The implementation of the new act will substitute the current Trademark Act (Cap. 158) of 1887 and the United Kingdom Trademarks Act (Cap. 157) of 1946. The Act will also end the current dual registration system, under the provisions of which an application may either be filed independently or based on a UK registration.

A UK-based application should be filed well before the current legislation is revoked to allow trademark owners to take advantage of the existing provision.

The new legislation includes several new provisions, such as:

• Provision for service marks, defensive marks, series marks, certification marks, and collective marks;
• Adoption of the 10th Edition of the Nice classification;
• Provision for multi-class registration;
• Protection for well-known marks;
• Priority may be claimed under the provisions of the Paris Convention;
• Renewal period revised from 14 to 10 years;
• Provision for removal after three years´ non-use;
• Provision for recordal of licenses;
• Provision for recordal of assignments without goodwill, and
• Compulsory preliminary searches (under review).

For more explanation you can contact info@qumsieh.com.

• Any patent applications is subject for a substantive examination;
• The Commercial Courts are only responsible for conflicts related to industrial property rights;
• New stipulated examination fees of MAD6000 must be paid with respect to pending and newly filed patent applications. As for new applications, the examination fees must be paid along with filing fees;
• The abstract, specifications, drawings, and claims in the original language must accompany the application at the time of filing; however if the priority date is very close then a grace period of one (1) month is allowed, while the French translation can be submitted within three (3) months from the application date;
• Submitting priority documents must be made within four (4) months before the expiration of the first priory date;
• The payment of annuity fees is due after grant;
• The law provisions provides protection of integrated circuits, which was not protected earlier, and
• Trademarks were not affected by these regulations.

For more information, please contact us at morocco@qumsieh.com.

The Administrative Court will consist of two levels, The Administrative Court and The High Administrative Court. The decisions issued by the Administrative Court will be subject to appeal before The High Administrative Court within 30 days from the date of notification.

According to Trademark, Patent, and Design law, the Registrar’s decisions were subject to appeal before The High Court of Justice in one stage only as per the previous practice. However, the most important change in the law is that now said decisions will be subject to appeal in 2 stages instead of one.

Moreover, pending cases before The High Court of Justice will be transferred to The Administrative Court.

Moving forward, the Registrar’s decisions that were issued based on the old law will now be subject to the appeal according to the new law.

Should you have further inquiries, please contact our Jordan office at jordan@qumsieh.com.

This Notice comes in respect to implementing the Iraqi Law No. 21 for the year 1957 and its subsequent modifications instead of the current regulations issued by the Erbil authorities.

The main points for Trademarks are:

• Cancellation of the current official fees issued by Decree No. 5884 by the Finance Minister of Kurdistan Province dated 26 April 2009, and applying the Iraqi-Baghdad Official Fees mentioned in the amended Law No. 21 dated 1957 according to the classes and sub-classes. These new regulations will result in reduction of official fees in general unless several classes are needed;
• The owner has to specify, on the application, the classes and sub-classes of interest instead of listing the goods in general or main headings;
• All applications will be filed in Arabic and Kurdish instead of Arabic and English, and
• The new forms and the subsequent stages will be provided by the Directorate after being stamped.

It is worth mentioning that the new regulations will be applied on fresh applications filed after the instructions date as well as any application not published.

As for Patents and Industrial Designs protection, since there are no Laws of Regulations, the protection obtained in Baghdad will cover and be enforceable in Northern Iraq.

Should you more clarifications, please contact iraq@qumsieh.com.

The IP protection was sought through French registrations in Mahore (Mayotte), however, since there was no IP law in the remaining islands, the protection was obtained by publishing a Cautionary Notice in a daily newspaper to cover the remaining 3 islands.

Now, the Comoros Islands has ratified the Bangul Agreement to become the 17th Member State of the OAPI jurisdiction effective as of 25t May 2013.

Accordingly the admission of the new county has the following impact:

OAPI registration before joining the new country
All OAPI registrations before the accession of The Comoros will cover the original 16 member states with possibility of extension to The Comoros after payment of official fees.

OAPI pending application before joining the new country
All applications pending registration or applications under examination can be extended to cover The Comoros as above.

Renewal of Trademarks at OAPI
All trademarks with renewal due dates that fall after 25 May 2013 (the effective date) shall automatically cover the 17th member state even if the extension application to The Comoros was not applied for.

Extension of OAPI registrations to The Comoros
A trademark owner can apply for the extension of rights from or to The Comoros within twenty months of the effective date. Therefore, applicants can file applications for extension of rights in either manner, before the 25 January 2015. That being said, it is advisable to file an extension request at the earliest to have earliest effective date of protection.

We list below the main aspects of the new law.

Trademark Filing Requirements

• Power of attorney duly legalized at the consulate of Ethiopia and,
• Legalised copy of Commercial Register, Business License, or national trademark registration certificate (the latter used to be the only accepted document when filing a trademark application).

Late filing of the above documents can be submitted within 3 months from the filing date without a payment of penalty fee.

Claiming Priority
Priority now can be claimed within 6 months of filing; a certified copy must be submitted within 3 months from the application date.

Examination
The Trademarks Office (TMO) will carry on a formal as well as substantive examination; subsequently the TMO may issue an examination report before the final rejection of application.

Notice of Publication as an Invitation for Opposition
The TMO shall publish a notice of invitation for opposition in the newspaper having nationwide circulation at the cost of the applicant. Any person can oppose against a published trademark.

Oppositions can be filed within 60 days from the date of advertisement.

Registration Duration
The registration of a trademark shall remain valid for a period of seven years from the date of the filing the application.

Recognition of Well-known Trademarks
Trademarks that meet the criteria of the well-known trademark scheme can be protected under this law in Ethiopia.

Renewal of Registration
Registration of a trademark can be renewed for a consecutive period of seven (7) years. The frequent notice of every two (2) years in a daily newspaper is no longer required.

Late Renewal
Grace period of 6 months is given after expiration incurring a penalty charge of extra 50% of the renewal official fees.

Searches
Time required to complete the search is seven (7) days.

Recordal of Assignment Requirements

• Power of attorney duly legalized up to the consulate of Ethiopia;
• Deed of assignment legalized, and
• Legalised copy of Commercial Register or Business License of the licensee.

Notes:

• Assignments can be filed for pending or registered marks.
• The assignment must be recorded together with the business concerned in the goods in respect of which the said trade mark is respectively registered.
• Co-owned assignments must obtain consent of the other party.

For more information please contact ethiopia@qumsieh.com.

The State Administration for Industry and Commerce of the People’s Republic of China has announced on 14 December 2012 that new items were added to the 10th Edition of International Classification of Goods and Services for the Purposes of the Registration of Marks under Class 35 – group 09.

Those new items are:
Pharmaceutical retail or wholesale services; pharmaceutical preparations retail or wholesale services; sanitary preparations retail or wholesale services; medical supplies retail or wholesale services; veterinary drugs retail or wholesale services; veterinary preparations retail or wholesale services.

This new regulation entered into force on 1 January 2013.

For more information, please contact our China office at china@qumsieh.com.

The main elements of the new law and regulations are:

• Patents: opposition against published patent is now possible before grant.
• PCT applications are now possible since Botswana has acceded to this treaty in 2003.
• Utility Model applications are now possible.
• Industrial Designs: according to the new Act disqualifies the designs on functionality and technical considerations, while the old law refers only to the appearance of a product and not its function.
• International Registration of Industrial Designs under the Hague Agreement is acceptable since Botswana acceded to the Hague Agreement in December 2006.
• Layout Designs of Integrated Circuits are can be protected now.

Amendments to Trademarks:

• Marks, Collective marks, Trade Names and well-known trademarks:
• The new law provides for the protection of collective marks, trade names and recognition of well-known trademarks.
• Lapsed marks can now be reinstated upon giving compelling reasons. e. g lack of knowledge of the trademark law or to unforeseen circumstances. After payment of penalty fees.
• International Registration under Madrid Protocol by designating Botswana as it was acceded to the Madrid Agreement in December 2006.
• Geographical Indications: New provision on the protection of Geographical Indications.

Acts of Unfair Competition:

• The provision has been broadened in as far as what constitutes unfair competition and empowers individuals or associations to seek remedies through the courts of law when an act of unfair competition has been committed.

Traditional Knowledge and Handicrafts:

• The Act introduces new provisions on the protection of traditional knowledge and handicrafts.

Finally, please note that the official fees required for intellectual property registration were increased by 50%.

For more information please contact info@qumsieh.com.

Our Djibouti office is now ready to handle your IP applications (Trademarks, Patents, Industrial Designs, and integrated Circuits).

Accordingly, the new law now extends IP protection to patents, industrial designs, and integrated circuits; this was not available before now; under the old procedure only trademarks could be protected by the interested parties who had to submit a petition before the court.

Essential features of the legislation are as follows below for each heading of IP:

1. Trademarks

1.1 Filing

Required documents:

• Simply signed power of attorney. The name and capacity of the signatory should be indicated.

Notes:

• The power of attorney should be filed with the application as late filing of documents is not allowed.

General information on filing:

• Djibouti follows Multi-Class filing system.
• Classification of goods / services: 10th Edition of Nice Classification.
• Registrable signs: word mark, figurative mark, denominative mark, combined mark, three-dimensional mark, sound mark, olfactory mark, collective mark.
• Time from filing to registration: 5 days.
• Claiming priority under Paris Convention: Yes.
• Protection (registration) duration: 10 years.
• Renewal application can be made within: 6 months before expiry.
• Filing International Registration under Madrid Agreement: No.
• Filing International Registration under Protocol to Madrid Agreement: No.
• Examination type: Substantive examination – it is done immediately upon receiving the application.
• Publication: Djibouti Office (ODPIC) publishes the trademarks in the weekly local newspaper “La Nation”.
• Opposition period: no opposition system.
• Cancellation action: Can be done before the Registrar within 6 months from the date of publication in the local newspaper (after registration) if cancellation initiated after this period, it has to be done before the court.

1.2 Renewal

Required documents:

• Simply signed power of attorney.

Notes:

• The power of attorney should be filed with the application as late filing of documents is not allowed.

General information on renewal:

• Renewal duration: 10 years.
• Grace period to renew after expiration: 6 months restoration with penalty charge.

1.3 Search

Required documents:

• No documents are required.

General information on search:

• Method of conducting the search: Computerized.
• Time required completing the search: Within 24 hours.

1.4 Assignment

Required documents:

• Simply signed power of attorney.
• Deed of assignment notarized.

Notes:

• All documents should be filed with the application as late filing of documents is not allowed.

1.5 Merger

Required documents:

• Simply signed power of attorney.
• Notarized deed of assignment.

Notes:

• All documents should be filed with the application as late filing of documents is not allowed.

General information on merger:

• Time period of the license: Defined by the contract agreement.

1.6 Recordal of Change

Required documents:

• Simply signed power of attorney.
• Certificate of change of applicant name / address notarized.

Notes:

• All documents should be filed with the application as late filing of documents is not allowed.

2. Patents

2.1 Filing

Required documents:

• Power of attorney simply signed stamped and sealed by the applicant and the name and capacity of the signatory should be indicated clearly on the PoA.
• Three copies of specifications, claims and drawings in translation to be provided within 3 months from filing date.
• Certified copy of the priority document in case priority is to be claimed (must be filed within 3 months – non extendable).

Novelty and Disclosure requirements:

• Absolute disclosure required. In case of disclosure in exhibitions or without approval and knowledge of the inventor, grace period of 12 months is given.

General information on filing:

• Protection duration: 20 years.

2.2 Annuities

Payment of annuities:

• 1st annuity (from 1st to 5th year).
• 2nd annuity (from 6th to 10th year).
• 3rd annuity (from 11th to 15th year).
• 4th annuity (from 16th to 20th year).

2.3 Assginment

Required documents:

• Power of attorney simply signed by the applicant stamped and sealed by the applicant, and the name and capacity of the signatory should be indicated clearly on the PoA.
• Certified copy of the deed contract along with certified translation into French.

2.4 Merger

Required documents:

• Power of attorney simply signed by the applicant stamped and sealed by the applicant, and the name and capacity of the signatory should be indicated clearly on the PoA.
• Certified copy of the deed of merger contract along with certified translation into French.

3. Industrial Designs

3.1 Filing

Required documents:

• Power of attorney simply signed stamped and sealed by the applicant and the name and capacity of the signatory should be indicated clearly on the PoA.
• Three sets of the representation of the design.
• Summary description of the design.
• Certified copy of the priority document in case priority is to be claimed (must be filed within 3 months – non extendable).

General information on filing:

• Protection duration: Industrial Designs and models are protected for five years. The term of five years may be extended for two further consecutive periods each of five years. As such, the total protection period is 15 years.

3.2 Renewal

General information on renewal:

• Renewal fees should be paid to maintain the industrial design in force before 6 months of expiration with a grace period of 6 months, but with payment of a fine.

4. Integrated Circuits

4.1 Filing

Required documents:

• Power of attorney simply signed stamped and sealed by the applicant and the name and capacity of the signatory should be indicated clearly on the PoA.
• Three copies of specifications, claims and drawings in translation can be provided within 3 months from filing date.
• Certified copy of the priority document in case priority is to be claimed (must be filed within 3 months – non extendable).

Novelty and Disclosure requirements:

• Absolute disclosure required.

General information on filing:

• Protection duration: 10 years from filing date.

For more information please contact djibouti@qumsieh.com.

However, the Trademark Office has not been operating and is still waiting for the issuance of the implementing regulations, which are expected later this year.

As we have been informed, the requirements for filing new trademark applications in Djibouti will be as follows:

• Simply signed power of attorney.
• Particulars of the mark.
• Applicant name and address.
• If priority is claimed, then certified copy of the priority document.

General information:

• Classification of Goods / Services: International Classification Nice 10th Edition.
• Claiming priority under Paris Convention: No
• Filing international registration under Madrid Agreement: No.
• Filing international registration under protocol to Madrid Agreement: No.
• Time from filing to registration: 3 months.
• Registration duration: 10 years from filing date.
• Renewal duration: 10 years.
• Publication: In the Official Gazette.
• Opposition period: 1 month.

It is worth mentioning, that as per pervious practice, in order to protect a trademark, an application is filed at the court of first instance, and a letter issued to serve as a certificate of ownership, no examination was made.

Moreover, details of the old applications filed under the previous system will be migrated to the new system, and protection will be valid on those applications under the new system until the original expiration date is due.

Our Djibouti office manager attended a meeting with the head of the Trademark Office and discussed various strategies regarding the new system, mainly the high official fees intended to be imposed. According to the new law, it is expected that the official fees will increase by 10 times more than the current fees.

Having said that, we recommend to our clients who have new applications to begin now (under the old system) in order to avoid paying the new rate.

If you have any questions, or need more information, contact our Djibouti office at djibouti@qumsieh.com.