IN THIS ISSUE
BAHRAIN:
NO LONGER ON WATCH LIST
JORDAN:
MINISTRY MEETING TO DISCUSS JOINING MADRID AGREEMENT
BRAINSTORMING MEETING FOR ARAB COUNTRIES ACCEDING TO THE WTO
AGIP CONTACTS IN INTA MEETING..
UNTED ARAB EMIRATES:
Q&A ON TRADEMARK LAW AND PRACTICES
IN BRIEF FORM OUR INTERNATIONAL OFFICE
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BAHRAIN: NO LONGER ON WATCH LIST
The US Embassy in Bahrain announced that Bahrain is to be removed from the 301 Watch List of Countries. This is regarded as a certificate of Bahrain's complete commitment to protecting intellectual property and to carrying out its long-term strategy to create a modern, open economy. This achievement is the direct result of years of cooperation between the government of Bahrain and the USA.
The Watch List Report tests the extent of efficacy and commitment to intellectual property protection around the world. The 1999 Report confirms the progress which Bahrain achieved in the last 18 months. Also, the report recommends that Bahrain be taken as an example for the area.
Bahrain eliminated piracy of audiovisual tapes, phonograms and computer software through awareness programs for the people to use genuine software. Moreover, Bahrain has taken steps to amend its intellectual property laws to cope with Bahrain's international commitments.
The Bahrain Ministry of Information has reduced the piracy of video tapes and phonograms to a noticeable extent and exerted substantial efforts in seizing pirated computer software. The Ministry's strategy of intellectual property awareness spreading and inspection and seizure campaigns proved to be a success. Likewise, the efforts of the Ministry are praiseworthy in protecting trademarks and patents.
Bahrain's commitment of intellectual property protection makes it both eligible to be removed off the 301 Watch List and to create an investment climate to attract foreign investments. Likewise, through protecting intellectual property, Bahrain can create a suitable environment to attract companies specialized in producing and offering advanced technological services.
The US Government reiterated commendation of Bahrain's achievement in the field of intellectual property protection and expressed its confidence that Bahrain will continue its success in the coming years.
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WIPO specialists have been visiting Jordan in preparation for the country accession to the Madrid Agreement and Protocol. On May 4, 1999 Mr. Jose Aranha from the International Registrations Department gave a lecture on the process of registration under the above treaties to a gathering of all the trademark attorneys and agents in Jordan.
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JORDAN: BRAINSTORMING MEETING FOR ARAB COUNTRIES ACCEDING TO THE WTO
Representatives from Jordan, Palestine, Lebanon, Sudan, Saudi Arabia, Oman and Yemen participated at the Brainstorming Meeting for Arab countries acceding to the WTO, held on May 3-5, 1999.
Twelve experts from UNDP, WTO, UNCTAD and WIPO were there to assist countries in the stage of their accession to WTO.
Issues that were addressed included status quo to the acceding countries, impact of TRIPs and TRIMs on acceding countries, opening up markets, petroleum industry, electronic commerce, and intellectual property. Negotiation sessions also took place between each team and the experts of WTO, UNCTAD, WIPO and UNDP (private sessions).
Sharing concerns and problems, illustrating general and technical issues, inquiring about the positives and negatives of the accession and the coming phases were the main features of the conference.
Tawfiq Zuwayyed (ASPIP), Tawfiq Ayyoub (ASCA), and Ruba Qalyoubi (LES - Arab Countries) were among the participants.
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AGIP AND ABLE REPRESENTATIVES ATTEND INTA MEETING
AGIP and ABLE plan to attend the INTA (International Trademark Association) annual meeting to be held on May 22-26, 1999. The delegation comprises:
- Mr. Luay T. Abu-Ghazaleh, Saudi Arabia Office.
- Mr. Mohammad R. Doofesh, AGIP International Office, Jordan.
- Mr. Nabil M. Salamé, AGIP North America Office, Canada.
- Ms. Diala N. Al-Alami, AGIP Emirates Office.
- Ms. Ruba T. Qalyoubi, ABLE Regional Office, Jordan.
- Mr. Bahaa Al-Armouti, ABLE Emirates Office.
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Q&A ON TRADEMARK LAW AND PRACTICES IN UAE
Q: How long will it take to conduct a trademark search?
A: 8 - 14 working days.
Q: Does your country use the international classification?
A: Yes.
Q: Are there any goods or services for which the mark can not be registered?
A: Yes, alcoholic drinks and the whole of class 33.
Q: Does the specification of goods in any class limit the protection to the specified goods, or does it give additional protection to all the goods in the class?
A: Will give protection to the whole goods within the class.
Q: Can a trademark be registered in the name of more than one applicant ( i.e. joint application)? If so, what are its requirements?
A: Yes, power of attorney executed jointly by the parties concerned.
Q: Can an application be filed without its complete documents? If yes, what is the deadline for filing the documents?
A: No, the only document required for filing an application is a legalized power of attorney.
Q: Can one application cover more than one class of goods/services?
A: No, a separate application is to be filed for each class of goods.
Q: May priority be claimed under the Paris Convention?
A: Yes.
Q: What is the term of protection of a trademark? From what date is it calculated?
A: 10 years from the application date.
Q: Is marking compulsory and, if so, how should marking be made?
A: Marking is not compulsory, but recommendable
Q: In case a trademark is not renewed in due time, and another company register the same trademark, can the original owner oppose the registration or not?
A: Yes.
Q: If the trademark was filed incorrectly originally, what documentation would be required to amend the official register to show the correct details?
A: A duly legalized certificate showing the correct details issued by a competent authority.
Q: Is use required before registration or for maintaining the registration in force?
A: Prior use is not required for registration, but use is necessary to maintain the registration in force.
Q: Is use of the trademark on one item sufficient to maintain the protection for all the goods covered by the registration?
A: Yes.
Q: What are the types of use required?
A: Sale of goods, advertisement, etc.
Q: Can the assignment of an application be recorded?
A: Yes.
Q: Is recording a license agreement compulsory? What are the consequences of non-recordal?
A: No. A license agreement will have no effect to third parties unless recorded.
Q: Can recordals such as change of name, address, merger, assignment, license, etc., be made against pending applications?
A: No.
Q: Can an assignment be made with or without the goodwill? What monetary consideration is to be mentioned as the value of the assignment? Is there any tax based on the value mentioned?
A: Assignment can be made with the goodwill. Nominal amount. There is no tax payable on the value.
Q: Can the trademark application be opposed and what is the opposition period?
A: Yes and the period is 30 days from the date of publication in the official gazette.
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IN BRIEF FROM OUR INTERNATIONAL OFFICE EU
On March 19, 1998, oral proceedings took place before the Board of Appeal of the European Patent Office during which the patentability of software and computer programs was discussed.
On February 4, 1999, the Board of Appeal came to the decision that a "computer program product" could be protected by a granted patent provided that it meets the usual requirements of the European Patent Convention (i.e. novelty, inventive step, industrial application, sufficiency of disclosure, clarity, etc.).
In the present case, a technical " character" or the solution to a technical problem would be sufficient in order not to exclude a program or a software from the patentability according to Article 52 (3).
Article 52- Patentable Inventions:
1. European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
a. discoveries, scientific theories and mathematical methods;
b. aesthetic creations;
c. schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers;
d. presentations of information.
3. The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
OAPI
It is possible to extend titles to Guinea Bissau, Guinea (Conakry) and Mali within an 18-months delay as from the signing of the above regulations (December 4, 1998). The applications for extensions must consequently be filed up to June 4, 2000 at the latest.
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ABLE/ IN THIS ISSUE
UNITED ARAB EMIRATES:
THE ABU - DHABI FEDERAL COURT OF FIRST INSTANCE EMPHASIZES THE LEGAL RULE OF PROTECTING FAMOUS TRADEMARKS
DUBAI SHOPPING FESTIVAL TAKES PREVENTIVE MEASURES TO PROTECT IP IN THE UAE
SAUDI ARABIA:
ANTI-COUNTERFEIT AWARENESS COMMITTEE (ACAC)
JORDAN:
DECISIONS ISSUED BY THE JORDANIAN APPELLATE COURT
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UNITED ARAB EMIRATES:
The Abu-Dhabi Federal Court of First Instance emphasizes the legal rule of protecting famous trademarks
As a member of the Paris Convention for the protection of Industrial Property, and according to the provisions of its Trademarks Law, the Abu-Dhabi Federal Court granted protection to trademark "LANZOR", even though the trademark was not registered in the UAE.
The case was brought before the Abu-Dhabi court, when a local party registered and used the trademark "LANSO" on its pharmaceutical products, in a way very similar to trademark "LANZOR" owned and used by a French pharmaceutical company. The plaintiffs, therefore, filed action against both the local party and UAE’s federal Ministry and supported the case by presenting previous worldwide registrations of the trademark "LANZOR", including more than 40 Arab and foreign countries. In addition, they also presented their trademark application to register trademark "LANZOR" deposited at the Federal Ministry in the UAE, prior to the local party’s application.
The local party alleged that their trademark was duly registered in accordance with the applicable rules and regulations and the provisions of the current Trademarks Law, and that no opposition action was filed against it within the prescribed period. They also argued that the plaintiffs’ application should not be considered on the ground that it is only an application, which has not yet matured into full registration.
The Abu-Dhabi Federal court issued its decision in favor of the French party, confirming the French party’s ownership of its " LANZOR " trademark. Accordingly, the Federal Ministry was requested to remove the registration of trademark "LANSO" from the Register, and register the French trademark " LANZOR" instead. In addition, the local party was ordered to cease using the trademark " LANSO", to publish the judgement in the Official Gazette at its own expense, and to pay all the expenses and fees incurred as a result of the subject case. It is also worth mentioning that all packages that were used by the local party, bearing trademark "LANSO", were also destroyed by order of the court.
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SAUDI ARABIA: ANTI-COUNTERFEIT AWARENESS COMMITTEE (ACAC)
To protect the Saudi markets from counterfeit goods, 16 local and international companies in the Kingdom of Saudi Arabia established the Anti Counterfeit Awareness Committee (ACAC), four months ago. ACAC‘s members will integrate their efforts and resources to track down and prosecute infringers.
For this purpose a hotline has been specifically established whereby public consumers can report counterfeit operations and/or any other information in this connection. The Jeddah Chamber of Commerce, and in cooperation with ACAC will investigate such reported claims.
Furthermore, it was reported that ACAC is considering a joint union with the Ministry of Commerce Bureau in Jeddah. Such a union is expected to conduct extensive campaigns in the Saudi markets to seize the import of counterfeit goods, and assure the protection of intellectual property rights in the Kingdom.
The designed campaigns will be under the patronage of the Ministry of Commerce, which is the competent party to protect and follow up on protecting the Saudi markets and consumers protection from counterfeit goods.
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JORDAN: DECISIONS ISSUED BY THE JORDANIAN APPELLATE COURT
1)The person appointed to manage a regional company does not have the power to retain a lawyer to act on its behalf.
This is because the power to run the company does not include the right to retain a lawyer for disputes and because cancellation of the non-operating foreign firm status, the regional office, does not prevent the plaintiff from demanding a claim from the foreign firm (defendant) as long as the lawsuit is filed against it, not against its regional office in Jordan.
2)It is not permissible to register a trademark which is identical to that of another party and which is already registered for the same goods.
Since this results in unfair competition, the infringed trademark must be cancelled.
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UNITED ARAB EMIRATES: DUBAI SHOPPING FESTIVAL TAKES PREVENTIVE MEASURES TO PROTECT IP IN THE UAE
With the cooperation of the Dubai Economic Department, the Municipality of Dubai had conducted extensive inspection campaigns to ensure application of the intellection property laws during the Dubai Shopping Festival.
All participating shops were obliged to comply with the intellectual property laws and regulations; any shop found to be offering counterfeit goods would be subjected to a fine between UAED 5,000-50,000 (1,360-13,600 US$).