IN THIS ISSUE
- Former INTA Executive Director to Serve as AGIP Consultant
- Arab Regional Group Admitted Into LES
- Q & A -- JORDAN
- UAE Amendments to Patent Law Merger of Intellectual Property Rights in World Trade System
Legal Angle
BAHRAIN: No Conclusive Effect for Documents Unless it Is Written in Arabic
IP Rights as Strong Evidence for Building an Opposition in the UAE Dubai Court of Appeal Rules to strike Off an Infringing Mark
Former INTA Executive Director to Serve as AGIP US Consultant
As of January 1999, Ms. Robin Rolfe, former executive director of the International Trademark Association, joins AGIP as a special consultant. She will focus on maintaining and further advancing AGIP's commitment to intellectual property industries and to ensuring the highest quality client relations. Ms. Rolfe will also serve on the AGIP board of directors.
Ms. Rolfe is credited with engineering much of INTA's growth and program innovation. During her 17 year tenure, the association not only changed its name from the United States Trademark Association to the International Trademark Association but, more significantly, redesigned its education, publishing and public policy activities to be international without creating continental or regional associations. INTA's famed annual meeting also was enhanced and expanded to become the largest meeting of the intellectual property community in the world.
Following Ms. Rolfe's departure from INTA and a brief sabbatical, she established her own firm, Robin Rolfe Resources, with AGIP as her premier client.
Arab Regional Group Admitted into LES
On October 30, 1998 the Arab Licensing & Technology Transfer Society (ALTTS) was admitted as the 28th member society of the Licensing Executives Society International (LES), a Worldwide organization of licensing executives. ALLTS will be known as LES Arab Countries and will include all the countries members of the Arab League of arab states beings, Egypt, the Near East countries, the Gulf States and North Africa. The admittance ceremony was held at the 1998 LES International Annual Delegates Meeting in Miami Beach, Florida.
Retiring LES International President Rodney De Boos reported that ALTTS had achieved all of the standards required for a LES national society charter. He noted that ALLTS already enrolled more than 120 members and sponsored significant programming for licensing professionals in the region. In addition, on January 27, 1999 LES Arab Countries will hold a one-day seminar in Cairo on iPrinciples of Successful Technology Transferi in cooperation with LESI and offered to prepare add-on sessions on Arab Technology and Licensing to the conferences of other LES national societies.
Accepting the charter for LES Arab Countries was its President Mr. Talal Abu-Ghazaleh and the chairman of AGIP. Mr. Abu-Ghazaleh designated Dr. Al-Salah Al-Bashir, Vice-President of LES Arab Countries and managing partner of International Business Legal Associates (Jordan), and Mr. Abdullah Al-Subyani, managing partner of International Dimension for Marketing and Technologies (Saudi Arabia) to serve as the LES Arab countries delegates to LESI.
In his comments on the future of the new Arab LES, Mr. Abu-Ghazaleh acknowledged the encouragement of LESIis leaders in the organization of the Arab Society and, specifically, the support and guidance provided by Mr. Rodney De Boos (President), Mr. Platon Mandros (President-elect), Mr. Tom Small (immediate Ex-President), Mr. Peter Chroeziel (Membership Chairman) as well as Ms. Elizabeth Logeas, Mr. Mel Jager, Mr. Willy Manfroy and Mr. Thierry Sueur. He also thanked Dr. Erich Hausser and Dr. Heinz Goddar for their recognition of the importance of establishing an Arab Regional organization to assist professionals and businesspersons in the development and advancement of licensing intellectual property properties.
LES Arab Countries was well represented at its first LESI meeting. In addition to three members named above, foremost among those present in the delegation were Mr. Abdul Aziz Mussallam (Jordan) Ms. Samar Al Labbad (Egypt), Mr. Nabil Salame (Canada), Mr. Saleh Shureim (Qatar), Mrs. Yuaris Abu-El-Aiz (United Arab Emirates), Mr. Tawfiq Zuwaid (Jordan) and Ms. Robin Rolfe (US Consultant).
Jordan - Q & A On intellectual Property Laws and Practices
Q: Are service marks registrable?
A: No, the Jordanian Trademark Law does not provide for the protection of service marks in international classes from 35 to 42. However, trademark owners are advised to file the mark in international class 16 to cover "printed matter, brochures and stationery" relating to the company's field.
Q: Are numerals registrable?
A: Yes, numerals can be registered as trademarks or parts of trademarks but must be disclaimed for general use.
Q: Does one application cover multiple classes?
A: No, a separate application should be filed for each class of goods.
Q: Does a trademark registration in one class provide legal protection to other classes?
A: No, a trademark registration in one class, or for certain goods in one class, cannot be used for defending the owner's rights in other classes or for goods not specified in the registration.
Merger of Intellectual Property Rights in the World Trade System
AGIP Chairman , Mr. Talal Abu-Ghazaleh, confirmed that merger of intellectual property rights in world trade system will have positive effects represented in opening up new horizons, improving market accessability and finding a proper framework for foreign investment and transfer of technology.
In a speech delivered in the First Arab Regional Conference of International Chamber of Commerce, held in Beirut in October 1998, Mr. Abu-Ghazaleh indicated that the application of TRIPS agreement will result in a number of negative effects represented in higher prices and reducing the possibility of the dissemination of technology, in addition to that the industrial structure will be subject to change because the application of TRIPS Agreement will restrict competitive opportunities after the transitional period comes to an end.
Mr. Abu-Ghazaleh is of the opinion that some procedures should be taken by the Arab countries when applying TRIPS agreement, among which are improving the incentive framework of intellectual property, consolidation of related administrations, enhancing execution mechanisms through laws, ensuring the appropriate training, and improving the ability to control the transfer of technology within the institutions themselves.
The execution of TRIPS Agreement in such a manner that would assist in consolidating and activating competition through the economy of the concerned country requires certain conditions, among which the enacting laws for the protection of intellectual property which are in conformity with TRIPS agreement, and at the same time having no negative effect on development and innovation, and creating the necessary frameworks for providing incentives which would activate creativity and innovation at the local level.
Such execution also requires making benefit to the greatest extent possible of the possibility of obtaining scientific and technological information available through world information infrastructure, the application of negative effects resulting from the abuse of intellectual property rights, and improving innovation and creativity system by laying down extensive programs for acquiring the necessary intellectual skill, in addition to improving the capabilities of comprehending modern technical information.
The General Secretary of the International Chamber of Commerce, Maria Kitawi confirmed that the Arab World should have a role in the International Chamber of Commerce, on the basis that the chairmanship of this Chamber of Commerce will devolve to one of the Arab countries representatives, namely the Chairman of the Lebanese Union of the Chambers of Commerce Mr. Adnan Qassar.
UAE Joins PCT
In accordance with federal Decree N. 84 for 1998, the United Arab Emirates (UAE) has joined the PCT Convention as of August 18, 1998. The said Convention has now been published in the official Gazette No. 323 for September 1998.
Amendments to UAE Patent Law
The UAE has prepared a draft law that envisages amendments to the patent law, to include in its scope medicines and pharmaceutical products, currently excluded from protection.
A moderator at a round-table discussion on the subject of protection of trademarks held at the Abu-Dhabi Chamber of Commerce and Industry in November, said that the draft had been forwarded to the World Intellectual Properties Organization (WIPO) for perusal.
The UAE, as a signatory of the TRIPS Agreement and in the wake of the country joining the World Trade Organization, is obliged to make certain legislations comply with the standards prescribed. The draft has not covered pipeline protection. For instance, a chemical entity in its molecular form may be registered, but the finished product is not.
Earlier, during the discussions, Kurt W. Welte, Switzerland Ambassador to UAE, said that while the UAE had taken a lead among the countries in the region to ensure effective implementation of copyright laws, including audio, video and computer software, medicines and pharmaceuticals were left out of the patent protection.
Kuwait Times Newspaper, November 2, 1998 Kuwait.
BAHRAIN : No Conclusive effect for documents unless written in Arabic
The Bahraini Court of Cassation rules: "Any document will have no conclusive effect unless it is written in Arabic."
Any document submitted to a court by a litigating party will have no conclusive effect unless it is written in Arabic or translated into Arabic. Against this, a report of an expert will not be considered defective if the documents are submitted to him in a foreign language as long as the report itself is submitted in Arabic.
The Court of Cassation sustained an appeal decision which obliged the members of a family jointly to pay an amount of US$ 37,980 to a contracting establishment and excluded documents submitted by the family in English to prove that the establishment has no right in the amounts claimed.
The establishment indicated that it is agreed with the defendants to execute contracting work for a total amount of US$ 87,480. The project was completed, but the defendants paid only US$ 51,860. Accordingly, the establishment requested obliging them to pay the remaining amount. The court of Cassation appointed an expert in the lawsuit, and after he submitted his report, the court issued a decision whereby it obliged the family to pay the claimed amount to the establishment.
The defendant said that the plaintiff had not completed all agreed work, and that they deserve the amount of the guarantee since the establishment did not complete all work. As evidence to this, they submitted a document written in English.
Intellectual property Rights as strong evidence for filing an opposition in the UAE
An opposition action has been filed in the UAE by Mastock Northern Ireland Ltd. ("Opposer") against trademark application "Green Farms & Arabic Label" Omar K. Alesayi ("Applicant") of Saudi Arabia. The Opposer grounded its arguments on similarity with its previously registered trademark and likelihood of confusion between the allegedly similar marks.
The defendant refuted those claims stating that the word mark is generic and common and thus, no confession would occur since the coverall appearance is different. Interestingly, the Applicant also raised the augment that it had registered its mark in several countries without any objection from the Opposer.
When deciding this case, the ruling authority ruled in favour of the Applicant adopting a judgement of the High Federal Court of the UAE which finds similarity between two marks through examining the overall image, and through association in the minds of the appearance or symbols, rather than similarity between specific details or common elements. Therefore the authority's decision applied the "association" test to find confusion rather than "common elements" test.
More importantly the authority however, stated that registration of the two allegedly conflicting marks in the same countries (Egypt, Bahrain, Kuwait, Algeria and Morocco) entails that confusion was unfounded particularly since the Opposer did not try to object or cancel these registrations.
In summary, the competent authorities in the UAE delivered a sound decision with regard to analyzing the matter of trademark confusion. Moreover, the authorities established an unprecedented principle in trademark rulings which takes into account the status in other countries and a party's effort in persuing protection of its intellectual property rights as a basis for seriousness and strong evidence for building an opposition.
Dubai Court of Appeal Rules striking off an infringing mark
The Dubai Court of Appeal under the panel of Chief Judge Bur'i Saeed and residing Judges Ala'addin Al-Sanhoury and Fatheiah Qura has laid down the legal principle that any imitation of a trademark is likely to mislead the public and that the court has the right to decide the case without resorting to experts if there are documents sufficient to prove imitation.
A company had filed a lawsuit against another demanding that the trademark be struck off from the Register and other related authorities as well as destroying the products bearing the imitated trademark.
The mark relates to anti-cartheft device and is registered in respect of devices. The company owner of the genuine mark said that the infringing company has changed some numbers through a Taiwanese firm. The Court of the First Instance ruled that the imitated mark be struck off and the product packagings be destroyed and that the defendant should be held liable for the expenses and attorney fees.
The infringing company then appealed the decision and demanded the reversal of the issued decision and referring the case to experts to establish whether or not there is a difference between the two marks. The company also submitted photographic pictures of its products and those of the appellee. After reviewing the colour photographs of the marks in question, the court found such a big resemblance between them as causing to deceive abd mislead the public. The court stated that the crucial point is not that the mark contains images and letters but rather the association in the minds of the public, and thus the public will likely be mislead when seeing the infringing mark.
The Dubai Court of Cassation had previously established that registration entails ownership and grants the owner the sole right to use the registered mark whereby such ownership would become incontestable property. The Court further established that registration of a trademark constitutes prima facie evidence of prior use and that prior use is the crucial point in determining priority of ownership.
Accordingly, and since the appellee had registered the mark in question based on its application No. 6709 dated June 25, 1994 with the Ministry of Trade and Economy and since the appellant registered the same trademark under No. 15284 on February 23, 1996, then the appellee is regarded as the owner of the trademark because its trademark was registered before the registration of the appellant's trademark.
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