Jordan: Abu-Ghazaleh Intellectual Property Bulletin, January 2000

JORDAN:
ACCEPTED INTO THE WORLD TRADE ORGANIZATION

KUWAIT:
TWO DECREES ON PATENTS OF INVENTION AND TRADEMARKS UNDER REVIEW IN THE PARLIAMENT

UNITED ARAB EMIRATES:
DOMAIN NAME REGISTRATION

YEMEN:

AMENDMENT OF THE IMPLEMENTING REGULATIONS

LEBANON:

DRAFT PATENT LAW APPROVED BIC VS BEE

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The General Council of the World Trade Organization, bringing together ambassadors of the 135-member states for their first formal gathering since a ministerial meeting in Seattle approved Jordan's acceptance into the world trade body.

Jordan applied for accession to the WTO's predecessor, the General Agreement on Tariffs and Trade (GATT) in January 1994, transferring its application to the WTO after its establishment in 1995. Its accession still needs to be ratified by the Jordanian Parliament.

Depending on when Georgia ratifies its accession already accepted by the WTO, Jordan could become the 136th member. Jordan had long aspired to become a member of the world trade body and this could prove to be a turning point in its economic development. The Jordanian government has adopted a national program for liberalizing the economy and creating a sound environment for trade and investment.

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Mr. Bader Abdul-Raheem, Deputy Under-secretary of State, expressed hope that the Kuwaiti Parliament will pass the decrees on patents and trademarks by January 2000. The Deputy for Licensing and Commercial Registration said that intellectual property encompasses patents and trademarks as well as copyrights and that the two decrees are important as they are prerequisites for Kuwait joining the World Trade Organization (WTO). Therefore, it is essential that the Parliament amends the current patent law of 1962. The GATT Agreement makes it obligatory for Kuwait to join by the Year 2000.

In answer to a question, Mr. Abdul-Raheem said that the WTO doesn't enforce sanctions on countries which do not join but rather sends them notifications. Likewise, in reply to a question on piracy, he said that the WTO makes it obligatory to protect owners' rights.

Recently the Gulf Cooperation Council (GCC) countries have been reported to have had high piracy rates ranging from 49 - 93%. Kuwait came third after Oman and Bahrain.

Mr. Abdul-Raheem commended a unified GCC patent law which was TRIPs-compatible. He added that the GCC Patent Office is receiving patent applications, some of which are from Kuwait.

In order to become a member of the WTO Kuwait must now meet some commitments including having a local Kuwaiti Patent Office which is complementary to the GCC Patent Office. He added that the GCC countries could utilize one GCC Office once all GCC member countries become members to the WTO.

According to the GCC Patent Office Director, the GCC Patent Office encompasses current trends of intellectual property and achieves the objectives of encouraging investments, of developing modern technology, and helps in industrial and agricultural progress in the area.

The tasks of the GCC Patent Office attached to the Secretariat General of the GCC Countries in Riyadh, Saudi Arabia, include implementing the GCC Patent Law and Regulations, patent documentation, and publication of patent documents.

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The Emirates Web Hosting Services (Etisalat) in the UAE has allowed the registration of domain names. The process requires:

1) Letter of authorization on the applicant's letterhead signed and stamped by the applicant addressed to the person filing the application, requesting the registration of its domain name in the UAE.

2) Copy of the UAE trademark registration certificate of the domain name.

The certificate of registration for the trademark, to be used as a domain name, is essential and will entitle the applicant to have only domain name registration without web hosting. The hosting will be allowed when the applicant starts a business concern locally and is entered in the Commercial Register. For more information kindly contact our Emirates Office in Sharjah.

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Ministerial Decision No. 315 for the Year 1999: Amending Ministerial Decision No. 353 for the Year 1995 on the Implementing Regulations for the Republican Decree of Law No. 19 for the Year 1993 on Intellectual Property, Trademarks.

Article 1

Cancellation of Article 10 and Article 31 of the Ministerial Decision No. 353 for the Year 1995 on the Implementing Regulations of the Republican Decision of Law No. 19 for the Year 1994 on the Intellectual Property Right, Trademarks.

Article 2

Article 11 of the same decision shall be amended to become as follows:

The Registrar may issue an administrative decision to settle the opposition submitted by a third party to the registration of a trademark after hearing the two parties or one party if it is requested. The party sustaining damage may appeal the decision to the appeal committee within 20 days as of the date of notification. The Committee's decision shall be appealable to the court within 20 days as of the date of notification.

Article 3

This decision shall become enforceable as of its issuance date and shall be notified to those commissioned to implement it.

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A draft Patent Law was approved by the Lebanese Minister of Economy and will be published in the upcoming edition of the Official Gazette. The draft law will be officially adopted by the upcoming Cabinet session.

The new patent law will be enforceable on publication in the official gazette. As compared to the current law, the law is more comprehensive, has more scope, is more organized and encompasses latest developments in the patent field. Below are the main points:

1) The General Provisions

Articles 1 & 2 provide for a wider concept for protectable patents involving novelty, inventive step and industrial applicability.

Article 5 extends the protection period from 15 years to 20 years.

2) Application and Grant

In its paragraph 3, Article 8 provides for claiming priority as stipulated in the Paris convention of 1883 provided that the priority document is filed within 3 months as of the filing date. Priority claim can be made upon filing or within two months of the filing date.

A number of amendments have been introduced regarding the fees and grace periods which range from 30 to 60 days.

The Registrar's decisions are subject to appeal. The law stipulates that a patent shall be granted within 60 days of acceptance.

3) Grant, Transfer and Lapse

Article 31 specifies the cases in which a patent lapses under a court decision.

The Articles from 32 to 35 provides for compulsory license granting which is not provided in the current law.

Article 36 governs pharmaceutical patents (whether product or process) and their materials and methods of manufacture and has subjected pharmaceutical patents to a compulsory licensing to be granted by the Minister of Economy and Trade.

4) Contraventions & Penalties

The provisions on contraventions and penalties have been expanded and drastically amended as compared to the current law. The amendments include a clear definition of patent infringement, civil law procedure, precautionary measures and provisional provisions.

5)Semi-Conductor Products

Articles 64 to 73 governed the deposit of semi-conductors, the semi-conductor rights, and the rights transfer and lapsing. The current law does not provide for semi-conductor rights.

Kindly contact our Regional Office for more information.

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Appellant: Empressa Frati S. p. A.

Appellee: Al-Reem Establishment for General Trade & Company Representation

Appeal: A misunderstanding of the difference between a commercial agency contract and a national agency contract.

The legal principle issued by the Appellate Court is that the contract is a commercial agency contract whether or not it is registered in the Register of Commercial Agents. This is so because registration is not a requirement for a commercial agency contract but a requirement for practicing commercial agency work in the country.

Article 1 of Federal Law No. 18 for the year 1988 has defined a commercial agency power as representing the principal by an agent for distributing, selling, offering for sale or presenting a product or a service in the country in exchange for a commission or profit. The agency contract in question provides in Article 8 that the appellee undertakes to provide many services to the appellant in the country as detailed in paragraphs A to H. In Article 7 it provides that the appellee deserves a commission to be agreed upon for those services.

Likewise, Article 314(2) of the said law provides that foreign companies must not operate in the country except through an agent who is a national of the state and as long as the agent is committed to providing the services for the principal company in exchange for a commission or profit.

In view of all that, the appeal should be rejected.

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BIC S.A. filed a case against a distributor in Lebanon who was importing and selling, on the Lebanese market, pens that were manufactured in Jordan under the trademark BEE. The BIC trademark has been registered in Lebanon since 1954. The defendant was instructed to cease importing the pens from their Jordanian manufacturer and to stop selling and marketing them in Lebanon. The defendant failed to comply.

The courts later ordered the defendant again to stop imports and sales of BEE pens, to withdraw the products from the market and to pay fines and damages. The products were impounded and the business enterprise was sealed. An expert was appointed to the case to provide advice and on October 7, 1999, the court issued a verdict to oblige the defendant to stop the import and sale of BEE pens and to pay damages of Lebanese Lira 6 million to the plaintiff.

Foremost among the reasons for the verdict are the following :

The plaintiff claims fraudulent infringement under Article 97 onwards of decision No. 2385.

Even without the report of the expert, the court could easily see that BEE is phonetically similar to BIC especially as to the shape of the box, pens, colors used and general appearance.

Decision No. 2385 has given the courts the rights to estimate the extent of counterfeiting and infringement from the point of view of the consumer and placing more importance on the overall similarity rather than difference of trademarks elements.

There is an overall similarity between the trademarks BIC and BEE.

Trademark BIC is registered and is to be protected against counterfeiting in Lebanon since the owner has the right to prosecute for infringement.

Counterfeiting has been proven between BIC and BEE marks.

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As part of the process of acceding to the WTO, Jordan has enacted its new Patent Law No. 32 of 1999, in compliance with the international standards which Jordan has been committed to through joining the TRIPs Agreement. This law also came to remedy the previous law, which suffered ambiguity in several respects.

In general, the rules of the new Patent Law enjoy clarity and simplicity, and are well divided under various main subjects of the Law. The main subjects are gradually headlined in the law as follows: Registration of the patent, Rights of the patentee, Licensing of inventions, Expiry and nullification of patents, Industrial property registration agents, Crimes and penalties, the Precautionary measures, and Closing rules.

In substance, the new Patent Law contains new established rules and modified rules. The major amendments can be summarized as follows:

- The Law establishes the rule of priority claim when filing a patent application (Article 10).

- The Law identifies the duration of temporary protection for the patent applicant to be the period between the acceptance date of the application and the granting date of the patent, giving the applicant the right to exploit the invention and legally act against any infringement on the invention (Article 13.b.1).

- The Law grants the patentee the right to act against any infringement on the patent and to claim compensation if the infringement is repeated (Article 13.b.2).

- The Law extends the duration for any person to oppose a patent at the Registrar's office to three months from the date of publication in the Official Gazette (Article 14).

- The Law modifies the duration of the patent protection to be twenty years from the date of filing the application for registration (Article 17).

- Regarding criminal protection, the Law unifies the penalties of patent crimes to imprisonment for a period not less than three months and not more than one year and/or a fine not less than one hundred Jordanian Dinars and not more than three thousand Jordanian Dinars (Article 32.a).

- The Law awards the patentee the right to claim damages on all types of crimes underlined by the law which may occur to the patent (Article 32.c).

- The Law grants the patentee, even prior to filing criminal and/or civil case, the right to request the court to issue an order to take any of the specified following precautionary measures :

1.Obtain a Court order to cease the infringement by freezing products being manufactured, imported, exported or distributed.

2.Obtain an injunction against the infringing products.

3.Obtain a Court order to seize all evidence relating to the infringement.

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.