Important IP News in 2017
Kuwait Starts Accepting e-Trademark Applications:
Kuwait Trademarks Office announced that it has started receiving electronic filing of new trademark applications.
Amended Patent Law Comes into Force in Jordan
Jordan’s Ministry of Industry and Trade announced that the amended Patent Law No. 16 and the amended Patent Law No. 17 of 2017 have been published in the Official Gazette No. 5760, and entered into force in Jordan on June 16, 2017.
European Patent Validation in Tunisia
The European Patent Office (EPO) and the Tunisian National Institute for Standardization and Industrial Property (INNORPI) announced that the validation of European patents is possible in Tunisia, as from December 1, 2017.
GCC Trademark Law Comes into Force in Oman
Oman adopted the GCC Trademark Law that came into force in the country as of July 25, 2017.The GCC Trademark Law, which was published in the Official Gazette No. 1204, comprises 52 articles, outlines the general directives. and rulings governing trademark registration, renewal, assignment and cancellation procedures in the GCC countries
India Releases Trade Marks Amendments Rules 2017
The Department of Industrial Policy and Promotion, affiliated to the Ministry of Commerce and Industry in India has announced that the new amended trademark rules entered into force in India, effective March 6, 2017.
The new Trade Marks Rules simplified the processes, by introducing fewer forms, and gave preference to online filings.
Iraq: Trademarks Published in Three Official Gazettes Issues
Pursuant to the provisions of the Article No. 11 of the Iraqi Trademark Law No. 21 of 1957, the approved trademarks will be published in three consecutive editions of the Official Gazette with one-week interval, noting that the 90-day opposition period will be counted from the publication date of the last issue.
Jordan Joins the PCT
The Government of the Hashemite Kingdom of Jordan has deposited, on March 9, 2017, its instrument of accession to the Patent Cooperation Treaty (PCT). The said
Treaty has entered into force, with respect to Jordan, on June 9, 2017.
.KW Domain Registration Commences in Kuwait
The Communication and Information Technology Regulatory Authority (CITRA) of Kuwait announced the launch of the registration of domain names under (.kw) country-code Top Level Domain (ccTLD).
New Practice for Filing New Trademark Applications in Bahrain
The Industrial Property Office of Bahrain (IPO) set a new practice to file new trademark applications in Bahrain, as it will no more accept the P.O.
Box address only for filing new trademark applications in Bahrain.
Instead, the complete address of the applicant (building name, number, and street name) should be mentioned in the application form.
Online Issuance of Trademark Registration in UAE
The Trademarks Office of the United Arab Emirates announced recently that the new trademark certificates will be issued electronically for the publication in the official gazettes number 180 onwards. However, the certificates for previous publications will be issued manually from the Trademarks Office.
The Trademarks Office in Qatar announced that Qatar adopted the international classes 43, 44 and 45 of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification). TM Office has started accepting trademark applications for services that fall under classes 43, 44 and 45 as of February 12, 2017.
Qatar Launches Online Copyright Applications
The Ministry of Economy and Commerce in Qatar announced that it has recently launched the new service of online copyright applications.
Copyright applications can be submitted on the website of the Qatari Copyrights Office at www.services.mec.gov.qa
Registration of Accented Domain Names Containing Special Characters in Morocco
The National Telecommunication Authority in Morocco announced that accented Domain names containing special characters such as: â, ç, è, é, ê, ë, î, ï, ô, ù, Û, ü became possible in Morocco since March 1st 2017.
Tunisia to Apply E-Filing System
Following the meeting held between the Tunisian Office for Normalization and Industrial Property (INNORPI) and the main agents of
patents and trademarks in Tunisia, the E-Filing system for trademarks and patents has been adopted in Tunisia.
Turkey Provides Protection for Unregistered Designs
The new Industrial Property Law No. 6769 (IP Law) has brought many amendments to the protection of Intellectual Property in Turkey, especially the industrial designs.
One of the major amendments to the industrial design’s rights is that the protection of unregistered industrial design became available in Turkey. The protection term of unregistered designs is three years starting from the design’s disclosure date.
Qatar Introduces E-Filing of Trademark Applications
The Qatari Trademarks Office started receiving and processing trademark applications in electronic form. The Trademarks Office announced that it will include all other trademark services to be filed online shortly.
GCC Countries to Apply a New VAT Rate
A New VAT of 5% will be applied in Saudi Arabia and the United Arab Emirates as from January 1, 2018.
Turkey Issues New Industrial Property Law
The new Industrial Property Law No. 6769 which was adopted by the Grand National Assembly of Turkey on December 22, 2016, entered into force as from its publication date at the official gazette on January 10, 2017.
AGIP Selected One of the Top 10 Intellectual Property Firms in China
Abu-Ghazaleh Intellectual Property (AGIP) has been selected one of the top 10 Intellectual Property firms in China, and won the Best Trademark Agency of the Year 2017 during a special ceremony by China Intellectual Property Forum.
AGIP Directors Appointed to INTA Committees
The International Trademark Association (INTA) has recently announced the selection of two senior staff representing Abu-Ghazaleh Intellectual Property (AGIP) to the INTA Committees for the 2018 – 2019 term.
Mr. Motasem Abu-Ghazaleh, National Development Executive Director, was appointed to co-chair the Middle East Global Advisory Council, and Ms. Dima Naber, Counsel and International Business Development Executive Director, to Programming Advisory Committee.
AGIP is First to File e-Trademark Application in Kuwait
AGIP has become the first IP agent to file an electronic trademark application in Kuwait, following the Kuwait Trademark Office announcement to start receiving electronic filing of new trademark applications.
AGIP Selected to Join INTA Brand Value Project Team
AGIP’s Regional Office Executive Director, Mr. Charles Sha’ban, has recently been selected a member of the special project team to focus on the business value of Brands including Brand Valuation, as directed by the INTA 2018-2021 Strategic Plan. For more IP news, please visit AGIP website at: www.agip.com, or subscribe to our monthly bulletin, by clicking here
Case No. 205/2016 Al-Jebrini Dairies & Foodstuff Co. (Plaintiff) Vs Al-Juneidi Dairy and Food Products Ltd. (Defendant)
By Ayman Ghonemi
TAG-Legal Arab Countries Office
Talal Abu-Ghazaleh Legal (TAG-Legal)
Disclaimer: The following Article is intended for general information purposes only.
The High Court in the West Bank ruled in case No. 205/2016 on behalf of Al-Jebrini Dairies & Foodstuff Co. based on the renown of their trademark.
The facts of the case as claimed were as the following:
Al-Jebrini the owner of the well-known trademark Milky Land noticed that a confusingly similar trademark had been filed in West Bank titled “Milko”.
The owner of Milky filed an opposition against the said trademark however; the Registrar refused the opposition and counterstatement, which led the owner to file the appeal before the High Court.
The Appeal demonstrated that the prior use of the trademark Milky by the owner and the similarity between Milky vs. Milko might cause confusion before the consumers and encourage unfair competition.
According to Article 8 of the Trademark Law No. 33 of 1952, “it is prohibited to register any trademark, which might lead to confusion or encourage unfair competition…. In addition, any trademark which is similar to a prior registered trademark….”, and based on the fact of the similarities between both trademarks (i.e. Milko and Milky) hence, the Registrar’s decision did not comply with the rules of law.
Moreover, as per Article 174 of the Civil and Penal procedural Law No.2 of 2001, a decision issued by a court or an authority which is similar to the same, must contain all… facts, documents, claims of the case, the motifs of the decision based on the aforementioned decision)
Based on the above-mentioned points the court revoked the Registrar’s decision.
Domain Names Dispute Resolution “UDRP”
By Youmna Al-Fuly
TAG-Legal Egypt Office
Talal Abu-Ghazaleh Legal (TAG-Legal)
Disclaimer: The following Article is intended for general information purposes only.
The Uniform Domain Name Dispute Resolution Process was adopted by ICANN in 1999 based on recommendations made by WIPO in the First WIPO Internet Domain Name Process.
The UDRP is limited to clear cases of bad-faith, abusive registration and use of domain names and has proven highly popular among trademark owners.
One of the main purposes of the UDRP is to provide a quick, cheap, and straight forward to adjudicate domain name disputes between trademark holders and bad faith registrants of domain names.
Complaints are filed with the Dispute Resolution service providers accredited by the ICANN (i.e. WIPO, ACDR, FORUM… etc.). The Complainant, who should be the trademark owner, is required to provide evidence of the ownership of the trademark. The Respondent, who is the registrant of the domain name, has to prove a legitimate interest for using the domain name.
The Complainant at the time of filing has the choice of the remedy between three possible remedies, which are Cancellation, transferal or sustaining (in case the complaint is denied) of the domain name.
In order to be successful under the UDRP, the following are the cumulative conditions that must be proven by the complainant, or otherwise the complaint will be denied:
- The domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
To satisfy the first requirement of the UDRP, the complainant must prove that it has acquired rights, including trademark rights, over the disputed name or part of the name that constitute the litigious domain name.
In “Edg0.com” complaint, TAGLegal team based their claims on the fact that the complainant has been in business since 1956 and holder of the domain name registered with the company’s abbreviation, since 1998. The disputed domain name that was registered using the trademark name entirely, with the last letter “O” being replaced with the number “0”, which is not sufficiently distinguished.
In this regard, the panel has ordered in its decision the transferal of the disputed domain name “edg0.com” to the complainant.
- The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
This element, which lists several (non-exclusive) examples of registrant rights or legitimate interests, including using the domain name in connection with a bona fide offering of goods or services, the registrant being commonly known by the disputed domain name, and legitimate non-commercial or fair use.
Hence, where a Complainant makes an initial prima facie case that, the Respondent lacks rights or legitimate interests in a disputed domain name; the burden of proof on this element shift to the Respondent.
In relation to City CENTRE ME’AISEM, the complainant has filed a complaint against the disputed domain name <citycentremeaisem.com> using the complainant’s trademark as well as company name as it appears in the company’s Commercial Register.
In addition, the respondent is not affiliated with the complainant in anyway, the website containing the disputed domain name creates an impression that it relates to the trademark “CITY CENTRE ME’AISEM” which means that he has no rights or legitimate interests in respect of the disputed domain name
Based on the foregoing and the other principles, the Panel ruled the transferal of the disputed domain name to the complainant.
- The domain name has been registered and is being used in bad faith.
Bad faith, is often the easiest to satisfy and can usually be demonstrated with the content of the website which may show that it is merely a “parking domain” for instance, or any other lucrative domain.
Often, companies or individuals who have no legitimate interest in the domain name purposely use trademarks that are not yet registered domains, and seek monetary value from the trademark owners.
In the light of the above, TAGLegal Egypt have succeeded in many cases in this regard, such as; “Zalatimo Brothers for Sweets” concerning the disputed domain name <zalatimoh.com>
It was a clear infringement as the domain name is identical to the complainant trademark, on the basis that the only letter differentiating the main element of the disputed domain name was an additional “h” to the complainant registered trademark and domain name “Zalatimo.com” since June 1998.
In this regard, the Panel ordered the transferal of the disputed domain name to the complainant.
Domain name disputes now form a significant practice area for IP lawyers. However, they rarely merit the expense of litigation. The favored route to resolution of these disputes tends to be the Alternative Dispute Resolution policies for the various domains, the most used of which is the Uniform Domain Name Dispute Resolution Policy (UDRP).
For further details, please contact TAG-Legal Egypt Office at: Egypt@tag-legal.com
TAGLegal Digest 2017