Applicants may now request a one-month extension for specific deadlines, subject to a fee of $14. This applies to the following transactions:

• Late submission of required documents;
• Replying to an Examiner’s office action refusal decision;
• Submitting an opposition against a published trademark application;
• Filing a response to an opposition;
• Filing a response to a cancellation action;
• Submitting evidence in an opposition case, and
• Submitting evidence in a cancellation action case.

The same fee and rules also apply to requests for suspending trademark application procedures due to opposition initiated by third parties.

Applicants may submit additional extension requests as long as they are filed before the extended deadline.

For further information, please contact palestine@qumsieh.com.

The trademark protection period is now ten (10) years instead of 15. This will only affect trademarks registered or renewed after the effective date.

The official fees have increased as a result of this law for all intellectual property transactions.

For more information, please contact lebanon@qumsieh.com.

The main aspects of the new regulation are as follows:

• Introduction of provisions to register and protect sound marks
• Electronic publication of the accepted applications
• Opposition period shortened from 60 days to 30 days
• Adoption of the 11th Edition of Nice Classification
• New increased official fees
• Trademark protection is restricted to the trademark as applied for, i.e., Applications consisting of a black-and-white trademark will only protect the black-and-white version of the mark and will not extend to other coloured versions of the brand. The applied-for mark must be identical to the mark in use

This Decree was published on 17 January 2024 and will go into effect 30 days from the date of publication.

You can find a copy of the regulation here.

For more information, please contact libya@qumsieh.com.

Effective as of 5 November 2023, this update has changed how users can file trademark applications through SAIP’s online filing system. It no longer allows applicants to select class headings. Applicants should select items from the predefined list of goods and services or select the option “all items in the class”.

For more information, please contact saudi-arabia@qumsieh.com.

The Department started accepting trademark applications designating items from the 10th Edition on 19 August 2023.

This new practice came in line with the implementation of the new online trademark filing system. The change in the classification was inevitable to facilitate the development of the Department’s system.

For more information, please contact yemen@qumsieh.com.

The new regulation stipulates that powers of attorney must revoke all prior authorisations. Further, only one local agent can be responsible for all trademarks in the same owner’s name.

The above will become effective on 1 January 2023.

For more information, please contact palestine@qumsieh.com.

Applicants (or their agents) can request a second review of their preliminary examinations in case of a negative decision, copies of documents, original powers of attorney, and many more items. The prescribed fees of IQD50000 (US$35) must be paid for such requests.

For more information, please contact iraq@qumsieh.com.

The new required documents are as follows:

• Power of attorney legalised;
• License agreement document signed by the licensee legalised, and
• Certificate of incorporation or extract from the commercial register of the licensee.

Please note that recording of the license of use agreements is not possible on trademarks registered in classes 1 to 34 in the case where both the licensee and the licensor are in the commercial and not in the industrial sector. In addition, the licensee’s activities must match the services for which the trademark is registered.

For more information, please contact iraq@qumsieh.com.

The implementing regulations have yet to be issued, but the summary below identifies the key features:

Trademark Scope
The Law expanded the scope of protection of trademarks to include 3D marks, sound marks, smell marks, colour marks, and hologram marks. In addition, it expanded the definition of trademarks to cover Geographical Indications (GI).

While GI was addressed in the previous law, the new Law regulated GI, included a definition of the term, and addressed the conflict between GI and trademarks.

The Law set up clear criteria to measure whether a trademark can fall under the well-known trademarks category. It has also introduced the possibility of filing series trademark applications.

It also opened the window for individual applicants to file trademark applications, while previously, only companies were allowed to register trademarks.

Finally, it is no longer mandatory to record trademark licenses at the Trademark Office (TMO) registry. There will be no effect for not recording the same.

Classification
The UAE now follows a multi-class filing system making it possible to file a single trademark application including multiple classes. Previously, each class had to go into a separate application.

Publication
The Law has omitted the requirement of publication in two local newspapers. Only publication in the Official Gazette remains required. This affects new trademark applications, renewals, recordals, and amendment applications.

Examination
The TMO will examine trademark applications within ninety (90) days from the date of the application rather than thirty (30) days as per the previous practice.

Trademark Grievances Committee
The Law changed the internal structure of the Trademark Grievances Committee (the Committee). It is now headed by a specialised judge nominated by the Minister of Justice and two specialised members appointed by the Ministry.

Normally, applicants/agents would have to file any objections to decisions issued by the TMO regarding applications, oppositions, and cancellations before the Committee. Now, after appealing the TMO’s decision, the Committee issues its decision, which can be appealed before the Federal Court of Appeals, opposite to the previous practice where appealing the TMO’s decision was possible before the Court of First Instance.

Trademark Enforcement
Unless a trademark was registered in bad faith, it would become irrevocable after five (5) years from the date of its registration, provided that it was not challenged during this period.

The Law provides a five-year term for a prior user of a trademark to request the cancellation of a registered trademark. It also delegates the Ministry to handle trademark cancellation actions regardless of the reason for the cancellation.

Finally, a significant increase in the penalty fines was set for trademark infringement.

For more information, please contact uae@qumsieh.com.

Practice Changes:
The late filing of a power of attorney (PoA) is now possible. Agents can file a trademark application without initially submitting the PoA at the time of filing. The PoA, however, must be provided within thirty (30) days from the date of filing the application without additional official fees, otherwise, the application will be deemed as lapsed. The same rule applies to trademark renewals and assignments.

Additionally, in the case of filing a trademark application with a priority claim, it is possible to provide the priority document within three (3) months from the filing date without an extra official fee.

New Online Services:
Applicants and agents can conduct the following transactions via the Ministry’s website:

• Cancellation of a trademark mortgage;
• Cancellation of a trademark license agreement;
• The partial or full cancellation of a trademark by the applicant, as per Article 20 of the Trademark Law;
• Submission pf a PoA after filing a trademark application;
• Submission of a priority document after filing a trademark application, and
• Filing a trademark infringement complaint.

For more information, please contact uae@qumsieh.com.