Emerging IP - October 2024

Highlights

Lebanon IPO Suspends Deadlines

Due to the escalating conflict in Lebanon, the Lebanese IPO has been facing significant operational challenges including staff shortages and frequent server shutdowns, which have caused delays in the processing of applications and requests. As a result, all deadlines have been suspended effective from 23 September 2024 until the situation stabilizes and operations return to normal.

Despite exceptional circumstances, right holders are encouraged to continue sending their instructions as usual. Our team will ensure that new files are docketed and ready for processing as soon as full operations resume.

EUIPO Announces Temporary Extension of Deadlines

 The European Union Intellectual Property Office (EUIPO) has recently announced a temporary extension of deadlines which will ensure that IPR owners and their authorized representatives impacted by the ongoing situation in Lebanon will not be penalized for missed deadlines. This mainly concerns new filings claiming priority from EU applications and affects IP agents with a registered address or residence in Lebanon, representing rights owners in Lebanon.

Key details of the extension:

• All deadlines expiring between 1 October 2024 and 1 December 2024 will be automatically extended
• The extended deadlines will now expire on 2 December 2024
• This decision, in line with Article 101(3) of the European Union Trade Mark Regulation (EUTMR) and Article 58(2) and (4) of the Community Designs Implementing Regulation (CDIR), aims to mitigate any disruption caused by recent operational interruptions

By: Sara Omran

For more information, please contact Sara Omran at our UAE office.

New Version of 12^th Edition of Nice Classification to Enter into Force

The Nice Classification, an international classification of goods and services applied for the registration of trademarks, is regularly reviewed and updated to ensure that it remains relevant and aligned with modern advancements and market reality. With the 2025 version of the 12th Edition of the Nice Classification coming into effect on 1 January 2025, it is important to examine the introduced changes.

Numerous terms have been added, modified, or deleted in nearly all classes to reflect new trends and contemporary language use. It appears that one of the key goals of was to enhance the clarity of descriptions and terminology across class headings and explanatory notes. For instance, Class 9 has been expanded to address the growing significance of digital and virtual products. The term “security tokens being encryption devices” has been deleted and replaced with the term “security token hardware for user authentication” to reflect contemporary usage. The term “nursing pillows” has been deleted from Class 10 and transferred to Class 20. Similarly, Class 29 now includes “cut fruits”, “cut vegetables” and “tofu-based snack food”, while Class 40 has refined its scope by replacing “services of a dental technician” with “custom manufacturing of orthodontic appliances,” reflecting a growing demand for customized solutions.

In addition, there are changes that are structural in nature and involve format updates designed to improve technical consistency without altering the content.

The changes carry significant implications for businesses and legal professionals involved in trademark registration. Each modification, however minor it may seem, requires a careful consideration to ensure that companies and individuals are classifying their goods and services accurately and in accordance with the latest standards.

By: Dora Klančnik

For more information, please contact Dora Klančnik at our Slovenia office.

Central Asia

Uzbekistan Introduces Statutory Compensation Amounts for IPR Infringement

On 12 December 2024, Law no. 959 will enter into force in Uzbekistan bringing about several amendments to local intellectual property legislation.

The most significant novelty is that right holders will be able to demand compensation from infringers violating their IP rights, instead of damages, which are very difficult to prove and obtain via a court ruling. The new law provides that statutory compensation can be sought in the amount of 20 to 1,000 times the Basic Calculation Value (BCV) (USD 590 to USD 29,500).

If there is no agreement between the parties about the compensation amount, it will be decided by the court based on the type of violation and the degree of the infringer’s fault, considering customary business practices. As the criteria for defining the amount (‘type of violation’, ‘degree of fault’ and ‘customary business practices’) are quite vague and will require extra effort from the right holder to prove higher compensation amounts, it is expected that the courts will be inclined to grant lower compensation amounts (i.e. closer to 20 BCV than to 1,000 BCV) in most cases. Right holders can therefore evaluate if seeking compensation instead of damages is efficient in every case, while it can be assumed that it will likely be efficient against small scale infringements.

Another important novelty is that the new law enhances the protection of IP rights on the internet by adding IP rights violations to the list of offences that could lead to the blocking of access to a website, web page or other information resource.

By: Djakhangir Aripov and Durdona Akramova

For more information, please contact Djakhangir Aripov at our Uzbekistan office.

Eastern Europe

EU Introduces Mandatory Electronic Filing for Customs Applications

Following the European Commission’s adoption of Implementing Regulation (EU) 2024/2399 dated 12 September 2024, beginning 3 October 2024 all customs applications for action (AFAs) must be submitted and managed electronically through the IP Enforcement Portal (IPEP) or through a national trader portal where such a portal is in place in the EU Member State.

National trader portals are currently available in Germany, Italy and Spain. For these countries with the dual-portal system, any amendment or extension request must be submitted through the same portal used for the initial application, whether national or IPEP.

National customs authorities will no longer accept paper forms, except in cases of technical failures affecting the IPEP or national portals. If these systems are down for at least 24 hours, applicants may complete and submit the required forms on paper. However, paper submissions must be approved by the competent customs authorities, and the information contained in such filings must be uploaded to the appropriate portal within seven working days from the electronic systems being back online.

Currently, the IPEP does not support digital signatures for filings, but this feature is expected to be implemented next.

By: Maja Žnidarič Plevnik

For more information, please contact Maja Žnidarič Plevnik at our Slovenia office.

Source: EUIPO website, EUR-Lex website

Middle East

Iraq to Adopt 11th Edition of Nice Classification

The Iraqi Trademark Office announced on 22 October 2024 that it would begin using the 11th edition of the Nice Classification of Goods and Services starting January 2025. Iraq is currently using the 7th edition.

This update will align Iraq’s intellectual property framework with international standards, ensuring that trademark registration and management remain consistent with global practices.

According to the announcement, IP owners in Iraq will have the opportunity to reclassify their registered trademarks to conform to the 11th edition.

By: Sara Omran

For more information, please contact Sara Omran at our UAE office.

Saudi Arabia Adopts New Trade Name Law

The new Saudi trade name law was published on 4 October 2024 and will take effect 180 days after publication. The law establishes clearer rules for the registration and protection of trade names, which are critical for distinguishing businesses in the marketplace.

The law permits businesses to register their trade names and prohibits others from using a registered trade name without permission, while it grants the registered owner the right to seek compensation for unauthorized use. The law prohibits the registration of trade names that conflict with famous trademarks or existing trade names, or that may cause confusion, thus enhancing IP rights protection.

Trade names can be composed of the business owner's name, a distinctive name, or a combination of both. They may include Arabic or Arabic transliterated words, letters, and numbers, and even names in foreign languages, provided they comply with the rules outlined by the Saudi Ministry of Commerce. However, names that mislead the public or contradict public order, morality, or existing legal provisions are prohibited.

By: Sara Omran

For more information, please contact Sara Omran at our UAE office.

Yemen Trademark Offices Adopt 12th Edition of Nice Classification, Update Procedures

While Yemen has two IPOs, one operating in Sana’a and the other in Aden, each with its own jurisdiction and procedures, both offices have recently adopted the 12th edition of the Nice Classification of Goods and Services, allowing applicants to classify their trademarks based on the most up-to-date global standards.

Additionally, starting 22 October 2024, both offices raised the number of goods/services covered in a single trademark application from 4 goods/services to 10. As the option to select 10 items instead of 4 upon filing has been made available, applications pending examination can be amended upon request to include up to 10 items instead of the claimed 4.

On 7 October 2024, the Sana’a IPO introduced an online platform where users can access a range of trademark services, including the filing and recordal of amendments, waivers, objections and responses. Deadlines for all procedures handled through the platform are now automatically calculated by the system, providing greater accuracy and reducing administrative burden. The Official Trademark Gazette will now be exclusively available digitally on this platform. 

As brand owners in Yemen are aware by now, the situation in Yemen remains sensitive under the ‘blacklist’ imposed at the office in Sana’a. It is not yet clear if the above developments hint at steps away from current restrictions.

By: Sara Omran

For more information, please contact Sara Omran at our UAE office.

Qatar Joins Global Brand Database

The Ministry of Commerce and Industry of Qatar recently made its trademark database of 147,670 trademark records available to the Global Brand Database, the World Intellectual Property Organization’s (WIPO) trademark search platform.

There are now 83 sources, including national and regional offices, contributing data on more than 66.5 million trademarks to the Global Brand Database.

Global Brand Database allows users to search trademarks registered under the Madrid System, appellations of origin registered under the Lisbon System, state emblems protected under the Paris Convention 6ter, as well as a number of national and regional trademark collections.

By: Sara Omran

For more information, please contact Sara Omran at our UAE office.

Source: WIPO website

Articles

Better Safe than Sorry: Understanding the Importance of Amending Patent Specifications in South Africa

As South Africa is a non-examining country, it is especially important for patentees to ensure that their patent claims are valid. For this reason, among others which will be discussed below, it is recommended that claims are amended to be in line with those of an examined counterpart. Amending the application to conform to South African patent law and practice is equally important and typically includes removing or revising the wording that may be prejudicial to the validity of the patent, adding omnibus claims and ensuring that claims adhere to permissible formats.

Pre-Grant vs Post-Grant Amendments

Post-grant amendments, while allowable, must adhere to a number of requirements outlined in the South African Patents Act 57 of 1978. These amendments must fall entirely within the scope of the claims prior to the amendment, be published in the Patent Journal, and are open to a stringent two-month, third-party opposition period. On the other hand, amendments filed before grant have the benefit of being wider in scope and can include matter disclosed in the description before the amendment. 

Considerations for Expedited Grant

While fast-tracking the application may seem appealing, it may work against the applicant in the long run. Rushing through the application, acceptance and grant processes increases the risk of overlooking claim issues, which may result in potential enforcement challenges and costly amendment litigation down the line.

Delaying Amendments

If a patent proceeds to grant and there is a deliberate, intentional delay in amending claims that are invalid and the patentee knew and deliberately maintained the invalid claims in an unamended form, in other words, if the requirements of a culpable delay are met, a third party may successfully oppose the amendment, rendering the unamended patent invalid.

Amendments During Litigation

In the case of infringement, relief may be sought based on claims that are valid, even though other claims may be invalid. However, the invalid claims must first be amended before infringement proceedings continue. These amendments will be subject to conditions deemed fit and imposed by the Commissioner of Patents. The amendments must then be published for opposition – all of which incurs costs and delays infringement proceedings.

Further, the court can refuse to allow amendment of the claims or, if amendment is allowed, refuse to award damages for any acts of infringement committed before the amendment was made and may take into account the patentee’s conduct in permitting the claims to remain invalid on the Register.

Omnibus Claims

Although omnibus claims are frequently ignored or simply overlooked, they can be invaluable tools should litigation arise. Omnibus claims can be classed as narrow or broad. Narrow omnibus claims, for example “A compound as claimed in claim 1, substantially as herein described and illustrated” are limited in scope and refer to matter disclosed in the description, examples and/or figures as the subject matter of the claim. On the other hand, broad omnibus claims cover variations and embodiments unclaimed at the time of drafting and their inclusion could allow circumvention of the post-grant amendment requirements mentioned above. For instance, a broad omnibus claim such as “A new compound substantially as herein described” allows the scope of the post-grant amendment to extend to any matter disclosed in the specification, rather than only the scope of the granted claims, and thus for the post-grant amendment of the claims to be within the scope of the broadest claim prior to the amendment.

Although South African courts have not decided on the matter of broad omnibus claims, there have been successes with narrow omnibus claims, such as in the case of Frank & Hirsch (Proprietary) Limited v. Rodi & Wienenberger Aktiengesellschaft where a narrow omnibus claim was found to be valid and infringed. As both broad and narrow omnibus claims are allowed and still in use in South Africa, their addition in all patent applications should be seriously considered.

Taking the time to carefully review and amend South African patent applications may seem tedious or redundant as South Africa is a non-examining country. However, proactively amending applications to conform to South African patent law and practice and aligning the claims with those of an examined counterpart may reduce the need for amendments should litigation arise and may even increase protection. It is a simple, smart strategy that has the potential to save applicants a headache in the future – rather be safe than sorry!

By: Janusz Luterek and Stellar Frisby

For more information, please contact Janusz Luterek at our South Africa office.

Taking the Initiative: Anti-Counterfeiting Complaints in Sharjah and Ajman

Unlike Dubai, where the Department of Economic Development (DED) operates an open complaint program allowing for proactive brand protection, the DED in the emirates of Sharjah and Ajman only acts on complaints filed by brand owners. Trademark owners must formally submit complaints when they detect infringement, commercial fraud, or counterfeit activities affecting their brand.

Complaint Filing Process

This process is similar in Sharjah and Ajman, with a few differences. In both emirates, trademark owners or their authorized representatives should submit a complaint to the DED by completing the necessary forms and submitting all the required documents. After submitting the complaint, a USD 550 official fee must be paid, while in Ajman a USD 1,360 deposit security fee must also be paid, to be refunded if the complaint is proven legitimate.

In Sharjah, after the complaint is filed the DED will organize a visit to the facility in question and inspect the site to verify the presence of counterfeit products or any act of infringement. The DED will then issue a report, either recording the seizure of counterfeit goods or documenting any other violations found. The complaint will then be referred to the Committee for Combating Commercial Fraud and Dispute Resolution within the Sharjah DED. This committee will review the complaint and the inspection report, and ultimately issue a decision regarding the violation and any penalties to be imposed.

In Ajman, once the complaint is filed the DED will initiate an investigation into the infringing activities and inspect the evidence, including the validity of the trademark and any counterfeit goods involved. If the complaint is verified, Ajman DED may take further action to suspend the infringing activities and potentially seize counterfeit products. The insurance amount is refunded once the complaint is proven valid.

Required Documents

To file a complaint, the following documents must be submitted:

What Does This Mean for Trademark Owners?

The Sharjah and Ajman DED’s complaints filing process provides trademark owners with a structured avenue to address trademark infringement, but it requires them, or their representatives, to take the initiative. By providing the necessary documentation and evidence, brand owners can ensure that their complaints are investigated thoroughly and enforcement measures are taken. Given the Sharjah and Ajman DED's reactive approach, it is highly recommended that brand owners record their trademarks with customs to ensure their goods are being monitored continuously, providing more comprehensive market protection. Although the Sharjah DED primarily operates on a complaint-based system, the department is also known to conduct occasional proactive raids against stores selling counterfeit goods as part of anti-counterfeit campaigns. Recording trademarks with customs will help supplement the DED’s efforts, especially when proactive raids are conducted.

By: Sara Omran

For more information, please contact Sara Omran at our UAE office.

Company News

CWB Wins Global IP Awards in EMEA and Serbia

We are thrilled to share that CWB won two awards at the 2024 Global IP Awards ceremony held on 17 October 2024 in London, UK:

• Anti-Counterfeiting Firm of the Year in Europe, Middle East and Africa; and
• IP Firm of the Year in Serbia.

These prestigious awards, organized by IAM and World Trademark Review (WTR), recognize the outstanding achievements of law firms in intellectual property work across the globe.

IAM’s and WTR’s full-time journalists and dedicated researchers are uniquely placed to provide in-depth reporting and analysis of developments in the world’s major IP markets. Based on their collective knowledge and insight, and drawing on a number of strategic data points, they recognize firms’ achievements in litigation, prosecution, and transactional work.

For more information, please contact marketing@cwbip.com.

IP Stars Ranks CWB Offices and Practitioners in Ten Jurisdictions

Managing Intellectual Property, a well-respected publisher in the IP industry, recently finished publishing their IP Stars research results for 2024, recognizing eight CWB offices and 15 individuals for outstanding work in ten jurisdictions. These recognitions not only celebrate our offices’ and practitioners’ expertise but also reflect our firm’s collective drive for excellence.

CWB offices were ranked as follows:

Bulgaria – Trade mark – Tier 3

Croatia – Intellectual property – Highly recommended

Egypt – Intellectual property – Recommended

GCC – Intellectual property – Recommended

Romania – Trade mark prosecution –  Tier 2

Romania – Trade mark disputes – Notable firm

Romania – Patent – Tier 3

Serbia – Intellectual property – Tier 1

Slovenia – Intellectual property – Recommended

UAE – Trade mark prosecution –  Tier 2

UAE – Trade mark disputes –  Tier 3

The following CWB practitioners were ranked:

Sara Bakić, Senior Associate, Serbia – Rising Star

Dimitar Batakliev, Head of Office, Bulgaria – Trade Mark Star

Aura Campeanu, Head of Office, Romania – Trade Mark Star

Cameron Crawford, Head of Media and Entertainment, UAE – Notable Practitioner

Firas Jayyusi, Senior Consultant, Jordan – Notable Practitioner

Ivan Kos, Head of Office, Croatia – Trade Mark Star

Janusz Luterek, Head of Africa Patents, South Africa – Patent Star

Mara Marinescu, Associate, Romania – Rising Star

Barbara Mencin, Head of Office, Slovenia – Trade Mark Star

Ana Radoman, Associate, Serbia – Rising Star

Theuns van de Merwe, Head of MENA Trade Marks, UAE – Trade Mark Star

Pieter Venter, Of Counsel Patents, South Africa – Patent Star

Mihajlo Zatezalo, Head of Office, Serbia – Trade Mark Star

Mirjana Živković, Senior Associate, Serbia – Trade Mark Star, Patent Star

Maja Žnidarič Plevnik, Senior Associate, Slovenia – Rising Star

For more information, please visit the CWB profile on ipstars.com.  

Jelena Šribar Joins CWB Executive Committee as First Group People & Culture Director

We are happy to announce that we have strengthened our leadership team through the appointment of our first Group People & Culture Director Jelena Šribar. Jelena will lead people initiatives across the firm working closely with the firm’s leadership to align people practices with business objectives and shape the firm’s culture to reflect its values and mission.

Jelena has a successful track record of leading people functions across several multinational companies in the FMCG, banking and retail sectors. She has driven business growth by initiating projects in M&A, change management, culture integration, organisational design, employee experience, and employee rewards. She is a recipient of several human resources awards for employee engagement, learning and development, talent management, and innovation in HR.

Group CEO Halim Shehadeh commented: “To truly become one firm, we all need to unite behind a common set of principles and objectives. More importantly, we need to have a unified culture. We are lucky enough to have three cultures to dissect and choose the qualities from each that we want to maintain in the culture we are striving to instil. A unified culture is not something that just occurs, it requires a lot of hard work to make it happen, and whom better to lead that charge than our very own Jelena Šribar, who, along with the rest of my team, will help steer CWB to realise its vision of ‘transforming how IP services are delivered and consumed’. I am thrilled to have Jelena on my team and I look forward to seeing her implement all those great ideas she’s been thinking about since she joined CWB last year.”

Jelena Šribar added: “A strong focus on people and culture is critical for a successful post-merger integration. As we continue our growth journey, we want to build a strong company culture, unify all systems and policies and attract and retain the best talent in the industry. What an amazing opportunity to provide HR support to all our people, grow, have fun together and occasionally challenge each other.”

CWB’s Executive Committee is chaired by the Group CEO and its members also include the firm’s Regional Managing Partners, the Chief Operating Officer, Chief Financial Officer, Chief Technology Officer, and Chief Commercial Officer.