Worldwide: Intellectual Property Newsletter - July 2015

MIDDLE EAST & NORTH AFRICA REGION

Ramadan Kareem to all our readers.

As reported in our June 2015 newsletter, government offices and many local businesses across the MENA region operate shorter working hours during the Holy Month of Ramadan.

Please also note that many of the intellectual property offices in the MENA region will close during the festival of Eid Al Fitr which marks the end of Ramadan. Exact closure dates will vary across the region and, in most cases, the end of Ramadan (and the beginning of Eid Al Fitr) will only be announced one or two days in advance. Please speak with your contact at Clyde & Co for further information.

However, it has already been announced that the intellectual property offices in the Kingdom of Saudi Arabia (KSA) will be closed from 12 July to 21 July 2015 inclusive, reopening on 22 July 2015.

Clyde & Co news: Welcome David Wilkinson

David Wilkinson has joined the firm's London office as the Head of Clyde & Co's Intellectual Property practice in the UK. We are delighted that a lawyer of David's calibre and standing will be leading the growth of our UK intellectual property practice, and we very much look forward to working with him.

To find out more about David, please visit our website at http://www.clydeco.com/people/profile/david-wilkinson.

Saudi Arabia: Registration requirements for international brand owners

A recent announcement from the Ministry of Commerce & Industry has prompted Harriet Balloch and Rob Deans to review the steps which brand owners should take in Saudi Arabia to register commercial agency agreements and trade mark licences.

Market updates and insight from around the region

There are a number of interesting updates in this month's edition, including news that the Qatari Patent Office will soon be accepting PCT applications.

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

UAE Trade Mark Gazette

The latest edition of the UAE Trade Mark Gazette was published on 7 July 2015. This month's opposition deadline is 5 August 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

SAUDI ARABIA: REGISTRATION REQUIREMENTS FOR INTERNATIONAL BRAND OWNERS

Authors: Harriet Balloch, Legal Director, and Rob Deans, Partner with input from Abdulaziz Al-Bosaily, Partner and Saud Alarifi, Of Counsel, Riyadh, Kingdom of Saudi Arabia.

Introduction

For brand owners without a presence in the Kingdom of Saudi Arabia, it is necessary to work with a local business in order to import the brand owner's goods into the Kingdom and then to market and sell the goods.

Earlier this year, the Saudi Ministry of Commerce & Industry (the Ministry) issued a reminder to importers and distributors of goods in Saudi Arabia (known as commercial agents) that they are required to register their agreements. The Ministry also provided a grace period for compliance of until 22 September 2015. Commercial agents which have failed to register their agreements by this date face fines being imposed.

This announcement is a timely reminder for brand owners to be aware of the legal framework which applies in Saudi Arabia, for the registration of both commercial agency agreements and trade mark licences.

Commercial agency agreements

The Saudi Arabian Commercial Agency Law (as enacted by Royal Decree No. M/5 dated 11/06/1389H, corresponding to 25/08/1969) and its implementing regulations (the Agency Law) obliges all commercial agents to register their agreements with the Ministry.

Following the Ministry's announcement, it is likely that this requirement will be actively enforced from 22 September 2015 onwards, and that fines will be imposed on agents and distributors which fail to comply by this date.

As a result, many commercial agents which have not yet registered their agreements with the Ministry are taking steps to become compliant. If the relationship between the brand owner and the commercial agent has not yet been properly documented, this means that the commercial agent may well contact the brand owner in order to rectify the position.

More specifically, the commercial agent may seek to put in place a commercial agency agreement dealing with the importation, marketing and sale of branded goods in Saudi Arabia. Alternatively, the commercial agent may seek to put in place a summary agreement (or a short letter of authority) to be registered with the Ministry (which only contains relatively basic provisions).

For overseas brand owners, it is important to be aware that:

1. If your commercial agent in Saudi Arabia contacts you with a request for documentation evidencing its appointment as a local distributor, then this may well be to ensure compliance with the Agency Law in order to avoid fines being imposed on it by the Ministry

2. It is important to review any documentation provided by the commercial agent carefully. Many of the protections for a brand owner principal which are contained in a full commercial agency agreement will not be present in a summary form agreement. It is particularly important to avoid granting wider rights than intended, and to ensure that the provisions of the agreement dealing with termination and renewal do not unduly tie the brand owners to the commercial agent

3. Only Saudi nationals and companies wholly owned by Saudi nationals are entitled to operate as commercial agents in Saudi Arabia. Accordingly, if a brand owner is working with a non-Saudi national or a company which is not wholly owned by a Saudi national, then the agreement cannot be registered with the Ministry

4. In order to be recorded with the Ministry, a commercial agency agreement will need to be in Arabic or in dual language English/Arabic. For dual language documents, the Arabic language will take precedence and, in all cases, it is important to ensure that the Arabic version is an accurate translation of what has been agreed in English; and

5. In order to be recorded with the Ministry, a commercial agency agreement will also need to be notarised and, where one of the parties is an overseas brand owner, the agreement must be legalised for use in Saudi Arabia. This process takes time, and it should be started sooner rather than later in order to enable the commercial agent to meet the deadline of 22 September for recording the agreement

Trade mark licences

In addition to the requirement to register agency agreements under the Agency Law, the Saudi Arabian Trade Mark Law (as enacted by Royal Decree No. M/21 of 28.05.1423H) (the Trade Mark Law) requires trade mark licences to be recorded with the Saudi Trade Mark Office.

This is a separate requirement to the registration requirement under the Agency Law. In the event that a commercial agency agreement includes a licence to use a trade mark, then the agreement (or a short-form agreement) should be registered with both the Ministry and the Saudi Trade Mark Office.

The requirement to record trade mark licences comes from Article 35 of the Trade Mark Law which provides that a trade mark licence shall have no legal effect against third parties until it is registered. It is therefore potentially useful for both the owner of the trade mark and the licensee to register the licence with the Saudi Trade Mark Office.

For the trade mark owner, the registration of a licence agreement helps it rely on the use of the mark by its licensee to ensure that its trade mark registration does not become vulnerable to attack for non-use. For the licensee, this can enable it to bring action in its own name directly against an infringer of the trade mark.

Accordingly, although the registration of a trade mark licence with the Saudi Trade Mark Office can be seen as a formality requirement, the failure to register the agreement can have substantive consequences for both the trade mark owner and the licensee. Commonly, the parties to trade mark licences register summary agreements (known as registered user agreements) in order to simplify the registration process and to keep the commercial terms of the trade mark licence off the register.

Summary

While brand owners should be keen to support their local partners, it is important to ensure that the documentation that is put in place is balanced, so that the overseas brand owner's position is adequately protected.

Brand owners should therefore ensure that agreements (including summary agreements and letters of authority) which are produced for registration purposes are reviewed carefully to avoid difficulties arising in the future. Brand owners should also not overlook the requirements and potential benefits of recording trade mark licences in Saudi Arabia.

UAE TRADE MARK GAZETTE

The latest edition of the UAE Trade Mark Gazette was published on 7 July 2015 and we have made a copy of this Gazette available online. This month's opposition deadline is 5 August 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 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 Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.