Eritrea - Trade Mark Protection by Cautionary Notices

     Eritrea Filing Requirements

The Government of Eritrea, which for some years would not accept cautionary notices for publication in the Government-owned newspaper by trade mark proprietors, is now permitting their publication. Unlike the system in neighbouring Ethiopia (from which Eritrea became independent in 1993), the publication is not regulated by any Government Department and does not result in any official recordal or certificate.

Nevertheless, the publication of a cautionary notice may be expected to assist the proprietor, in court proceedings against imitators, under Eritrean laws corresponding to the common-law doctrine of passing-off, or unfair competition under civil law systems.

This new development will be welcome to trade mark owners interested in Eritrea as a vibrant, though small, emerging nation. Spoor & Fisher Jersey are in a position to arrange publication of cautionary notices, on receipt of the usual details of proprietor, mark and goods or services to be claimed.

Egypt - Combined Industrial Property Law

     Egypt Filing Requirements

A new, combined Intellectual Property Law (No 82/2002) was enacted on 3rd June, 2002, and is expected to come into effect, on publication of the Regulations, within the next month. It repeals existing laws on trade marks, patents, copyrights and industrial designs, except the existing patent provisions, relating to chemical products pertaining to foodstuffs, and provisions relating to pharmaceutical products, which will remain in effect until 1st January, 2005.

Features of the new law are:

• Patents:
  New categories of unpatentable inventions include: those which are contrary to national security or harmful; scientific discoveries, theories, mathematical methods, computer programs; medical and veterinary methods of diagnosis and treatment and surgery; living organs, tissues and cells; natural biological materials, DNA and genome; plants and animals, whether or not rare or peculiar; and biological methods for production of plants or animals, apart from those mentioned in the next paragraph.
  
  Patent protection will become available for micro-organisms and for non-biological and micro-biological methods for producing plants and animals and also for inventions in the fields of chemistry relating to foodstuffs, and of pharmaceutical preparations. "Black Box" applications for these may be filed from commencement of the new Act to remain pending until 1st January, 2005.
  
  The term of a patent, including subsisting patents, becomes 20 years.
  
  Application fees will be increased by 1000% and examination fees will become payable.
  
  Universal Novelty will now apply.
  
  Utility Model Protection is now available, the term being 7 years, and also layout-designs (topographies) of integrated circuits, the term being 10 years.
  
  There are new provisions against disclosure of information.

• Trade marks
  The definition of a mark is revised to comply with TRIPS obligations; signs must be visually perceptible.
  
  New provisions are made for protection, in terms of Article 6 bis of the Paris Convention, of marks that are well known in Egypt, whether or not registered there.
  
  The term for filing opposition against an advertised trade mark application is reduced from 3 months to 60 days. N.B. This has already been brought into effect administratively, with effect from the Journal published 23rd September, 2002.
  
  A trade mark may now be assigned apart from the business and/or the goodwill of the business in which it is used. New provisions are made for protection of geographical indications, within the Trade Mark legislation.

• Industrial Designs and Models
  New provisions are made for registration of arrangements of lines and three dimensional shapes, with or without colours, if new and capable of industrial application. The term of protection is 10 years, renewable for a further 5 years.

Ghana - Trade Mark Advertisements

     Ghana Filing Requirements

A severe obstacle to progress with trade mark applications in Ghana, amongst other countries, was the legal necessity that they must be advertised for opposition purposes. For several years, the publication of trade mark applications was delayed, by inter-departmental problems and a backlog of many unadvertised applications had accumulated.

A new scheme has been introduced administratively by the Registrar and the Government Printer. Applicants agents who wish to do so, may pay the advertisement charge to the Government Printer and may prepare proof advertisements on behalf of the Registrar. The sums so payable are additional to the fees paid to the Registrar in the normal way, which are supposed to be inclusive of advertisement costs. However, they are relatively nominal and quite lawful, and it does appear that the result will be the faster publication of the trade mark application concerned. Therefore, we are inclined to recommend that the new scheme be followed.

Spoor & Fisher Jersey are writing to the clients affected, with a more detailed explanation and request for instructions.

Libya

     Libya Filing Requirements

There has been a recent, substantial increase in official fees for trade mark matters in Libya. It is thought this may portend the re-activation of the Trade Marks Office which, for many years, has not processed any trade mark applications, renewals, etc beyond receipt of the documents and issuance of receipts.

We continue monitoring this situation and developments will be reported.

Kenya - The Trade Marks (Amendment) Bill, 2002

     Kenya Filing Requirements

The above Bill was published on 29th July, 2002. The dates of passage through the legislature, and implementation, cannot be predicted at this time. The objects of the amendments are:

To comply with the obligations of Kenya under the TRIPS Agreement, to which the country is a party, by making provision for the protection of well-known trade marks and collective marks.

To provide for processing by the Registrar of Trade Marks and enforcement through the Courts, of International trade mark registrations under the Madrid Agreement and Protocol. Kenya subscribed to those arrangements with effect from 26th June, 1998, but had not until now supplied the necessary, domestic legislation.

To provide for processing by the Registrar and enforcement through the Courts, of trade marks registered at ARIPO (African Regional Property Organisation) pursuant to the Banjul Protocol, and designating Kenya. Kenya has not acceded as yet to that Protocol and it is evidently, and properly, laying the foundation for accession by means of this Bill.

A more detailed review will be published by us shortly.

Mauritius - The Industrial Property Acts, 2002

     Mauritius Filing Requirements

A bundle of Industrial Property Bills were passed by the legislature and received Presidential assent on 8th August, 2002. They are:

• The Protection Against Unfair Practices (Industrial Property Rights) Act, No. 22/2002;
• The Geographical Indications Act, No.23/2002;
• The Layout-Designs (Topographies) of Integrated Circuits Act, No. 24/2002;
• The Patents, Industrial Designs and Trade Marks Act, No. 25/2002.
  

A commentary on the first and last-mentioned Nos. 22 and 25 of 2002, is contained in our Circular No. 356, and can also be found on our website www.spoor.com, where it will be updated with new developments. Queries on the other two laws will be welcomed by Spoor & Fisher Jersey.

Nigeria - Upsurge in Trade Mark Advertisements

     Nigeria Filing Requirements

Like Ghana, mentioned above, but on an even larger scale, the backlog of unpublished trade mark applications had become a major problem. It had been 2 years since the last publication.

However, the authorities are currently making commendable progress towards solving the problem. At time of going to press, 4 large issues of the Journal have been published since 10 June, 2002. More are promised and we are optimistic that they will continue to appear.

We continue to find that a great many "look-a-like" applications are filed in Nigeria. We do not offer a watching service as such, but if we see an application that we think will be of interest to clients, we endeavour to draw it to their attention.

It must be carefully noted that there is a 2 month opposition term and no extensions of time are permitted by law. Formal opposition must be lodged within that term, even if negotiations are in progress, or details of the opponent´s case are awaited. The notice of opposition can be relatively brief and does not require formal evidence or detailed statistics.

Tanganyika - Maintenance Fees: Late Renewal Charges

     Tanzania Filing Requirements

Despite the political union on Federal lines of (mainland) Tanganyika and (Islands) Zanzibar, to form the United Republic of Tanzania, separate systems and laws are maintained in the two territories for industrial property and many other purposes.

In the wake of new Trade and Service Mark Regulations introduced in March 2000, the Registrar has been claiming official fees under two headings, that we do not consider to be lawful in terms of the Regulations, or the Trade and Service Marks Act 1986, to which they are subsidiary -

Late Fees on Renewals

The Regulations and the prescribed forms provide for the event of late renewal of a trade or service mark registration. They state that the Registrar should give notices of the impending renewal date. If the renewal fee has not been paid at the expiry of one month after its due date, the Registrar may remove the mark and must publish notice to that effect in the Journal. The application may then be restored in the Registrar´s discretion, upon payment of extra fees in addition to that for renewal.

In practice, the Registrar has not been giving or publishing those notices but has been requesting payment of late renewal fees nevertheless. Initially, the late charges were claimed immediately the renewal date had passed but currently, the Registrar only claims them if the renewal application is made after expiry of 30 days from the renewal date.

The combined effect of the Regulations, schedule of fees and prescribed forms needs clarification but it does not, in our opinion, justify the late renewal charges as now claimed.

Trade and Service Mark Maintenance Fees

There is a short, vague final item in the current schedule of fees, of Shs. 5,000 for maintenance fees of files. That item is not linked to any prescribed form and there is no reference to maintenance fees anywhere else, in the Act, Regulations or forms. The item does not state on what events or dates the fees are to be paid.

The Registrar has said that the fee accrues annually on each registration with effect from 1st January, 2001. He is not requiring regular, annual payments on all subsisting registrations, which would place an intolerable, administrative burden on the Registry as well as on proprietors and their agents. Instead, the "annual" fees are said to be payable when some transaction affecting a registration is filed, such as a renewal or assignment. Unless the maintenance fees are paid together with the prescribed fee for the transaction, then the Registrar will not act upon it until payment.

As stated above, we consider the maintenance fees are unlawful because they are not based on any provision of the Act or the Regulations.

We are in continuing discussion with the authorities on both of the above issues. Progress will be reported and meanwhile we are not recommending payment of the disputed charges except, perhaps, in an urgent situation where payment may be made under protest.

On the other hand, the Registrar is to be commended on the reported, impending move from publishing accepted trade and service mark applications, etc., in the Official Gazette, to a dedicated Journal under his direct control. In conjunction with this, the system of numbering applications has been changed and the numeration has started afresh with the number 000001.

Detailed information and advice on any of the above topics are available from Spoor & Fisher Jersey