Highlights
Sana’a, Yemen Trade Mark Office Resumes Renewals for Certain 'Blacklisted' Countries
According to the Ministerial Decision No. 56, issued on 11 November 2024, certain restrictions that the Trade Mark Office in Sana’a imposed against Swedish and American companies, agencies and branches have eased.
The decision states that the previously restricted trade mark renewals may now be allowed, subject to certain requirements. Notably, renewals might not be allowed where the renewal could “compromise the rights of Yemeni merchants under whose name those trade marks […] are registered”.
Irrespective of the still remaining restrictions, we urge the affected trade mark owners to make enquiry at the earliest opportunity.
By: Theuns Van De Merwe
For any renewal requests, please contact renewals.mena.tm@cwbip.com.
Eurasian Design System to Enter into Force in Turkmenistan
Following the deposit of its instrument of accession to the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention, the Protocol will enter into force in Turkmenistan on 4 January 2025, making Turkmenistan the final Eurasian Patent Organization (EAPO) member state to join the Eurasian industrial design protection system. The deposit follows the signing of the law on accession to the Protocol on 13 July 2024.
The Eurasian design system, operational since 1 June 2021, allows applicants to obtain simultaneous protection in EAPO member states—Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and, effective 4 January 2025, Turkmenistan. Applicants can file a single Eurasian design application, covering up to 100 industrial designs in the same class under the International Classification for Industrial Designs, to secure protection across all member states.
By: Igor Alfiorov
Source: EAPO website
Africa
Ethiopia to Accede to Paris Convention
On 1 October 2024, Ethiopia’s Council of Ministers approved the country’s accession to the Paris Convention for the Protection of Industrial Property. The ratification documents have been sent to the parliament.
Since patent protection in Ethiopia is only available via national filing, this is great news for an applicant wishing to enter the national phase in Ethiopia. However, it will not be possible to enter the national phase after the 12-month period until the documents have been ratified by the parliament and the Ethiopian IP laws have been amended.
The advantage of Ethiopia acceding to the Paris Convention is that this will in turn allow Ethiopia to join the Madrid Protocol.
By: Janet Tomkow-Coetzer
Central Asia
Uzbekistan Accedes to Singapore Treaty and Geneva Act of the Hague Agreement
On 10 October 2024, Uzbekistan deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks with the World Intellectual Property Organization (WIPO). The Treaty will enter into force in Uzbekistan on 10 January 2025. The treaty, adopted in Singapore on 27 March 2006, establishes common, international standards for administrative trademark registration procedures.
On the same date, Uzbekistan also acceded to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs by depositing its instrument of accession with WIPO. The Geneva Act will enter into force in Uzbekistan on 10 January 2025. The accession allows the interested parties to obtain design protection with a single application in all Geneva Act member countries.
By: Djakhangir Aripov
For more information, please contact Djakhangir Aripov at our Uzbekistan office.
Source: WIPO
Eastern Europe
Serbia: New Law on Seed and Propagating Material to Enter into Force Soon
A public discussion on the new draft Law on Seed and Propagating Material of Agricultural and Ornamental Plants was held in Belgrade, Serbia on November 15, 2024. The draft will enter the parliamentary procedure soon and is expected to enter into force in the first half of 2025.
This field is currently regulated by three separate laws - the Law on Seeds, the Law on Seeds and Propagating Material, and the Law on Propagating Material of Fruit Trees, Grapevines, and Hops, along with numerous by-laws and regulations governing plant health.
Serbia’s Ministry of Agriculture, Forestry, and Water Management initiated the drafting of the new law which would unify the existing regulations into a single legal framework aligned with EU standards, thus increasing Serbia’s exports and global competitiveness.
For instance, up until now, the law has not defined the seed and propagating material categories in accordance with the EU standards, which has posed an obstacle to export. To address this issue, the draft now introduces standard and commercial seed categories.
The draft also introduces seed certification through certificates of origin and quality, and the establishment of a unified register for seed and planting material.
The draft establishes stricter control over production, including varietal identity and quality verification, thus promoting the production of high-quality seeds and reducing the use of uncertified, disease-prone seeds.
The draft includes new terms such as “ornamental plants”, "supervised production control of seeds and propagating material," "small producer," and "local market" to enhance regulation.
Under the draft, production and import of unregistered seed varieties is permitted if supported by proper documentation and data on the characteristics of a certain variety or plant species.
Finally, the draft creates the conditions for the application and transfer of new technologies in the seed and propagating material production process.
By: Nada Milovic
Ukrainian Officials Shut Down Production and Sale of Fake Car Parts
The Ukrainian authorities have recently put an end to the distribution of counterfeit car parts that has caused over USD 48,000 worth of damage to the Japanese and German auto companies whose IP rights were being infringed.
The illegal operation was organized in the Kyiv and Vinnytsia regions in central Ukraine. The counterfeit parts were distributed across Ukraine using postal service and online stores.
Following an in-depth investigation, the authorities seized counterfeit car parts, packing materials, computers and other evidence while conducting raids of warehouses, the suspect’s residence and his vehicles.
By: Valentyna Martynenko
Source: Ukrainian National Police website
EU Design Reform Package Published
The EU design reform package, comprising Regulation (EU) 2024/2822 and Directive (EU) 2024/2823, was published in the Official Journal of the European Union on 18 November 2024. The Regulation, amending existing rules on EU designs, enters into force 20 days following the date of publication and becomes applicable four months later. The Directive, harmonizing national design laws, also formally enters into force 20 days after the date of publication, while EU member states will have 36 months from that date to implement it in their national legislations.
The main goal of the reform is to harmonize design regulations across the EU and improve design protection in the era of digital designs and 3D printing. For instance, the definitions of “design” and “product” have been amended to cover designs created through digital tools. It is now clear that design protection extends beyond physical objects to digital designs.
One of the most anticipated changes is the introduction of the "repair clause” under which spare parts used for the repair of complex products, such as those used for car repairs, will no longer enjoy design protection. This applies to "must-match" components, when the appearance of the spare part is dependent on the original part’s design. The introduction of this clause is expected to increase competition in the automotive spare parts market and beyond. It is important to note that consumers must be informed when they are purchasing non-original spare parts. To ease the transition, an eight-year period is provided during which existing component designs will continue to be protected, allowing manufacturers time to adapt to the new rules. This change will have significant implications, particularly for companies in the automotive sector, as it resolves a decade-long debate over the scope of design protection in the automotive aftermarket.
It is also worth mentioning that under the new rules, it will be prohibited to register cultural heritage elements of national interest as EU designs.
References to a Registered Community Design and Unregistered Community Design (RCD/UCD) will be replaced with Registered EU Design and Unregistered EU Design, bringing the terminology in line with the terminology adopted by the EU Trade Mark Regulation.
Finally, certain filing fees have been lowered in order to encourage SMEs and individual designers to register their designs. However, subsequent renewal fees have been increased.
By: Nada Milović
Source: European Council website
Middle East
Kuwait Launches .KW Domain Registration
Kuwait’s Communication and Information Technology Regulatory Authority (CITRA) launched the first phase of the <.kw> country-code top-level domain (ccTLD) registration service on 23 September 2024.
The sunrise period will last for six months and allow government entities, trade mark holders and existing third-level domain name owners (including <.com.kw>, <.net.kw>, and <.org.kw>) to register their domain names under the <.kw> ccTLD.
Following the sunrise period, domain names will be available at premium rates during the landrush period, and, finally, during the third, general availability phase, the public will be able to register domain names at reduced prices.
This phased rollout ensures a structured registration process for businesses and institutions wishing to improve their digital footprint in Kuwait.
By: Sara Omran
Source: Kuwait’s Communication and Information Technology Regulatory Authority website
Link: https://citra.gov.kw/sites/en/Pages/NewsDetails.aspx?NewsID=77
Saudi IPO to Serve as ISA, IPEA
The Saudi Intellectual Property Office has notified the World Intellectual Property Organization (WIPO) that it will begin functioning as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) on 15 December 2024.
This makes the Saudi IPO the 25th international search and examination authority in the world, and only the second in the Arabic-speaking part of the world, alongside the Egyptian Patent Office, which was appointed as an ISA and an IPEA in 2013.
The Saudi IPO was unanimously appointed by all 193 WIPO members during the 55th session of the PCT Assembly held in Geneva from 6 to 14 July 2023.
International patent applicants in WIPO member states will be able to choose the Saudi IPO as one of the search bodies authorized by WIPO to issue a search report. The Saudi IPO has implemented the necessary quality standards, established electronic systems and developed strategic plans to recruit and train examiners to enable them to perform the search and examination process.
By: Mohammad Al-Faouri
Source: WIPO website
Link: https://www.wipo.int/pct/en/newslett/2024/article_0003.html
Libya Trade Mark Office Updates Filing Requirements
The Libyan Trade Mark Office resumed accepting new trade mark applications on 2 September 2024. The office had suspended its operations since November 2022, leaving many rights owners unable to file applications during the suspension. Alongside the resumption of operations, Libya has updated certain trade mark filing requirements.
The following documents must accompany trade mark applications:
- One original PoA covering Libya only, signed by an authorized signatory, executed before a notary, and legalised at the Libyan embassy in the applicant’s country of origin; and
- One original certified company registration document (certificate of incorporation, certificate of good standing and similar) legalised by the Libyan embassy in the applicant’s country of origin and accompanied by an Arabic translation.
Documents legalised abroad will need additional local attestation by the Libyan Ministry of Foreign Affairs and International Collaboration to confirm the authenticity of embassy legalisations.
Both the PoA and the company registration document have a validity period of one year only. As a result, the applicants were required to provide freshly legalised versions of both documents annually to maintain their trade mark registrations. The Libyan Trade Mark Office has now retracted its previous decision mandating the annual submission of PoAs, but the requirement remains in place for the company registration certificates.
Late submission of supporting documents is permitted only if priority is claimed. In such instances, the original legalised documents must be submitted within 40 days after the application filing date.
Ad-hoc descriptions of goods and services are no longer acceptable. Applicants now have the option to either adopt the class heading or specify items of their choice.
By: Sara Omran
Articles
Patents, Myths, and Jigsaw Puzzles: Debunking the Percentage Change Fallacy
One disadvantage of a niche field like patent law is that misinformation amongst the general public is as common as a Form P.4, while a sound understanding of patents is as rare as a compulsory license in South Africa.
To most, the term “patent” is not completely foreign. However, it usually conjures up fleeting memories of the reality TV show “Dragons’ Den” and then, well, not much else. It comes as no surprise, therefore, that patents and the protection they provide are shrouded in myths and misconceptions.
One such misconception lies within the very heart of the patent industry and undermines public confidence in the patent system as it spreads: the idea that avoiding patent infringement is simply a matter of tweaking an invention by some arbitrary percentage. To those holding this belief, patent protection seems pointless considering the high price tag that it carries. Such an attitude fuels their conviction that the patent system is merely a scheme to make scientists-turned-lawyers wealthy, while providing minimal benefits to inventors themselves. When professionals in this industry are faced with this scenario, the instinctive response is usually a defensive one – which is understandable since the time taken to qualify in this profession is comparable to that of a medical specialist or neuroscientist. In an effort to uphold the integrity of the public’s perception of patents, it is tempting to resort to lengthy and complicated explanations, which in most cases, leaves the listener feeling even more bewildered and uneducated than they did before. Even worse, the listener may take this defensive approach as affirmation that their beliefs are correct.
The solution lies in providing explanations in a way that re-establishes the faith in the patent industry. Starting by remembering that the likelihood of inventors having an in-depth knowledge of patent law is slim, this misconception can be exposed for what it is: absurd. No such percentage rule exists in the world of patents. The patent industry does not lie in the black and white realm of simple mathematics; instead, it resides in an abstract, yet colourful world of dictionary definitions floating around trying to bound undefined shapes – incidentally, the world in which patent attorneys find themselves most comfortable. The question of patent infringement cannot be answered by numerical methods but is instead determined by a conceptual piece-by-piece analysis of a patent claim and an allegedly infringing product, with a sharp focus on word choice. This might seem obvious to a patent attorney, but ironically, in this field, “obviousness” is a word loaded with subjective meaning.
The key to understanding patent infringement is intertwined with a patent’s claims. Patent attorneys are intimately familiar with claims, having spent countless hours learning to craft and interpret them. To the layperson, however, a claim is just a bunch of bizarre words strung together into an unusually long sentence.
The experience of a furrowed brow and rise in blood pressure while reviewing some of an inventor’s amendments to claims is fairly common – especially when the inventor needs to be convinced that certain words actually exist; like “adsorption”, “juxtapose”, “bifurcation” and “foraminous”, to name but a few. Unsurprisingly, this is the root of the percentage change fallacy and in order to quell this false belief, inventors should be given a better idea of the intricacies embedded in the art of claim drafting.
It turns out that a simple visual analogy for what a claim is and how infringement is tested is fairly tough to conjure up. Some ideas include a food recipe, a lock and key, overlapping Venn diagrams, or perhaps a ten-dimensional hypervolume, for the brave at heart. Possibly the simplest analogy would be to think of an invention and the claim that defines it, as a jigsaw puzzle made up of specific pieces, where each piece represents an integer of the claim or part of the invention. These individual pieces fit together beautifully to create an image representing the claim and the invention itself. If a product, also thought of as a jigsaw puzzle defined by its own pieces, includes all the necessary pieces to produce the same image as the invention’s puzzle, infringement would take place. Of course, infringement would still take place even if the product has additional pieces – i.e. despite an extra puzzle piece, the image created by the product’s puzzle would still match the invention’s puzzle. On the other hand, if the product’s puzzle does not produce the same image, either because a piece is missing or it has a piece that fits but has a different image on it, there would be no infringement.
However, when attempting to visualise the broadness and scope of a claim and its parts, the jigsaw puzzle analogy falls somewhat short. The analogy requires another layer: pieces that are filled to varying degrees, as illustrated below.
With this added variable, the broadness of an integer can be visualised – the less a piece is filled in, the broader its scope. Naturally, a piece filled in completely would represent an extremely specific integer, narrowing the claim’s scope. The image below illustrates how the same integer could be described in different ways with varying degrees of broadness.
When drafting patent claims, great care is taken to maximise broadness yet ensure that the invention as described remains clear. Applying this to the analogy, drafters attempt to construct pieces which show as little as possible while ensuring that the image produced when the puzzle is completed is easily discernible. The more detail included in the image produced by the puzzle, the narrower the scope of the claim becomes, which would make it easier for others to change their product’s puzzle piece sufficiently to create a new image, or simply, avoid infringement.
That being said, two more aspects guide the construction of an invention’s puzzle pieces: novelty and inventive step. For novelty, the image created by the pieces of the invention’s puzzle must be different from all those that came before. A “Goldilocks” amount of detail must be added to provide the limitation necessary for the claim to be new – not too broad, not too narrow, but just right. As for inventive step, the added detail itself or the final image produced must be impactful on the human mind, somehow. Although the actual invention provides parameters within which to operate, this detail can be just as tricky to define as it is to paint a sunrise. All the variables of the image must be considered: the size, shape, colour, and placement of the sun, the type of landscape, which elements are contained in the landscape, how the sun’s light influences that landscape and its elements – the list can go on forever. This is what makes drafting patent specifications and claims as challenging as it is.
When it comes to infringement, it may seem simple to compare two images with each other – and in some cases, it is indeed simple – but in others, the comparison equates to a game of spot-the-difference between two satellite images of a desert. In practice, this method of detailed analysis and comparison is known as “construing” the claims of a patent, meaning to “interpret (a word or action) in a particular way,” or to “analyse the syntax of (a text, sentence, or word),” according to the Oxford English Dictionary. Therefore, when the claims of a patent are construed, the specific words used, and the meanings attached to them are analysed and interpreted individually and within the context of the invention as a whole.
Ultimately, the problem at the core of the percentage change fallacy is not the concept of patents themselves, but rather a lack of understanding of what patent attorneys spend years perfecting. It is all too easy to blame a patent attorney for an invalidated patent or avoided infringement when the complexities of the profession are reduced to arbitrary metrics or misunderstood criteria. Given that patent attorneys revel in technically defining the abstract, to maintain public faith in the patent industry, inventors should be taught and reminded of the “basics” in a way that is simple enough to ensure that the reality of the profession prevails over any misconceptions. By using analogies like the jigsaw puzzle to aid in conveying the complicated world of patent infringement and claim drafting in a simpler, albeit possibly flawed, manner, perhaps the value of the patent system will be appreciated for the wonderful beast that it is.
By: Keenan-Jay Barnard and Michelle Cazalet
