Friday 27 June 2014

South Sudan - registration of trade marks


News from good friends Spoor & Fisher that the Business Registry in the Ministry of Justice in South Sudan is now accepting and processing applications for the registration of trade marks.

The full new article is on their website here.  Good news!

The text of the report reads:

Since the Republic of South Sudan gained full independence from Sudan on 9 July 2011, there have been doubts about the possibility of trade mark registrations and their enforceability. This is due to the absence of a national law and the fact that Sudanese trade mark registrations no longer apply to South Sudan.

In practice, the Business Registry within the Ministry of Justice is accepting and processing applications for the registration of trade marks. In dealing with these, the South Sudan Registry has taken an executive decision to be guided by the Sudan Trade Marks Act of 1969 despite that statute’s official inapplicability to South Sudan.

There is still no actual trade mark law in South Sudan or any indication of its proposed date or content, therefore the system mentioned above has no statutory authority. However, trade mark owners may decide to proceed as above on the pragmatic basis that the process is being conducted by the Ministry of Justice and therefore it is likely the Government will recognise it, to the extent that: 

A certificate issued under the present procedure will be cited against a later application under the same or a subsequent system, so the first to file has the advantage. 

A formal Act, when passed, will ratify what has been done.
The present certificates may be recognised to some extent in any litigation that may be conducted before a new law is enacted.

The documentary requirements include:

a) A power of attorney (notarised);
b) A representation of the mark;
c) The usual details of the applicant and goods/services to be claimed. The current Nice classification is being used and a separate application is required for each class of goods or services;
d) A picture showing how the mark is to be applied to the goods/services claimed and the nature of the goods/services.


A different requirement is now imposed on the Registry for public health reasons, relating to trade marks to be registered for beverages for human consumption. Instead of the picture in (d) above, an application comprising such beverages must be accompanied by a real sample (not just an image) of the bottle, can, etc., that contains the liquid and displays the trade mark. We will be happy to discuss ways and means of providing this material where applicable.

The resulting registration is stated to be for ten years from the filing date. It is hoped that proper law and procedures will be implemented within that term, under which the original filing date will be preserved.

There is currently no sign of corresponding arrangements for patent or other intellectual property rights.

For further information, please speak to your usual Spoor & Fisher contact or contact us at info@spoor.co.uk

Thursday 26 June 2014

Iraq - progress of trade mark applications

News of progress of the examination of trade mark applications at the Trade Mark Office in Iraq.

As reported here, in September 2013 the Trade Mark Office was examining application in the 52,000 range.  News this month that the Trade Mark is now examining applications in the 54,000 range.

This part of the Empty Quarter feels this is painfully slow progress.

Saudi Arabia - change to trade mark filing date

New clarification from the Trade Mark Office in Saudi Arabia that the filing date of trade mark applications is no longer the date on which the application is filed on the electronic filing system but is the date on which the fees are paid. This change took effect sometime in about February or March 2014.

IP infringement is haram

This article on Zawya.com reports that infringement of copyrights, patents, and trade marks is haram according to a fatwa issued by Dr Ali Ahmed Mashael, Grand Mufti at the Department of Islamic Affairs and Charitable Activities in Dubai.

Sunday 1 June 2014

Qatar - legalisation of trade mark priority document now required

News from good friends Saba & Co (here) that the Trade Mark Office in Qatar now requires that the certified copy of the priority document be legalised to the Qatari Embassy before submission to the Trade Mark Office.

While this part of the Empty Quarter acknowledges that it is, of course, completely up to the Trade Mark Office, subject to other applicable laws, whether they require legalisation, the requirement for more legalisation in this legalisation heavy region makes me sad.

Iraq - Power of Attorney requirements

News from AGIP in their April 2014 Bulletin sent out on 8 May 2014 that the Trade Mark Office in Iraq announced on 10 April that applications must be accompanied by a complete legalised Power of Attorney. Further details can be found on their website here.

This part of the Empty Quarter hopes that all countries will sign up to the Hague Convention and no longer require the legalisation of documents while acknowledging that this is unlikely to happen in the short to medium term.

UAE Trade Mark Office changes examination procedure from today

The Trade Mark Office in the United Arab Emirates continues to change the way that it works. From 1 May 2014 a Power of Attorney was required at the time of filing (see post here).

From today, 1 June 2014, there are changes to examination practice. There are two a very useful summaries - one by  friends Clyde & Co here and one by good friends Saba & Co. here.

This part of the Empty Quarter regrets this change in practice which feels like a step backwards to a harsher examination process which feels like it may be more focused on reducing the workload on the Trade Mark Office rather than facilitating the registration of marks for the right goods or services allowing businesses to work in the marketplace. In particular the requirement to follow the specification detail set out in the 10th Edition of the Nice Classification as is now required by Saudi Arabia and Iran significantly limits the items which can be applied for.