Worldwide: Intellectual Property Newsletter - May 2015

Last Updated: 20 May 2015
Article by Clyde & Co LLP

MIDDLE EAST AND NORTH AFRICA REGION

This month's market updates section leads with the news that the UAE Ministry of Economy has announced a substantial increase in official fees for the registration of intellectual property rights at the Trade Mark, Patent and Copyright Offices in the UAE. Further details of the fee increases are set out in our update on page 2.

We are thrilled to announce that Clyde & Co has been ranked as Band One in the UAE for the fifth year in a row by the Legal 500 EMEA 2015 Rankings. The team is specifically praised for 'excellent response times' and 'good local knowledge'. In addition, Rob Deans has been ranked as a "leading individual", together with Jon Parker and Joycia Young receiving specific mention. As always, the feedback we receive through these surveys is greatly appreciated and we will do what we can to keep up the good work.

In this edition's article of the month, Harriet Balloch examines the potential set up and operation of collecting societies in the UAE and whether a review of the fees for collecting societies by the Ministry of Economy suggests that it is considering licensing a collecting society to operate in the UAE.

In this month's issue, we also cover:

  • Market updates and insights from around the region
  • A link to the UAE Trade Mark Gazette published on 5 May 2015. This month's opposition deadline is 3 June 2015.

Market updates and insight from around the region

In addition to this month's news of the increase in fees in the UAE, we also bring you updates on other developments from across the region, including the news that Kuwait has approved the draft GCC Trade Mark Law.

For further information, please speak to your usual contact in the Clyde & Co IP team, or email us at ip@clydeco.com.

Article of the month

This month Harriet Balloch reports on the collective licensing of music in the UAE. With the UAE Ministry of Economy recently publishing the official fees for setting up and operating a collecting society, are we any nearer to having a collecting society in the UAE?

UAE Trade Mark Gazette

The latest edition of the UAE Trade Mark Gazette was published on 5 May 2015. This month's opposition deadline is 3 June 2015.

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.

MARKET UPDATES AND INSIGHT

UAE

Earlier this month the Ministry of Economy announced a substantial increase in official fees for the registration of intellectual property rights at the Trade Mark, Patent and Copyright Offices in the UAE. Although the fee increases are across the board, in that they apply to trade marks, patents, designs and copyright, they are likely to be particularly felt by brand owners seeking to protect their rights in the UAE. By way of example, under the new fee structure, the filing of one trade mark, per class, will increase from USD 1,785 to USD 3,450.

It is not clear at this stage when the increased fees will come into effect. They are most likely to come into effect from 29 May 2015 onwards. This will mean that any fees payable after 29 May, including the publication and registration fees of marks filed before 29 May are likely to be at the higher rate.

If you would like further information on this topic, please let us know and we will forward a copy of our Client Advisory which sets out various recommendations for intellectual property rights owners to consider in relation to this fee increase.

Egypt

Egyptian Enforcement Authorities and INTERPOL cooperate to seize infringing goods

On 1 May 2015 the Egyptian enforcement authorities, working in cooperation with INTERPOL launched a two month campaign to intercept and seize consignments of counterfeit and infringing goods found at 'Intervention Points'. These Intervention Points include ports, major roads, shops, markets, warehouses, wholesaler premises, factories and manufacturing sites.

The authorities' stated aim is to target those counterfeit and infringing goods which pose a health and safety risks to consumers. Product categories which have been identified for particular focus are food products, clothing, personal hygiene and household products, vehicle spare parts, 'excisable' goods including tobacco and fuel, electrical goods (including computer products), building materials, agrochemicals, music and films (CDs/DVDs), books and printed matter.

Gaza Strip

Increase in official fees in the Gaza Strip

The Trade Marks Office for the Gaza Strip has issued notification number 633, increasing official fees relating to all activities for trademarks, industrial designs and patent applications.

Kuwait

New division of the Kuwaiti Trade Mark Office created to simplify trade mark infringement Complaints

A new division of the Trade Mark Office has been recently created in Kuwait. The Intellectual Property Protection Committee (IPPC) has been established with the purpose of simplifying the filing of infringement complaints in Kuwait.

Once a complaint has been filed, the IPPC is to liaise with the Commercial Control Department to provide guidance on next steps and to ensure a raid is conducted. With the introduction of the IPPC, new requirements have also been implemented for the filing of complaints. The documents to be submitted with a complaint to the IPPC are:

  • copies of Certificates of Registrations;
  • a sample of the counterfeit/infringing product with a receipt;
  • details of the infringers' address/location;
  • a sample of a genuine product; and
  • a copy of the Power of Attorney.

Kuwait

Kuwait approves GCC trade mark law

Law No. 13 of 2015 approving the draft GCC Trade Mark Law was published in Kuwait's official Gazette in April 2015.

Kuwait joins Bahrain, Qatar and Saudi Arabia in approving the draft Law. Oman and the UAE are yet to publish formal approvals.

Lebanon

Legalised Powers of Attorney required for Lebanon

With effect from 10 April 2015, all Powers of Attorney submitted to the Lebanon Trade Mark Office should be notarised and, if executed outside Lebanon, legalised for use in Lebanon.

This is a change to the current practice of submitting simply signed Powers of Attorney. The new practice is set out in Ministerial Decree No. 2951/2015 dated 21 March 2015.

Libya

We have been advised by our colleagues in Libya that whilst the Trade Marks Office is currently accepting trade mark applications and renewals, the timeframe for applications to be filed is between four to six months. We have recently received a search report which took over 10 weeks.

The delays are mainly on account of the current political unrest, and the shortage of staff. We understand that unless the Head of Trade Marks Office is in the office, the remaining officials are not able to process any work without his authorisation.

Qatar

Copyright applications in Qatar can now proceed through to registration

The Qatar Minister of Economy and Commerce recently issued Decision No. 410 of 2014 in relation to the payment of official fees and the issuing of copyright registration certificates in Qatar.

Previously, it was not possible for applicants to pay the official fees required to process applications to register copyright and, accordingly, applications could not proceed to registration. This Decision allows applicants to pay the official fees and to request that a certificate of registration be issued.

The Decision also implements sanctions on infringers of copyright, with statutory penalties imposing fines up to QAR 100,000 (equivalent to approximately USD 27,500) and imprisonment of up to one year.

Saudi Arabia

4th Arab Forum

The 4th Arab Forum is currently underway in Riyadh until 7 May. This year's Forum focuses on the protection of consumers against commercial fraud, imitations and the violation of intellectual property rights.

Saudi Arabia

New registration numbers to be expected in Saudi Arabia when renewing or assigning registered marks

The Saudi Arabia Trade Mark Office is continuing to upgrade its internal systems and databases. One of the consequences of this update is that a fresh certificate of registration (with a new registration number) will be issued upon the assignment or renewal of a registered mark.

This supersedes the current procedure of the assignment or renewal being endorsed on the original certification of registration.

Yemen

Yemen Trade Marks Office remains open

The Trade Mark Office in Yemen remains operational at this time despite the political unrest which is ongoing.

COLLECTIVE LICENSING OF MUSIC IN THE UAE

By Harriet Balloch, Senior Associate

As reported in the market updates section of this newsletter, the UAE Ministry of Economy recently reviewed the fees charged by its various departments, including the Trade Mark, Patent and Copyright Office. As part of this review, the Ministry has revised the applicable fees relating to the setting up and operation of collecting societies:

  • a fee of AED 100,000 (equivalent to approximately USD 27,200) for obtaining a licence to operate a collecting society; and
  • an annual fee of AED 50,000 (equivalent to approximately USD 13,600) for renewing a licence to operate a collecting society.

At present, there are no collecting societies which are licensed to operate in the UAE. However, by revising the fees for setting up and operating a collecting society, we assume that the Ministry of Economy is considering licensing a collecting society to operate in the UAE, within the framework envisaged by the UAE Copyright Law (UAE Federal Law No 7 of 2002).

The legislative framework

Chapter 6 of the UAE Copyright Law (and relevant Ministerial Decisions) provides for the establishment and operation of collecting societies to manage the collection of royalties in the UAE on behalf of rights owners. This sets out certain requirements for a collecting society, which include:

  • obtaining an annual licence from the Ministry to operate as a collecting society in the UAE;
  • preparing and maintaining a detailed report on its catalogue of rights, including the names of its licensors, the rights held, the duration and value of such rights;
  • preparing financial reports and accounts of the royalties received from licensees and the profits generated and distributed;
  • allowing licensees to inspect its accounts at any time;
  • taking all administrative and legal action necessary to protect the rights of the contracting parties;
  • providing reports to the licensors setting out the details of the parties that have used their works and the royalties collected; and
  • submitting the information and documents set out above to the Ministry on request.

The requirement to obtain a licence to operate as a collecting society from the Ministry of Economy means that, without such a licence, is it not possible to operate lawfully as a collecting society within the UAE.

At present, there are no collecting societies licensed to operate in the UAE. However, with the introduction of the revised fees, we assume that the establishment of a collecting society in the UAE is presently under consideration by the Ministry.

The role of a collecting society

A collecting society's role is to act as an intermediary between rights owners (seeking to license their rights) and users of these rights (seeking to obtain a licence). For example, collecting societies commonly have a central role in relation to the playing of music in public.

Typically, a piece of music will bring together various works which are protected under the UAE Copyright Law, such as the music itself, the lyrics and a sound recording of the music. If a company wishes to play music in public, then it should obtain a licence from each of the rights owners for each piece of music which is played.

This is where the collecting society comes in. It builds up a catalogue of rights from multiple copyright owners (such as composers and lyricists) for multiple pieces of music. The collecting society then acts as a single point of contact for the licensing of these rights to companies wishing to play music from the collecting society's catalogue.

However, the absence of a collecting society in the UAE means that businesses are not able to obtain a licence from a single point of contact, as is the case in many other countries.

Progress in the UAE

By publishing the official fees to be paid in order to set up and maintain a collecting society, we assume that the Ministry of Economy is considering moving towards setting up a collecting society regime in the UAE.

Consideration will also need to be given to the role of the UAE Competition Law (UAE Federal Law No 4 of 2012). In the January 2015 edition of our newsletter, we looked at the impact of the UAE Competition Law on the licensing of intellectual property rights. In addition to satisfying the requirements of the Copyright Law, a collecting society will need to comply with the Competition Law (which may require it to avoid the abuse of a dominant position).

Nevertheless, the step taken by the Ministry of Economy is in the right direction towards collecting societies being established for the benefit of both rights owners and users.

UAE TRADE MARK GAZETTE

The latest edition of the UAE Trade Mark Gazette was published on 5 May 2015 and we have made a copy of this Gazette available online. This month's opposition deadline is 3 June 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 have 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 also need to conduct conflict checks to ensure we are free to assist.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions