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    RIPO Bulletin RIPO Bulletin Document Transcript

    • RIPO BULLETIN optimizing your position The Mirror of IP– Related Development In the Middle East & Africa February 2011 Vol. 1 No. 1 Trademark Guide in Qatar Read Inside IB U TE NT R CO TH US WI RIPO’s Message 2 2009 Highlights 3 Practice Updates 4 Trademark Guide in Qatar 5 Madrid System in Africa 8 • Gaza mark office posed by the trade New formalities im • IRAN ents w filing requirem TMO announces ne • Bahrain y requirement alized power of attorne TMO enforcing leg • Afghanistan ks claims riod for trademar Chan ge in limitation pe Reach your audience nowZAKI HASHEM & PARTNERS FREE With RIPO Bulletin Committed to your success Mail us for your completely free mohamed.ezz.ragheb@windowslive.com law@hashemlaw.com RIPO Bulletin Page 1
    • Highlights Foreign Investments are welcome A dvanced and updated its intellectual prop- ZAKI HASHEM & PARTNERS comprehensive erty legislation to make it law@hashemlaw.com intellectual prop- more attractive as destination erty systems are for investment. In 2008, the increasingly being seen as East African nation saw an Gambia - Slowly Heading critical to attracting invest- immediate return in the form Towards the Light… ment in emerging economies, of 25 new international invest- including economies in Africa ment projects; this was not Implementation of sound in- tellectual property regulation, likely to have happened with- out the guarantee of protec- G ambia, once the bastion of antiquated trade mark laws and practices, has tion for the products of inves- made a 180 turnaround by ensuring that the backed by credible enforce- Industrial Property Act of 1989has come into tors. ment instruments and institu- force, the effective date of the implementa- tions, can actually encourage Similarly, Nigeria recently tion of the Act being the 2nd April 2008. This foreign trade and investment signed cooperation treaty, Act repeals the 1916 Act and (finally!) intro- decisions and should, there- which provides a unified pro- duces the International Classification of fore, be integrated into eco- cedure for filing patent appli- Goods and Services. Previously, Gambia fol- nomic and investment poli- cations worldwide, allowing a lowed the Old British Classification of Goods cies. period of 30 months for appli- and Services. cants to file patent applica- In the absence of updated tions in the county in which and effective intellectual they require protection. property safeguards multi- national corporations will be This is particularly useful in far less willing to invest in and the African context as foreign even export their products to companies welcome the addi- Africa, a fact that more and Your Success Partner tional time to investigate mar- more countries are beginning to grasp. kets previously perceived as risky. Lebanon – Government campaign against Kenya, for example, recently intellectual property rights violationsUAE - Campaign on Intellectual PropertyRights T he Lebanese government is increasing efforts to educate the public about in- tellectual property rights from stepping up surveillance of businesses suspected of trad- On 28 December 2010, the UAE vent unfair business practices. ing pirated goods to urging IP rights owners to make use of Lebanon’s judicial courts. Ministry of Economy launched a Fawzi Al Jabri, Director of Copy- Additionally, WIPO sponsored a 2-day work- two week campaign on intellec- right at the Ministry of Economy, shop on IP rights enforcement while legisla- tual property rights for the sec- stated that this campaign which tors are currently working to update the ond consecutive year. The cam- uses 3D animated advertise- 1999 copyright law in line with TRIPs stan- paign is in cooperation with the ments in order to raise aware- dards. Lebanon’s director general of the Min- Arabian Anti-Piracy Alliance and ness on the importance of intel- istry of Economy stated the need for “an the Abu Dhabi Media Company. lectual property rights, is the active mechanism ... to fight plagiarism, pi- The focus is on the importance first of its kind in the region. racy and forgery. of intellectual property to pre- RIPO Bulletin - Highlights Page 2
    • Practice UpdatesEgypt: Deadline Iran: Trade Mark Office announces new filing requirementsD ue to the political situation in Egypt, the functioning of the Trademark and Patent Offices has been inter-rupted. the Patent and Trademark Offices will put off anydeadlines falling within the period between 28. 01.2011 to A corporate trade mark applicant will now need to file a legalized commercial extract showing that it is established and6.02.2011 because of this force majeure. existing in its home country. The commercial extract should include details such as the company registration number, type and com-Gaza - New formalities imposed by the trade mark pany activities, nationality and contact de-office tails. An individual applicant on the other hand, would need to submit a notarized, le-L ast year, the Trademark Office in Gaza modifiedthe requisite formalities for In line with the above, the Trademark Office has re- cently asserted the legaliza- galized copy of his/her passport. The trade mark application would also need to include details such as the nationality, domicile ifthe Power of Attorney as tion requirements in an offi- other than home country, national ID num-follows: cial notification dated De- ber and occupation of the individual appli- cember 20, 2010. In this an- cant. The Trade Mark Office is currently pro- 1. The Power of Attorney nouncement, the Office de- viding a 2-month grace period from the appli- must be notarized and clared that all documents, cation filing date to submit the required le- legalized up to the Notary filed in support of trademark galized documents. Public and the Ministry of applications, must be nota- Foreign Affairs. rized and legalized up to the 2. The Power of Attorney Notary Public and the Minis- must be executed on the try of Foreign Affairs. Simply same year the trademark signed documents will no Advertise With Us application is filed. Powers longer be acceptable. with an older execution Also, the Office has imposed date will not be accepted. an additional requirement 3. A copy of the Power of on new applications for Bahrain - TMO enforcing legalized Attorney can be submitted trademark registration. power of attorney requirement at the time of filing along Effective immediately, appli- with a declaration stating cants must submit a legal- that the original power will ized certificate of incorpora- follow within one month tion or extract from the com- T he Bahrain Trade Mark Office has recently started en- The trade mark office has until now been relaxed about the from filing date. mercial register for the appli- forcing the require- power of attorney cation to be processed. ment for a legalized legalization require- power of attorney (in ment and has previ- addition to a legalized ously accepted a sim-Afghanistan - Change in limitation period for trade- commercial extract) ply signed copy of themarks claims from the applicant to power of attorney to support all new trade support trade mark mark applications re- applications. If, uponC hange in the limitation period in which a party could com- mence a claim or raise an objection on registered trade-marks in Afghanistan. According to the previous law the grace gardless of whether applicants have previ- examination, there is no legalized power ofperiod for claim or an objection to the registered trademarks ously filed trade mark attorney on file, thenwas three years. However, the law has been changed to re- applications in Bah- the application will beduce this period from three years to ONE year from date of rain. rejected.registration.RIPO Bulletin - Practice Update Page 3
    • Jurisdiction Guide Trademark Guide In Qatar By Mohamed Ezz | Zaki Hashem & Partners Q atarPurposesthe International Classificationunder the Nice Services for the follows of the Registration of Marks of Goods and Agreement. The law has been amended so that a separate application should be filed with respect to each class of goods or services. Trademark Law No. 9 of 2002 was issued on June 8, 2002 and published inWe offer a vast andcomprehensive range of the Official Gazette.services associ ated withsecuring and enforcing • The definition of the “Trademark”: hts.intellectual property rig Our IP ser vices are drawn A trademark is anything which takes a distinctive form whether names, on our in-depth words, signatures, letters, figures, drawings, symbols, titles, tax stamps, understanding of our seals, pictures, inscriptions, advertisements or packs or any other mark or a e IP regulatory and legislativ combination thereof, used or is intended to be used, either in distinguishing environment and on the goods, products or services whatever their origin is, or to show that goods ary rich and multi-disciplin of or products are owned by the mark owner by virtue of their manufacture, expertise of hundreds legal professionals. selection or dealing in, or to indicate the performance of a service. Sound is considered a part of the trademark if it accompanies there to. •The following can not be registered as a trademark: The following shall not be registered as a trademark or as a component thereof: 1. The mark, which is devoid of any distinctive character or property, or the mark, which consists of mere denominations called by the tradition on goods, products or services, or familiar drawings and ordinary pic- tures of goods and products. 2. Any mark violating the public morals or desecrating the public order. 3. The public emblems, flags and other symbols pertaining to the State, Arab or international organizations or any institutions thereof, or any for- eign country unless having an authorization therefore, or any imitation of such emblems, flags or symbols. 4. Symbols of the Red Crescent or the Red Cross and other similar sym- bols as well as the marks, which are imitations thereof. 5. Marks, which are identical or similar to the symbols of pure religious nature. 6. Geographical names where the use thereof may cause confusion as to the origin or source of the goods, products or services. 7. The names, surname, photograph or emblem of a third party, unless he RIPO Bulletin - Jurisdiction Guide Page 4
    • Jurisdiction Guide or his heirs’ prior consent to use has been obtained. 8. Particulars pertaining to titles of honor which registration applicant cannot prove that he is lawfully entitled thereof. 9. Marks which may mislead the public or which contain false data as to the origin or the source of products or services, or about their other characteristics, as well as marks containing an imagi- nary, imitated or forged trade name. 10. Marks owned by natural or legal persons, dealing with whom is prohibited. 11. Mark, the registration of which for some classes of products or services may diminish the value of other products or services distinguished by such mark. 12. Marks containing the following words or phrases: “Privilege”, “Privileged”, “Registered”, “Registered drawings”, “Copyright” or “Imitation is forgery” or similar words and phrases. National and foreign decorations and metal and paper currencies. 13. A trademark considered as a translation of a famous mark or another previously registered trademark if registration of that mark will result in confusing the consumer public as to the goods distinguished by the mark or other similar goods.• Procedures for Registration of Trademark : » Once a trademark application is filed, the trademark is examined as to form and substance, asQatar follows the anteriority examination system. Accepted trademark applications are published inthe Official Gazette of Trademarks. Any interested party may, within 4 months from the date ofpublication, oppose the registration of a published trademark.In the absence of opposition, a published trademark is registered and the relative certificate of reg-istration will be issued.•Validity of trademark protection : » A trademark registration is valid for 10 years from the date of filing the application, renewablefor further consecutive periods of 10 years each. The renewal fees of a trademark registration canbe paid during the last 12 months of the current protection period. There is a 6-month grace periodwithin which a late renewal application can be filed, but such a late renewal application is subject tothe payment of additional fees.•Trademark Assignment: » The ownership of a registered trademark can be assigned with or without the goodwill of thebusiness concern. Unless an assignment has been recorded in the register and published in the Offi-cial Gazette of Trademarks, it shall have no effect vis-à-vis third parties. Changes in the name and/oraddress of a registrant, amendments not substantially affecting the identity of the trademark andlimitation of the list of goods or services covered by a trademark registration can be recorded aswell.RIPO Bulletin - Jurisdiction Guide Page 5
    • Jurisdiction Guide•Change of Name or Address: » The registrant of a trademark or service mark is also obliged to record any change in its nameand/or address in the Registry.•Cancellation of trademark: » Use of trademarks in Qatar is not compulsory for filing applications or for maintaining trade-mark registrations in force. Any interested party may request the court to order cancellation of atrademark registration, if the owner fails to use such a trademark in Qatar within 5 consecutiveyears from the date of the registration. The cancellation action for non-use of a registered trade-mark cannot be accepted unless the owner of a trademark is given a one-month notice that histrademark is subject to cancellation for non-use.•Validity of trademark protection : »The duration of a trademark or a service mark registration is 10 years from the filing date accord-ing to the Hegira (Islamic) calendar. The registration is renewable for similar periods of 10 yearseach. According to the provisions of the new trademark law, a grace period of 6 Hegira monthswith a lateness fine is allowed for filing a renewal application after the expiration of the protectionperiod. A fresh trademark application can be filed for the re-registration of a canceled trademark orservice mark.•Filing Requirements: » Trademark Applications 1. A Power of Attorney legalized up to the Qatari Consulate or any other Arab consulate. 2. A simple copy of the certificate of incorporation of the applicant company, or an extract of the entry of the applicant in the commercial register. 3. Five prints of the trademark. 4. A list of the goods to be covered by the application. 5. The name, address, nationality, activity and legal status of the applicant and the nature of its business. 6. A copy of the priority document, in case priority is claimed.RIPO Bulletin - Jurisdiction Guide Page 6
    • Article of the MonthMadrid System in Africa By Mohamed Ezz | Zaki Hashem & Partners W ith the global shift to- wards an ever-increasing electronic marketplace, owners of International Registra- c) Is a national of a country which tions will be able to file requests for country extensions as new con- is party to the Madrid Agree- ment or the Madrid Protocol.even more than ever before, trade tracting parties join the System. Currently there are 78 contractingmarks are an integral component •Madrid System: parties or member states, includingof any business’ successful market- 12 African countries. These Africaning strategy. Trade Marks reflect The system of international reg- countries today include Algeria,quality in a product or service and istration of marks (Madrid System) Egypt, Kenya, Lesotho, Liberia,are often the only way to promote, is governed by two treaties: Morocco, Mozambique, Namibia,identify and distinguish a com- A) The Madrid Agreement Con- Sierra Leone, Ghana, Botswana,pany’s goods and services from cerning the International Reg- Sudan, Swaziland and Zambia.those of a competitor. Infringe- istration of Marks, dating backment of, or the dilution of a valu- to 1891; and • Status of Madrid System inable trade mark by another party B) The Protocol Relating to the Africa:can be destructive to a company’s Madrid Agreement, whichreputation and business. came into operation in 1996 It is to be cautioned that the valid-When looking to a new market into Both the Agreement and the Proto- ity and enforceability of Interna-which to expand products and ser- col are applied with the Common tional Registrations in some of thevices, a trade mark owner must Regulations under the Agreement aforesaid African contractingconsider trade mark protection and Protocol. states remains somewhat ques-where they have invested capital tionable. Having acceded to theand time in developing and market- An International Registration has Madrid System, some of these con-ing a product or service in new the same effect as if an application tracting parties in Africa do notmarketplace to prevent third par- for registration of the mark had appear to have yet made the re-ties in that country from unfairly been made in each of the countries quired amendments to their na-reaping the benefits designated by the applicant. Once tional or domestic trade mark laws, registered, the international regis- which amendments are crucial forTrade mark protection is generally tration can be maintained and re- the recognition and effectivenessterritorial in that protection must newed through a single procedure. of International Registrations inbe applied for nationally in thecountry where the new market lies. Any State which is a party to the these common law countries. Paris Convention for the Protection To date, as far as we are aware, •Benefits of Madrid System: of Industrial Property may become only the national laws of Egypt The International Trade Mark a party to the Madrid System. Algeria, Kenya, Morocco and Mo-System, administered by WIPO States party to the Madrid System zambique have been amended to(World Intellectual Property Or- are referred to collectively as con- recognize International registra-ganization), provides a trade mark tracting parties. tion and include provisions recog-owner with a cost -effective and An application for international nizing the validity and effective-efficient way of protecting their registration can be filed only by a ness of international registrationstrade mark in up to 78 countries by natural person or legal entity which under the Madrid System in theirfiling a single application, in a single country.language, with a single set of fees. a) has a real and effective indus-Moreover, the subsequent man- trial or commercial establish- Even in Kenya and Mozambique, ment in, or the national laws were onlyagement of that trade mark’s pro- (Continued on page 8)tection is made much easier. Also, b) Is domiciled in; orRIPO Bulletin - Article of the Month Page 7
    • Article of the Monthamended at some time after acces- There is no such reference to thesion to the Madrid System. As a • Algeria & Morocco: Madrid arrangements in the na-result, it is unclear whether Inter- Under long-established laws and tional laws of any of the above.national Registrations designating practices, ITMRs designating these Accordingly our often-expressedthese countries prior to the amend- countries are duly processed, rec- view has been that an ITMR desig-ment of their domestic laws, are of ognized and effective. nating such a territory cannot law-any force or effect in those coun- fully be processed by the Registrartries. It is submitted that they • Common-law Jurisdictions: of Trade marks, nor can it be recog-should not be. nised or enforced in that jurisdic- Common Law Jurisdictions refer to tion. The only reliable protection is• Egypt: “Botswana, Ghana, Lesotho, Sierra by means of a national trade mark Leone, Swaziland and Zambia” registration.The Madrid Agreement havingbeen applicable to Egypt since In considering these territories, Therefore, in the countries of this1952, the Protocol became effec- practitioners have been guided by category, trade mark owners cantive on 3 September 2009. Interna- the rule stated thus:- face ambiguities. ITMRs appear,tional Registration based on Ma- An international agreement from the Madrid Union viewpoint,drid Agreement is regulated by the can only become part of the to be available there; and may bevirtue of the Ministerial Decree No. domestic law of a subscribing country, when it has ex- alleged to conflict with national118 of 1958. which set the proce- pressly been enacted into trade mark applications or registra-dural details for responding to the that national law by an Act of tions.provisional refusals issued by theTrademark Office. Parliament. (Continued on page 9) The IP Practice Group Committed to your success The IP Practice Group of Zaki Hashem & Partners offers the most specialized IP services in Egypt. The Firm represents many major multinational cor- porations of American, British, French, German, Italian, Japanese, Scandinavian, Spanish, South American and Swiss nationalities. The Firm gives top priority to providing quality legal service to clients and is known for its hard working attorneys and staff, its integrity and overall quality of work. The extensive and varied experience and the professionalism combined with unique language proficiency of the attorneys attract clients from ZAKI HASHEM & PARTNERS around the world who wish to do business in Egypt. law@hashemlaw.comRIPO Bulletin - Article of the Month Page 8
    • Article of the Month• Sudan: Parliament, was adopted by execu- tive decision of the Industrial Prop-Sudan inherited a British common- erty Office with effect from 1 Janu-law system via Egypt. For years ary 2009. In it, the Madrid arrange-after it joined the Madrid Agree- ments are recognised by implica-ment in 1984, the Registrar stored tion, under the provision that:-notifications from the InternationalBureau and refrained from action “International treaties to RIPO Optimizing Your Positionon them, on the basis that under which Liberia is a party shallthe orthodox doctrine and without apply to matters dealt with We give you all re-amendment of national law, they by this Act and, in case of conflict with provisions of quired informationwere of no effect. this Act, shall prevail over to support you be-In recent times, however, the the latter.”status of ITMRs has become fully fore client in re-accepted by the Office and the • Madagascar and Mozam- flecting the IPcourts, apparently without any bique: laws and regula-formal change to the constitutionor Trade marks Act. It remains pos- These states have civil-law heri- tions of Middlesible that the decisions upholding tages. Madagascar joined the Pro- East and AfricanITMRs may be challenged on ap- tocol with effect from 28 Aprilpeal. Sudan has joined the Protocol 2008. Jurisdiction.with effect from 16 February 2010 Mozambique acceded to the If needed, we can Agreement and Protocol in 1998.• Kenya: Although there are no detailed na- support you withKenya, a common-law country, tional regulations for dealing with any legal servicesjoined the Agreement and Protocol ITMRs at the national offices, theyin 1998 but national law was not are being processed. The Industrial to ensure the pro-changed until 22 August 2003, Property Offices make it clear that tection of your cli-when the Trade Marks they are recognized and will be enforced. ents rights in re-(International Registration) Rulescame into effect. It was thought gion.for a time that ITMRs designating • Conclusion:Kenya did not become effective Trade Mark owners who have fileduntil that date, and earlier designa- International Registrations desig-tions could not be relied on. How- nating African countries should beever, it is now established that pre- warned of the potential pitfalls of2003 ITMRs are enforceable but International Registrations in cer-many are invisible to a searcher. tain African contracting states.• Liberia:Liberia acceded to the Agreementin 1995 and the Protocol on 11 De- For Any Comments and/or questions, please feel Free to contactcember 2009. It was formerly me on:grouped with the common-law mohamed.ezz.ragheb@windowslive.comjurisdictions mentioned above asthe law, codified in 1972, made noprovision for ITMRs. Trusting a mutually fruitful collaborationA new Industrial Property Act,dated 2003 but never passed byRIPO Bulletin - Article of the Month Page 9
    • RIPO BULLETINThe Mirror of IP– Related Development In the Middle East & Africa Zaki Hashem & Partners is one of the largest firms in Egypt and the entire Mid- dle East, was established in 1953 . Our services are wide-ranging covering nu- merous aspects of intellectual property which encompass trademarks, patents, industrial designs, copyrights and unfair competition as well as services related to trade names and domain names. Our Mission As an IP leader, we work closely with our clients to provide them with the pro- fessional and accurate service that guarantees a complete benefit of their intel- lectual property rights. Our Vision To be the intellectual property leaders in the Middle East and Africa. Our Value * As an IP leader, we believe in constant improvement. * We consider and work with our customers as partners. * Our success is largely attributed to the loyalty and dedication of our employ- ees. We recruit people who demonstrate and share the intrinsic values of our foun- ders Our Services * Trademarks * Patents & Designs * Trade Names * Domain Names * Trademark Filing Requirements In Middle East & Africa * Trademark Renewal Requirements In Middle East & Africa * Change Of Name/Address Recordation Requirements In Middle East & Africa * Trademark Assignment Recordation Requirements In Middle East & Africa * License Recordation Requirements In Middle East & Africa * Patent Filing Requirements In Middle East & Africa * Design Filing Requirements In Middle East & Africa Brands are the lifelineof successful businesses RIPOIf youre looking for help toprotect intellectual propertyrights or if youre worried 23, Kasr El Nil Streetabout some one elses IP rights, Cairo 11211, Egyptthen RIPO can help you to put a Phone: (+20-2) 23933766proper strategy together and Mobile: (+20-10) 3389829take the correct steps to Fax: (+20-2) 23933585optimize your position. E-mail: mohamed.ezz@hashemlaw.comRIPO Bulletin Page 10