Thursday 2 February 2017

Libya - (no) progress on publication of trade mark applications

News from good friends SMAS that there have been no publications of trade mark applications since the last publication "Publication no.3" on 4 June 2015 with application numbers 20195 to 20465, reported back in June 2016 here.

UAE - seizure of counterfeit car parts in Abu Dhabi in January 2017

A report in Gulf News (here) of a seizure of a large amount of counterfeit car parts in Abu Dhabi in January 2017. The report reads:

"Abu Dhabi: Around 21 truckloads of fake auto spare parts confiscated on a single day by Abu Dhabi officials will be destroyed after completing legal procedures, officials said on Tuesday.

In the largest seizure of fake spare parts in the emirate, Abu Dhabi Department of Economic Development (ADDED) confiscated more than 500,000 pieces worth Dh15 million on Thursday, officials said at a press conference on Tuesday.

The officials raided a large auto spare parts shop and warehouse owned by an individual in Al Ain on Thursday morning and it took around 20 hours to count the number of seized products, a senior official told Gulf News.

“It was a Herculean task to transport them to ADDED’s warehouse in 21 trucks. They will be destroyed after completing the legal procedures,” said Ahmad Tarish Al Qubaisi, director of Commercial Protection Division at ADDED.

The seizure of fake spare parts of several major global vehicle brands has averted potential threat to the safety of motorists and other road users in the UAE, he said.

Fake spare parts like brake pads can cause fatal road accidents, he said. Many other fake parts like filters may cause fire and explosion in vehicles, said the representatives of automobile companies who were present at the press conference.

The officials did not reveal the identity of the accused dealer whose shop in Al Ain was closed down after the seizure of fake products. A fine and other penalties will be imposed on him after completing the investigations. “We are investigating whether he was doing retail sales or wholesale deals. Wholesale deals will attract heavier penalties,” Al Qubaisi said.

The goods were imported from a foreign country. The officials did not reveal the brand names of the fake products. “We don’t want to cause panic among customers,” they said.

Hatem Abdul Ghani, a legal consultant of automobile dealers in the UAE, told Gulf News that the seized goods were the imitations of almost 15 global brands of vehicles. “Around 50 per cent of them were of a single popular brand.”

The dealer was offering the fake goods at one-third of the price of the original products, he said.

Ali Majid Al Mansouri, ADDED chairman, said the department would continue to check commercial fraud and intensify inspection and field visits in coordination with other stakeholders. These commercial crimes negatively affect the economy of Abu Dhabi and the UAE economy in general, he said.

Khalifa Bin Salem Al Mansouri, ADDED acting undersecretary, said the department’s inspectors have wide legal powers and they regularly visit malls and consumer markets to look for any violations.

Mohammad Munif Al Mansouri, acting executive director of the ADDED’s Abu Dhabi Business Centre (ADBC), highlighted the cooperation of trademark owners of spare parts in the seizure of goods from one of the biggest warehouses in Al Ain city.


21 truckloads of goods confiscated
500,000 pieces of fake spare parts
Dh15 million is the value of fake spare parts

Report fake products

Abu Dhabi Department of Economic Development (ADDED) has urged consumers to report fake products to the department by calling the toll-free number 800555.“We advise consumers to always look for original auto spare parts and never compromise your safety by buying cheaper fake products,” the ADDED officials said. They said buying the product from authorised dealers is the only way to ensure its genuineness. It is difficult for a consumer to distinguish between original and fake products. Even authorised dealers often find it hard to do so because counterfeiters have become smarter these days, they said."

GCC Patent Office - summary of practice

Good friends Saba have published a useful summary of the GCC Patent Office in their January 2017 newsletter (available here). They say:

"With increasing official or government fees across the board relating to Intellectual Property procurement, regional offices can provide a more cost effective alternative when available. Patent attorneys and law firms worldwide are aware of the European Patent Office (EPO) and in most cases of the Eurasian Patent Organization (EAPO). Possibly due to the lag in emergence and development of certain regions, other regional patent offices are less known and utilized, namely, the GCC Patent Office (GCCPO). In this report, we will discuss the GCCPO in more details.

History and Statistics

The GCCPO, as its name indicates, is the regional office for patent protection in the six GCC member countries: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates (UAE). The GCCPO is based in Riyadh, Saudi Arabia, and is independent from the Saudi Patent Office, which is also based in the same city.

The GCC Patent Law was introduced in 1992. The first GCC patent application was filed in 1998 and the law was amended in 1999. The related implementing regulations were issued in 2000.

According to the statistics available on the GCCPO website, and as of the end of 2015, approximately 30,000 patent applications have been filed since 1998. Of these, approximately 16,000 applications have been examined and completed and approximately 14,000 are pending, i.e. under formal examination, under substantive examination or other.

As of the end of 2015, 3,992 patents have been granted and issued in various fields. This means that roughly 12,000 applications have been rejected, cancelled or abandoned for various reasons.

Filing a GCC Patent Application


The GCCPO accepts applications from all over the world. Most foreign applications claim a 12 month priority, similar to a Paris Convention filing, albeit the GCCPO is not a member of the Paris Convention as stated in the table in the introduction.

According to the statistics published by the GCCPO, the top 5 filers between the years 2011 and 2015 are, in decreasing order: USA, Saudi Arabia, Switzerland, Netherlands and Germany.

The GCCPO is an electronic filing office. All requests, notifications and documents are managed electronically via the GCCPO portal. The following documents, in addition to the disclosure (i.e. title, abstract, description, claims and figures) are required: a legalized POA; a legalized DOA; and a certified copy of he claimed priorities.

Legalization of the above listed documents may be made up to the Consulate of any of the 6 member states. All the supporting documents may be submitted within 90 days from the filing date. These documents are submitted electronically, as color scans, while the original paper documents have to be maintained in a safe place in case the need arises to re-scan for quality reasons or for actual submission if requested by the patent office.

In addition to these supporting documents, a complete Arabic translation of the disclosure is required, and required to be submitted at the time of filing. The translation has to be provided according to the formatting and requirements of the regulations, i.e. paper size, margin size, etc.

In case the formal requirements are not all met in a timely fashion, the application will be cancelled and a notification to the same will be issued, roughly within a year or so. There is no provision in the regulations for requesting an extension of time at any stage during the prosecution of a GCC patent application.

If all the requirements are met, the application then moves into substantive examination.

Substantive Examination

Substantive examination has to be requested and the related fees settled within 90 days from issuance of the notification to do so by the patent office. This notification is usually issued after 2 years from filing, depending on the backlog. The GCCPO has been accelerating examination lately.

While the GCCPO examines many of the applications, a number of the application is examined by the Chinese Intellectual Property Office (CIPO) and to a lesser extent, the Austrian Patent Office.

Once started, examination is relatively rapid and depending on the reply to the office actions, a decision may be issued within months from the date of last response.

A favorable decision will result in the grant and publication of the application, which then becomes open to opposition for a period of 90 days. If no opposition is filed, then the patent is issued and may be enforced in all 6 GCC countries without the need for validation.

Patent Maintenance

As is the case in practically all patent systems in the world, the patent term for a GCC patent is 20 years, calculated from the filing year. This part sometimes gets confusing as the calculations are not based on the filing date or priority date as one would expect.

Annuities are due in the first quarter of each year following the filing year. In other words, annuities should be settled between January 1 and March 31 of each year, with a grace period until June 30 with a penalty fee. As an example, for an application filed on any day in 2016, the 1st annuity is due between January 1 and march 31 of 2017. Subsequent annuities are due similarly.

An interesting provision with regards to annuities for GCC patent applications is that after the 4th year, and in case the patent has not granted yet, the patentee is exempt from paying the annuities. Upon grant, the back-annuities will then have to be settled in order to proceed with the issuance.

Enforcement

A GCC patent can be asserted and enforced in all 6 GCC countries. In case of a suspected infringement or actual infringement in any one of the 6 countries, legal action may be taken and the GCC patent used to support the plaintiff’s case.

The competent court for taking such an action will be the competent judicial authority in the country where the infringement is taking place. There isn’t a unified court for the GCC patent system, at least not yet.

Currently, there are no specialized courts in the GCC countries. IP litigations are handled in the courts of first instances or civil courts whichever is applicable, with the exception of Saudi Arabia. The courts have appointed sworn experts who will provide an opinion during patent litigation cases.

In Saudi Arabia, the competent authority is the Committee which is composed of three law specialists and two technical experts. Decisions of the Committee shall be issued by majority vote. An appeal against any decision issued by the Committee may be brought before the Board of Grievances.

In closing

Needless to state, and in the interest of not losing the readers, many details relating to the sections above have been omitted. Nevertheless, the main points and ideas have been introduced and presented.

Simply by looking at various statistics related to the region, there is no doubt of the growth this particular area of the Middle East has experienced over the past decade and is expected to maintain a sturdy growth for the coming years. Investments for the development of various industries as well as in innovation can be seen in the two largest economies of the GCC, namely Saudi Arabia and the UAE; but also in Qatar and Oman and to a lesser extent in Bahrain and Kuwait.

The region has drawn the attention of all major global players as attested by the diversified patents and patentees and from where we stand, we have witnessed a continuous growth that is not abetting yet. The region is putting its mark in the international community and is well on its way to becoming a major player in the global economy. Should you have any questions, or require any additional information, please contact us at news@sabaip.com"

Iran - new trade mark filing requirements

Good friends Saba report details of a change in practice in Iranin their January 2017 newsletter (available here). They say:

"Iran recently announced that a legalized extract from the commercial register is required for new trademark applications and oppositions and must be submitted within 60 days from filing date—a simply signed copy is required at the time of filing, however. As for renewal applications, a notarized extract from the commercial register is sufficient.

Should you have any questions, or require any additional information, please contact us at news@sabaip.com"