News & insights

2013 in Playback

December 5, 2013

Protecting Intellectual Property (IP) rights in the MENA region is a challenging, labor-intensive process, which requires special consideration and handling. However, with soaring growth, it is not a market that rights holders can afford to ignore. They must be fully aware of the IP framework and the most important developments that unfolded over the past year.

– Ethiopia: The long-awaited regulations implementing the Ethiopian Trademark Law of 2006 were drafted and issued. Significant work is underway to establish the official requirements and steps. The only setback of the new regulations is that all registrations  on record , filed before July 2006, are no longer valid, and owners are required to re-submit new applications by no later than June 24, 2014.

– GCC: The government of Saudi Arabia approved in 2013 the unified GCC Trademark Law. The governments of Qatar and the United Arab Emirates have already announced their approval of the GCCTL a year earlier. The GCCTL will enter into force once the regulations are issued and its purpose is to replace the local trademarks laws of each of the GCC member states thereby creating unified implementing regulations for trademark protection in all states. However, the GCCTL does not unify the Trademark Offices of all GCC states and so a separate application will continue to be filed at each Trademark Office. Nevertheless, having a unified GCCTL allows for a better alignment of trademark protection in the GCC region. The definition of a trademark has been broadened to include sound and smell marks. The GCCTL recognizes famous trademarks that are well-known in the GCC member states and ensures protection thereof even if the marks are not registered. The GCCTL also introduces more stringent punitive measures.

– Kurdish Region of Iraq: The Trademark Office (TMO) of Erbil in the Kurdish region of Iraq adopted the currently applicable schedule of fees of the TMO of Baghdad. As a matter of fact, there are two TMOs currently operating in Iraq: the TMO of Baghdad and another one established only recently in Erbil for the Kurdish region. In principle, the scope of the registration at the TMO of Baghdad covers the whole country including the Kurdish region. Nevertheless, with a TMO for the Kurdish region, trademark owners now have the option of seeking additional local protection in this territory. Owners may either choose to file new applications or to validate the registrations that they already have in Baghdad before the Kurdish TMO. One fundamental premise of having trademarks protected in the Kurdish region (other than providing a central registry in this territory) is that the Kurdish TMO may start placing the marks on watch at the Customs, allowing for an ex-officio border system. The question of which route to consider in the Kurdish region (validation or a new application) mainly depends on the particulars of the trademark portfolio in Iraq. Needless to say, if the marks at the TMO of Baghdad are already registered, it would be logical to assume that validation at the TMO of the Kurdish region is the better option. This process would entail the submission of a certified copy of the Iraqi registration as documentary evidence. However, seeing that more than one step would be involved in the process and both the TMO of Baghdad and the TMO of the Kurdish region are engaged in the implementation, delays are expected. Therefore, in some instances, even if the marks are already registered at the TMO of Baghdad, choosing to file directly at the TMO of the Kurdish region can have its advantages.

– Libya: The Trademark Office officially re-opened in May 2013, nearly two years after its services went interrupted as a result of the civil unrest. All pending applications that were kept on hold are now in the pipeline for examination. It is not clear how frequently official gazettes including trademark publications will be issued moving forward but delays are expected. The most fundamental change which has taken place following the recent events is related to the Libya-Switzerland relations. Specifically, Switzerland has recently established formal diplomatic relations with the Libyan government after a three-year breakdown in relations between the two countries. The implication of this development is that it will now be possible for Swiss applicants to file new applications in Libya.

– Saudi Arabia and Iran: Saudi Arabia and Iran acceded to the Patent Cooperation Treaty (PCT) and were automatically designated for the national entry (as of August 2013 in Saudi Arabia and as of October 4, 2013 in Iran). It is still early to fully evaluate the implications of this step but we do expect an increase on patent filings in both countries starting the first quarter of 2015 driven by the PCT national entries.

Should you have any questions, or require any additional information, please do not hesitate to contact us at info@sabaip.com