With the advent of the INTA Annual Meeting this month, we address recent trademark updates including official fees, procedural changes, e-filing, packaging requirements.
Increase in Official Fees and Introduction of VAT
Be it directly or indirectly related to the implementation of the Gulf Cooperation Council Trademark Law, we have witnessed throughout 2017 a considerable increase in official fees in the GCC. Furthermore, value added tax was introduced at a rate of 5 percent in Saudi Arabia as of January 2018. Implementation of the VAT in the United Arab Emirates has also been introduced as of January 2018 but VAT is unlikely to be applied to non-GCC residents. We expect the remaining GCC countries, namely Bahrain, Kuwait, Oman, and Qatar, to adopt the VAT by January 1, 2019 at the latest.
Procedural Changes Related to Trademark Registration in Iraq
The Trademark Office in Iraq stipulated a new procedure for the refiling of a trademark application with filing number preceding 72,000 only if the application is determined to be confusingly similar/identical to a newly filed application by a third party pursuant to relative grounds examination. The deadline to refile the application will be seven days from the official notification date. The refiling arrangement will apply only to applications filed before March 2016 (through the old filing system) that have not been published by August 2017.
While on the topic of registration, perhaps the most major procedural change in Iraq has been the TMO’s announcement that trademark applications may be filed in Latin script without having to submit the Arabic transliteration of the mark. This update rescinds the previous registration requirement that demanded trademarks to be filed in Arabic alongside the Latin version, which provided for the protection of the transliteration of a registered mark without having to file a separate application for it.
With the new procedure in place, it becomes advisable to register the transliteration of the mark in Arabic. An advantage of registering the Arabic transliteration of the mark is that it may mitigate problems that would arise when it comes to enforcing trademark rights against third parties using or attempting to register confusingly similar Arabic transliterations. It is worth noting that it is easier to enforce marks in the same language—Arabic, in this case. This is due to the fact that problems can arise when it comes to enforcing trademark rights against third parties using or attempting to register confusingly similar Arabic transliterations. It is always easier to enforce marks in the same language.
This news follows the introduction of a new procedure at the TMO for the renewal of trademarks, and for the recordal of assignment, merger, change of name, as well as change of address, which entails the publication of notices in the Official Gazette. Needless to say, this revised practice comes with an additional official fee for publication.
Going Paperless in the MENA Region
There has been a move towards electronic filing over the past few years in several countries of our region, namely Algeria, Azerbaijan, Iran, Saudi Arabia, Lebanon, Morocco, United Arab Emirates, West Bank, and Yemen, and we are seeing Kuwait getting on board only recently. The Trademark Office in Kuwait began receiving and processing trademark applications in electronic form as of January 2, 2018. New applications will be allotted an e-number by the TMO, which includes the year of filing (example 321/2018). Another development in the Gulf region is the UAE TMO’s issuance of trademark certificates electronically starting from gazette number 181 onwards. It is worth noting that no certificates will be issued for applications that will be accepted and published after November 2017.
With a virtually instantaneous issuance of filing receipts and filing numbers, there is also a dramatic increase in the speed within which applications are examined. In Saudi Arabia, for example, it is now taking around three to six months on average for an application to mature into registration in the absence of an office action or an opposition. Prior to e-filing, the standard procedure ran for almost two years.
New Packaging Regulations for Imported Goods
Lebanon and the United Arab Emirates introduced new packing regulations for imported goods. The authorities concerned at the Ministries of Agriculture and Economy and Trade in Lebanon have made it mandatory to indicate, among other information, the importer’s name and address on imported food packages. The required information must be written in either Arabic, English, or French, as per the requirements listed in Common Decision no. 1/1 of 2018. As for the UAE, the Gulf Cooperation Council Standardization Organization now asks for the inclusion of, among other information, the name of cosmetic and personal care products in Arabic on the packaging of products sold in the country.
Seeing that the use of Arabic is not a matter of choice but is a statutory requirement governed by local regulations, it becomes advisable to register the transliteration in the trademark in Arabic. While the transliteration of the mark is protected, likelihood of confusion is easier to prove when comparing marks in the same language, i.e. Arabic in both Lebanon and the UAE. Having said that, registering trademark in the transliterated Arabic script, in addition to their original Latin format, is advisable considering that Lebanon and the UAE are governed by civil law—that is, the concept of first-to-file carries considerable weight.
Formation of IP Committees in Qatar and Saudi Arabia
Given the unremitting commitment to the protection of intellectual property in the Arabian Gulf region, both Qatar and Saudi Arabia will be establishing IP committees. Qatar ratified Ministerial Decision no. 45 of 2017 on Establishing the Committee for the Preparation of the National Strategy for Intellectual Property and Innovation. The Decision was published in the official gazette on December 31, 2017, and came into force on January 1, 2018. According to Article 2 of the Decision, the Committee will be tasked with drafting a National Strategy for Intellectual Property and Innovation, in cooperation with the World Intellectual Property Organization, governmental and non-governmental agencies, and experts chosen by the Minister of Economy and Commerce.
In Saudi Arabia, the Saudi Council of Ministers approved a proposal for the formation of the Saudi Intellectual Property Commission. The committee will be led by the Ministry of Commerce and Investment and its duties will include handling all IP matters in the country.
Revisiting the Nice Classification
Oman is the most recent country in the Middle East and North Africa to hop on the 11th Edition of the Nice Classification train. The 11th Edition entered into force in February 2018 and replaced the outgoing 10th edition. The adoption of the 11th edition will not affect trademarks already filed and registered in Oman. Upon next renewal, goods and classes affected by this change in formalities should be reclassified accordingly by the Trademark Office. By way of background, the amendments in the 11th edition cover 15 class headings and explanatory notes for seven classes. Furthermore, the list of goods and services was extended by 334 terms.
In the West Bank, however, the 10th Edition of the Nice Classification entered into force on January 1, 2018 and replaced the outgoing eighth edition. The adoption of the 10th edition will not affect trademarks already filed and registered in the West Bank. It is worth noting that upon next renewal, goods and classes affected by this change in formalities should be reclassified accordingly by the TMO.