Jordan: Abu-Ghazaleh Intellectual Property Bulletin, December 1999

IN THIS ISSUE

MOROCCO:
-OFFICIALLY IN PCT

JORDAN:
-AMENDS ITS TRADEMARK AND PATENT LAWS IN COMPLIANCE WITH THE TRIPS AGREEMENT
-EXPECTED TO JOIN WTO
-PHARMACEUTICAL CONFERENCE
-NEW AMENDMENT TO THE TRADEMARKS LAW

QATAR:
-SET TO FINALISE LAWS FOR COPYRIGHT

EGYPT:
-A WORKING PAPER ON THE CONCEPT OF IP
-TALAL ABU-GHAZALEH: "DO NOT EXCLUDE DEVELOPING COUNTRIES FROM THE INFORMATION WORLD"

-MILLENNIUM COMPLIANCE
-AGIP MILLENNIUM CELEBRATION

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Morocco has now joined the PCT as published in the Official Gazette of Morocco dated November 4, 1999, The implementing regulations have also been published. For more information, contact our Regional office in Amman, Jordan.

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On November 1, 1999, Jordan published amending laws to its existing trademarks and patent laws. The laws took effect on December 1, 1999, upon issuance of the implementing regulations. Of note in the new trademark law, is the addition of service mark protection, as well as over 100% increase in official fees. As for the patent law, pharmaceutical patents can now be filed. See our Legal Angle (page 3) for an in-depth analysis.

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This informative and unique publication features filing requirements, registration fees, international conventions for over 190 countries. Professionals around the world can draw on it for an overview of the latest IP developments.

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Qatar is close to finalizing new laws for trademarks, copyright and intellectual property rights (IPR). A two-day seminar was jointly organised by the Commerce Department at the Finance Ministry and WIPO. "A three-member team from the World Intellectual Property Organization (WIPO) is currently reviewing our final draft for new laws in these areas", the Finance Ministry's director for the Department of Commerce, Abdulaziz Al-Kholeifi stated.

"We are aiming to finalise and submit these laws to the Cabinet in due course", he said. Qatar and eight other Arab countries in the region are members of the World Trade Organization (WTO) which has set a January 2000 deadline for developing countries to finalise all agreements on trade-related aspects of intellectual property rights (TRIPs).

"Consumers will benefit most if Arab states implement the TRIPs agreement before the January 2000 deadline as they will obtain original goods and all counterfeit items will disappear", Mohamed Hussam Lutfi, a professor of civil law at Cairo University and expert with WIPO, said on the final day of a regional seminar on TRIPs held at the Doha Sheraton.

The other Arab countries who are members of WTO include Bahrain, United Arab Emirates, Kuwait, Tunisia, Djibouti, Egypt, Morocco and Mauritania.

Lutfi said it was highly unlikely that WTO will extend the deadline for developing countries to finalise all aspects of the TRIPs agreement at its forthcoming ministerial meeting at Seattle. This agreement, covering a wide range of issues among members, obliges all WTO members to comply with industry-based agreements across several product categories, except pharmaceutical and agro-chemicals.

The provisions include formulating specific standard laws for trademarks, geographical indications, industrial designs, patents, layout designs (topographies of integrated circuits), protection of undisclosed information and control of anti-competitive practices in contractual licenses. Members who fail to meet the deadline will face sanctions from WTO.

The new laws once implemented will pave the way for positive transfer of technology from Western and European nations to the region. But an increase in prices during the creation of an open market is one issue which consumers will face. "As more and more high quality products come into an open market from several countries there will be competition and prices will decline, "Lutfi said.

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Mr. Talal Abu-Ghazaleh, Chairman of AGIP and the Arab Society for the Protection of Intellectual Property (ASPIP) called for transforming intellectual property concept from protection to an incentive in economic and social development. He added that the most important aspect of the intellectual property system lies in its service to society and man and as incentive to creativity and development.

Mr. Abu-Ghazaleh went on to say that if we are to visualise the map of the next century technology, we will see that we will reach zero cost for computers and telecommunication lines within twenty years. The world will actually be an information globe.

Mr. Abu-Ghazaleh made those remarks during the second round of meetings of the Advisory Board Council which includes 16 members representing intellectual property organizations and committees from around the world. Mr. Abu-Ghazaleh had been commissioned to prepare a working paper including renewing the objectives of the intellectual property system as well as its role in serving the economy and society.

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On November 8-10, 1999, a pharmaceutical conference took place in Amman, in which Arab businessmen discussed issues concerning pharmaceutical products and the intellectual property protection of these products. Some of the issues discussed were:

1.Ideological aspects of intellectual property protection and it's relationship with the pharmaceutical industry.

2.Intellectual property protection laws and the factors that affect it.

3.Ideas in executing intellectual property protection laws according to WTO.

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After months of anticipation, the new amendment of the trademark law was ratified on September 22nd, 1999 and published in the Official Gazette on Nov. 1st, 1999. Accordingly, the new amendments will be enforced by Dec. 1st, 1999, upon the issuance of the implementing regulations. The said law was revised to meet the international standards of the Trade Related Aspects of Intellectual Property (TRIPs) Agreement.

The most substantial ratification is the addition of international service marks to the classification of goods of the previous trademark law. This addition will contribute to providing protection to the trade and service industry in Jordan. With the addition of service marks it is no longer necessary to file service marks under class 16 for publication and printed material as was the common practice. Currently it is recommended that applications in class 16 be submitted under the service marks. For more information please contact our Jordan Office.

Another important addition to the revised law is the concept of a "Famous mark", which is defined by the legislators "as a mark whose reputation has crossed over the boundaries of the country of its origin, where it was originally registered, and whose known as a famous mark has reached the Jordanian consumer in that sector"

Article 8 paragraph 12 clearly prohibited the registration of marks "whether identical or similar to, or constitutes a translation of, a famous trademark" and thereby affording protection to the famous mark.

In cases of infringement the famous marks could be a basis for an infringement action even if the subject marks are not registered. Further, the new legislation no longer restricts the "Fragmentation of Goods" in a class in connection with the famous trademark. Thereby once a link is established between the goods, in which the famous trademark is registered for and the goods for which the trademark intended to be registered, then this would be a good basis for infringement. Furthermore, the revised law granted the owner of the famous trademark its right to defend it, against all possible kinds of infringements, even if its not registered in Jordan. Article (26.b)

Collective marks can be registered and protected in the new revised law, which defines the marks as : "The mark used by a corporate entity to certify the origin of the goods, or services or to verify the quality, manufacture or any other specifications."

Furthermore, if a collective mark meets the requirements specified in the original law, it may be registered and regarded, in all aspects, as a special mark in the name of a corporate entity.

Assigning, canceling or re-registration of a mark after its cancellation is only possible if the transfer is to a corporate entity or a legal predecessor.

The revised version of the law allowed for the assignment of marks without business concern, which was not available in the previous law.

It is now possible, according to Article (19.1), to transfer, assign, or mortgage a mark without having to implement the same action on the business. Furthermore, it is possible to seize the mark separately from the business. This aspect conforms with the TRIPS.

The law stipulates that if a close association exists between the business and the mark then the transfer, assignment or mortgage should be with the business concern.

In the advent that the transfer or assignment of the business is made without the transfer or assignment of the mark, then both parties may use the trademark, until an assignment is recorded.

Any assignment, transfer or mortgage will not be regarded as effective except after filing the transfer and publishing it in the official gazette.

In order to conform with the TRIPs agreement, the new revised law has amended the duration of registration of marks from 7 & 14 years to 10 years, renewable for further periods of 10 years. All trademarks currently on the register will be renewed after 10 years.

If the owner of the mark fails to apply for renewal within 1 year following the expiration of the protection period, the Registrar shall of his own accord strike the mark from the register.

The revised law restricted the filing of the mark by a third party, only after one year has lapsed from the cancellation of the non-renewed mark. .

According to the revised law the period of non use that could be used as a basis for a cancellation action has been increased from two to three years preceding the date of filing the cancellation action.

In this case, use by a third party that is associated with the owner through agreement is regarded as effective use.

The process of licensing previously not specified in the trademark law, receives a specific focus in article 26 paragraph 2 & 3, whereby the owner of a trademark can license all the class of goods or only license selected goods. The duration of the license should not exceed the protection period afforded by the registration.

In the definition of infringement actions the revised law entitled compensation to registered marks only. The owners of unregistered marks in Jordan can cancel any mark registered in Jordan if it leads to the misconception of the consumers. The action maybe filed based on Article 8 paragraphs 6, 7, 10 and 12.

The registrar's decision maybe appealed at the High Court of Justice for any such action. The deadline for appealing has been extended from 20 days to 60 days from the date of notification.

With regards to sanctions on the infringing party, the periods of imprisonment period has been increased from a maximum of three months to one year, while the fines have been amended from a maximum of JD 100 (equal to US$ 70.00) to JD 3000 (equal to US$ 2,130.00).

The revised law explains the proceedings of infringement before civil or criminal courts, in detail and the procedures to be adopted with regard to infringement cases.

The revised law reiterated the possibility to claim priority according to international agreements or conventions.

The new regulations allows for the protection of goods or services not previously filed due to the existence of a convention or exhibition as a temporary protection for the period of the convention or exhibition. These will be registered according to regulations that will be issued by the ministry.

For more information please contact our Jordan Office.

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AGIP Chairman, Mr. Talal Abu-Ghazaleh, addressed an open letter to the developed countries calling on them not to exclude the developing countries from the world of information. Mr. Abu-Ghazaleh warned that an exclusion would be a grave mistake which would lead to unavoidable dispute between the developing and the developed world.

Mr. Abu-Ghazaleh made his address at the inauguration of the New Millennium Creative Leadership Conference, held in Amman, Jordan, on November 16, 1999. In his speech, Mr. Abu-Ghazaleh spoke in detail about the technological development stages and uses as well as intellectual property. He stressed that the information revolution which in turn will lead to wisdom revolution. Mr. Abu-Ghazaleh added that our tools are the Internet and smart equipment and predicted the E-trade will be the international market of trade within 20 years with limitless opportunities.

During the conference, Abu-Ghazaleh also addressed a letter to Microsoft Chairman, Bill Gates, and called on him to take measures to bridge the gap between the developed and the developing countries.

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AGIP has been continuously updating the computer software and hardware available in its offices and confirms that all its systems are fully year 2000 compliant.

All programmes and computers are effective and capable of the critical applications related to the date fields; dates will be displayed in 4 digit years and the year 2000 will be recognised as will a leap year. This will not affect any date-reliant data such as patent annuity, trademark renewal and any related intellectual property deadlines, nor any accounting functions.

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Now that AGIP has adapted a self-sustained server, we are converting all our e-mail addresses into the TAGI.COM domain:

• agip.algeria@tagi.com
• agip.bahrain@tagi.com
• agip.cairo@tagi.com
• agip.amman@tagi.com
• agip.kuwait@tagi.com
• agip.beirut@tagi.com
• agip.libya@tagi.com
• agip.morocco@tagi.com
• agip.oman@tagi.com
• agip.gaza@tagi.com
• agip.ramallah@tagi.com
• agip.qatar@tagi.com
• agip.riyadh@tagi.com
• agip.sudan@tagi.com
• agip.syria@tagi.com
• agip.tunisia@tagi.com
• agip.uae@tagi.com
• agip.yemen@tagi.com

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The AGIP Millennium Celebration will take place on July 22, 2000 (not on July 20, 2000) as previously indicated. We regret the error and request a re-confirmation from participants indicating that they will indeed be able to attend on July 22.

Invitations will be sent to participants in April 2000. You are kindly requested to send in your request forms no later than March 31, 2000.

Maya Le Roux-Obradovic received her professional degree at the Geneva Conservatory of Music. After studying with Alberto Ponce at the Ecole Normale de Musique in Paris, she obtained her diploma in Musical Execution in 1987. Apart form playing in duo, Maya Le Roux-Obradovic has performed internationally as guitar soloist with the Royal Philarmonic Orchestra in London, New York and Belgrade, as well as at numerous recitals in Switzerland and France.

Maya Le Roux-Obradovic is also a composer. Stepped in the romanticism, Maya Le Roux-Obradovic’s musical creativity reveals her Slavic heritage through melodies reminiscent of Eastern European folk music.

The suite for two guitars, as well as her concerto for guitar and orchestra "Ballade de la Vallee magique" reflect the Balkan influence. But, Maya Le Roux-Obradovic, a versatile musician, is also at ease with an Afro tempo and Jazz, as she readily comfortable with the musical comedy "Cocoa", taken form a book by Gerard Le Roux.

Her own compositions include seven melodies for the story "Nick et l’Empereur de Chine" written by Therese Larteguy; "Reverie pour guitare solo" and a symphonic work in collaboration with Alexandre Vujic entitled "Un pas de bolero".

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