Our annual “Year in Review” feature sums up the most important Intellectual Property (IP) news and developments that unfolded over the past year in the Middle East, Africa, and their neighboring regions.

This past year highlighted the extraordinarily valiant and continued efforts that the entire world took in fighting the pandemic. With social distancing reduced thanks to the global vaccination campaigns, many Patent and Trademark Offices (PTOs) gradually reopened, while continuing to rely on their online services. These initiatives, among others taken by the authorities concerned, demonstrate a ubiquitous commitment to innovation and the importance of IP to the local economies of the countries in the region.

Perhaps the most notable update concerning trademarks in the Middle East was the recent accession of the United Arab Emirates (UAE) to the Madrid System.

On the patent front, a development that has made a significant impact on the Gulf Cooperation Council (GCC) region and applicants was the publication of the long-awaited Implementing Regulations of the amended GCC Patent Law. The Implementing Regulations further confirm the move from a unitary law to a country designation system and provides the option for national patent offices to elect the GCC Patent Office to act as the filing, examination and/or granting authority. This update follows the suspension of new filings in the GCC Patent Office, the only regional patent office in the MENA.

As a reminder, the amended GCC Patent Law was published in April 2021. In brief, the new law sees amendments or replacements of a few articles, namely Articles 1, 4, 9, 17-21, 25, 28-30 and 32-33. Most importantly though, is the introduction of Article 1 (bis) and its various provisions wherein the GCC Patent Office may accept new patent filings at the request of one of the GCC national offices, as well as its examination. No patent will be granted without the approval of the requesting national office or offices, and in all cases, a GCC patent will only be enforced in the said country or countries only.

And finally, as a testament to our relentless commitment to excellence, Saba IP received numerous nominations and won several awards, chief amongst them was being ranked as highly recommended in Egypt, Jordan, Kuwait, Lebanon, Morocco, Bahrain, Saudi Arabia, and the UAE. The World Trademark Review also ranked and recommended our offices in Egypt, Jordan, Qatar, and Saudi Arabia. Our office in Dubai was chosen as part of a three-tiering system in the “Silver Tier” of IP firms in the UAE.

Trademark Updates:

Lebanon:

Updated Requirements for Registration: The Trademark Office (TMO) in Lebanon announced that an application to register a mark that includes non-Arabic, -English, or -French wording must include a sworn Arabic translation of that wording. The new requirement also applies to compound word marks comprised of two or more distinct words that are represented as one word, in which one or more of the words in the mark appears to be foreign wording that would clearly be perceived as a distinct word(s) within the compound.

Saudi Arabia:

Decrease in Trademark Publication Fees: The Saudi Authority for Intellectual Property (SAIP) announced a decrease in the official publication fees of trademark applications that are filed on or after June 9, 2022. By way of background, trademark applications and recordals are published electronically in the Official Gazette upon acceptance.

UAE

Laying Down the Trademark Law: As a much-welcomed attempt at improving the intellectual property scene in the country, Federal Decree Law No. 36 of 2021 (the Trademark Law) entered into force in the UAE on January 2, 2022. This news follows the accession of the UAE to the Madrid Agreement Concerning the International Registration of Marks. The UAE has also been actively reviewing and updating local legislation, such as Industrial Property Law No. 11 of 2021, which provisions for the regulation and protection of patents, utility models, industrial designs, and trade secrets.

The main features of the new Law that are worth noting are as follows:

  • The definition of a trademark was expanded, which accommodates the possibility of registering non-traditional marks
  • The renewal grace period was extended from three months to six months
  • The Ministry of Economy now presides over all issues pertaining to the cancellation of trademarks. Previously, cancellation actions were exclusively judicial in nature
  • Well-known marks are afforded better protection as the new Law clarifies the criteria for considering a trademark to be famous
  • Although prior use was acknowledged through Court precedents, the new Law has codified the rights of a prior user of a trademark to cancel a mark that was registered within the last five years of filing the cancellation action

Patent Updates:

Egypt & Kuwait:

Electronic Processing of Patents Launched: The Egyptian Patent Office (EGPO) launched its electronic patent services and began receiving and processing patent applications in electronic form as of January 1, 2022, via its online platform. The new platform provides for several new features, such as specific format for submitting English and Arabic specifications, managing office actions, annuities and more.

The Patent Office in Kuwait (KPO) launched an updated version of its e-platform in February 2022. The KPO initially unveiled its online platform in May 2021, which allows receiving and processing applications and renewals in electronic form.

Iraq:

All Aboard the PCT Train: As of April 30, 2022, PCT applications started designating Iraq for national entry phase. To date, the Directorate of Patents and Industrial Designs Central Organization for Standardization and Quality Control (COSQC), which is the relevant patent granting authority in Iraq, has not issued new guidance on PCT-based filings and prosecution.

Saudi Arabia:

SAIP Signs New PPH Agreement with EPO: The SAIP signed a Patent Prosecution Highway (PPH) agreement with the European Patent Office (EPO). By way of background, the SAIP has already signed similar PPH agreements with the United States Patent and Trademark Office (USPTO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and China National Intellectual Property Administration (CNIPA).

Furthermore, pursuant to these agreements, the SAIP has limited the PPH programs in place to specific International Patent Classifications (IPC), which fall under the following four general classes: physics, civil engineering, mechanics, and metals.

UAE:

Updated Requirements for Filing Patent Applications: Some key take aways after the introduction and publication of the new Industrial Property Law (Federal Law No. 11/2021) and Implementing Regulations (Federal Law No. 6/2022) that affect applicants at the time of filing and during prosecution are the following:

  • Supporting documents such as powers of attorney (POAs), assignment documents, and commercial extracts can be notarized only; this means that legalization is no longer required
  • The supporting documents no longer need to be translated into Arabic, unless expressly requested by the PTO
  • Patent applications must be limited to 50 claims, whereas utility models must be limited to 10 claims
  • It is possible to convert a patent application into a utility model application and vice versa
  • The official reexamination fee for minor changes requested by the examiner is expected to be dropped substantially
  • The new law allows for post-grant amendments if the scope of the claims remains within the allowed scope

Industrial design patents will be awarded for a 20-year period instead of the 10-year period previously granted. This update will apply to applications filed as of December 2021. The grace period for the renewal of granted patents was increased to 12 months from the due date. The first 3 months are without surcharge and the remaining 9 months will be subject to a surcharge. Additionally, the grace period for renewals of pending applications was amended to 3 months without surcharge and a surcharge is applied until the registration date of the application.

Copyright Updates:

Saudi Arabia & UAE:

A New Era for Copyright Protection: The SAIP launched the online optional registration service for copyrights of written materials in Saudi Arabia. This comes after the Implementing Regulations of the Copyright Law entered into force in December 2019.

The UAE established the Emirates Reprographic Rights Management Association (ERRA). The founding of the ERRA, a first-of-its-kind association in the region, comes considering the UAE’s vision to promote creativity, protect the copyrights of content creators, and safeguard the rights of authors and publishers through appropriate laws and legislations. By way of background, reprographic or reproduction rights organizations manage copyright protection of content through voluntary private agreements or through legal licensing system created by local law. In the UAE, the ERRA will be monitoring the re-use of print and digital works in educational institutes, copy and print centers, as well as public libraries.

Legislation & Enforcement Updates:

Kenya:

New Customs Measures: The Kenyan Anti-Counterfeiting Authority (ACA) introduced Customs recordal, which is valid for the period of one year or the current registration period of the IPR, whichever is shorter. This update will allow the ACA to adopt an ex-officio border system that will facilitate prompt and proactive action.

OAPI:

New IP Law: The African Organization for Intellectual Property, better known by the French acronym OAPI, announced that the new IP Law concerning trademarks, geographic indications, utility models, and industrial designs entered into force on January 1, 2022.

The amendments have been ratified by the OAPI member states, which are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Ivory Coast, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo, and Comoros.

The main takeaways worth considering are:

  • The definition of a trademark was expanded and now includes sound marks
  • Substantive examination is introduced
  • Oppositions were reduced from six months to three months

Qatar:

Settling Intellectual Property Disputes: The Court of Investment and Commerce (CIC) in Qatar was inaugurated on May 10, 2022. The CIC is now handling all issues pertaining to dispute resolution and enforcement of IP rights.

UAE:

Dubai Virtual Assets Regulator Enters the Metaverse: In a screen-shattering update, the Virtual Assets Regulatory Authority (VARA) in Dubai, UAE, established the world’s first regulator headquarters in the Metaverse. The expansion of VARA’s resources to a borderless sandbox world is part of Dubai’s strategy to create a decentralized regulator model. VARA also aims to facilitate engagement between virtual asset service providers, industry influencers, and global regulators—effectively making Dubai the world’s virtual assets capital.

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