (where the application is filed simultaneously with all supporting documentation); or Within 90 days of the application date (where the applicant makes use of 90 day statutory period to file legalised supporting documentation) The notification of this change in practice issued by the UAE Patent Office states that a failure to pay the official fees within these stipulated timeframes will cause the relevant application to lapse. This changes the previous practice under which the Patent Office issued a notice (at some stage after the completion of the formality examination) requiring the substantive examination fees to be paid. This was not an efficient procedure, as it was one of a number of communication steps between the applicant, the UAE Patent Office and the Austrian Patent Office (to which the examination of UAE patent applications had been outsourced) which needed to be completed before substantive examination could take place. During the time in which this previous procedure was in place, a significant backlog of applications has built up with the UAE Patent Office, with the initial substantive examination of applications often taking many years to complete. Other changes in practice At the same time as announcing this change in practice, the UAE Patent Office has stated that the official fees for the substantive examination of applications filed in 2011, 2012 and 2013 must be paid within 90 days, ie by 23 January 2015. Again, if this timeframe is not met in relation to an application filed in one of these years, the application will be deemed to have lapsed. This is in line with a similar announcement from the UAE Patent Office in February of this year, when it called for the official fees for the substantive examination of applications filed in 2008, 2009 and 2010 to be paid. Following this announcement, the UAE Patent Office has progressed those applications in relation to which the substantive fees were paid within the 90 day timeframe. Consistent with these developments, the UAE Patent Office entered into a Memorandum of Understanding with the Korean Intellectual Property Office (KIPO) on 7 February 2014 under which it was agreed that KIPO examiners would be engaged to examine patent applications received by the UAE Patent Office. This replaced the previous arrangement under which the examination of applications filed with the UAE Patent Office was outsourced to the Austrian Patent Office. 6
Impact of changes in practice By itself, the announcement by the UAE Patent Office that applicants are required to pay official fees for substantive examination at the outset of the application process may be seen as nothing more than requiring applicants to make payment at an earlier stage of the application process. However, when considered together with the other steps which have been taken by the UAE Patent Office during the course of 2014, it appears that the UAE Patent Office is looking to revise its policies in order to make the application process more efficient and to enable the substantive examination of pending applications to take place much earlier than has previously been the case. Of course, with this new policy only having been in place for a very short time, the true impact of these changes remains to be seen. Only time will tell whether we will see the backlog in the UAE being cleared together with new applications being examined within a relatively quick timeframe. Rob Deans Partner, Dubai T: +971 4 384 4538 E: rob.deans@clydeco.com David Harper Senior Associate, Dubai T: +971 4 384 4664 E: david.harper@clydeco.com 7
UAE Trade Marks Gazette The latest edition of the UAE Trade Mark Gazette was published on 7 December 2014 and we have made a copy of this Gazette available online. This month s opposition deadline is 5 January 2015. Click here to access the Gazette. Checking the Gazette The link provided is the original Arabic language Gazette without an English language translation. This Gazette is in the form of an Adobe pdf file and it is possible to carry out key word searches in order to identify potentially conflicting trade mark applications. Please note that due to the size of the Adobe pdf file, it may take several minutes for the Gazette to load. However, once loaded, it should be possible to review and search the Gazette without experiencing any delays. Contacting us If you identify any marks that are of potential concern, or if you have any queries, then please email us at ip@clydeco.com with: The trade mark(s) of interest; and The relevant page number(s) of the Gazette We can then check the Gazette and provide you with full details of the application so that you or your client can decide whether to file an opposition before the deadline and put in place a legalised Power of Attorney if necessary. In order to have any chance of meeting the non-extendable opposition deadline where a legalised Power of Attorney is required; we will need your urgent feedback on marks of potential concern. Should you require urgent assistance, we will need to conduct conflict checks to ensure we are free to assist. 8
Our regional coverage Clyde & Co s IP practice continues to go from strength to strength, featuring a fullservice offering that is unmatched in the region. Back Chambers to page Global 1 2012 22 territories across the Middle East and North Africa (MENA) region Algeria** Bahrain** Egypt** Gaza (Palestine)** Iran** Iraq** Jordan** Kuwait** Lebanon** Libya* Morocco** Oman** Qatar* Saudi Arabia* South Sudan** Sudan** Syria** Tanzania* Tunisia** United Arab Emirates* West Bank (Palestine)** Yemen** 9
Further advice should be taken before relying on the contents of this Newsletter. Clyde & Co* accepts no liability for loss occasioned to any person acting or refraining from acting as a result of material contained in this document. The content of this document does not constitute legal advice and should not be relied upon as such. Advice should be taken about your specific circumstances. No part of this summary may be used, reproduced, stored in a retrieval system or transmitted in any form or by any means, electronic, mechanical, photocopying, reading or otherwise without the prior permission of Clyde & Co. *Clyde & Co LLP, Clyde & Co Technical Services JSC and Abdulaziz Al-Bosaily Law Office affiliated with Clyde & Co LLP Clyde & Co LLP is a limited liability partnership registered in England and Wales. Authorised and regulated by the Solicitors Regulation Authority. Clyde & Co LLP 2014 Clyde & Co LLP www.clydeco.com CC006417 - December 2014