Search

Region
Jurisdiction
Firm
Author
Date
to
Keywords
Search

Emerging IP - June 2025

CWB UAE


 

HIGHLIGHTS

 

Egypt: Official Patent Examination Fees Increase, Payment Deadline Shortened

 

The Egyptian Intellectual Property Authority (EGIPA) has issued Decree No. 26, published in the Official Gazette No. 132 of 17 June 2025, announcing an increase in official patent examination fees, which have risen to twice the original amount, from 25,000 EGP to 50,000 EGP (approximately 430 EUR to 860 EUR). The Decree took effect on 18 June 2025. 

 

According to Article 3 of the Decree, additional changes have been introduced regarding examination fee payment deadlines – examination fees and any expert fees are to be settled within three months from the notification date. Under the previous rules, this time frame was six months, counted from the patent application filling date. 

 

Expert fees are to be applied only if the EGIPA decides to revert to an expert report, as is sometimes the case during appeal proceedings before the appeal committee.

 

If the three-month deadline is missed, the patent application will be suspended until the required fees are paid, including additional missed deadline extension fees. An extension of time for fee payment and the related surcharges are now applied for the first time in Egypt.

 

Additional administrative instructions will be issued shortly to clarify all new measures and define implementation steps related to new deadlines, deadline extensions and suspension penalties. 

   

By: Mohamed Allam 

 

 

 

Libya Clarifies Re-Registration Rules Following Trade Mark Expiry and Cancellation

 

On 1 June 2025, the Libyan Trade Mark Office (TMO) issued Circular No. 2/2025 to clarify a procedural distinction between the expiry and cancellation of a trade mark registration, that has long caused uncertainty among trade mark practitioners.

 

According to the circular, cancellation refers to a formal administrative decision by the TMO to remove a registration from the official register following the lapse of the six-month grace period after the mark’s expiry, during which time the owner may still renew it. In contrast, expiry denotes the natural conclusion of the mark’s protection at the end of its registration period, while it remains on the register for a time without immediate removal.

 

When a trade mark expires, its owner may only initiate re-registration after the TMO has issued a formal cancellation decision and published it in the Official Gazette.

 

The former owner has the exclusive right to re-register a cancelled trademark for three years after its publication, after which third parties may apply.

 

This clarification establishes a structured approach to post-expiry re-registration, reinforcing the Libyan TMO’s commitment to transparency and prior rights protection.

 

By: Sara Omran

 

 

 

REGIONAL UPDATES

 

Africa

 

Mauritius Acceeds to Harare Protocol

 

On 27 May 2025, Mauritius deposited its instrument of accession to the Harare Protocol on Patents, Utility Models, and Industrial Designs with the ARIPO Director General. Mauritius is the 21st ARIPO member state to become party to the Harare Protocol.

 

As of 27 August 2025, Mauritius may be designated in ARIPO applications for patents, utility models, and industrial designs. For PCT applicants, this means that Mauritius can be included in a regional phase ARIPO application, provided the international filing date is on or after that date.

 

Following Mauritius' 2023 accession to the Patent Cooperation Treaty (PCT), this development further strengthens IP protection across Africa while streamlining broader regional coverage for applicants.

 

By: Janet Tomkow-Coetzer

 

 

Central Asia

 

Counterfeit Goods Worth EUR 257,000 Seized in Kazakhstan in 2024

 

According to a recent report, during 2024 Kazakhstan’s Ministry of Justice conducted 338 inspections aimed at protecting intellectual property rights and identified a total of 297 trade mark infringements.

 

About 400,000 counterfeit products worth around EUR 257,700 were seized and legal proceedings have been initiated in 283 trade mark infringement cases. Twelve court cases remain pending, with fines amounting to EUR 38,000.

 

In February 2025, 200 counterfeit packages including 98 “Zaychik Milk Wafers” and 102 Ness Wafers, closely resembling Nestlé products, were seized by the Ministry’s officials in the cities of Shymkent and Almaty. The products were taken to the Department of Justice’s warehouse and the case was submitted to the court for review.

 

By: Aliya Madiyarova

 

 

Kazakhstan Recognizes EAPO as ISA Under PCT

 

On 5 May 2025, Kazakhstan recognized the Eurasian Patent Organization (EAPO) as an International Searching Authority (ISA) under the Patent Cooperation Treaty (PCT). This recognition allows applicants from Kazakhstan to choose the EAPO as their ISA for conducting international patent searches within the PCT framework.

 

As an ISA, the EAPO enables cost-effective and efficient international searches for those conducting patent procedures in Russian. The EAPO has been functioning as both an ISA and an International Preliminary Examining Authority (IPEA) under the PCT since 1 July 2022. The patent offices of eight EAPO member states have recognized the EAPO as a competent ISA and IPEA.

By: Aliya Madiyarova

 

Eastern Europe

 

Bosnian IPO to Implement Practice Document on Distinctiveness of 3D Trade Marks

 

The Institute for Intellectual Property of Bosnia and Herzegovina and the European Union Intellectual Property Office (EUIPO) have recently jointly developed a Practice Document on the distinctiveness of three-dimensional trade marks consisting of verbal and/or figurative elements but no distinctive shape.

 

The Practice Document (CP9), developed by EUIPO and the European Union Intellectual Property Network (EUIPN), defines clear criteria for assessing three-dimensional trademarks and stems from extensive collaboration between national offices and EUIPN institutions, aiming to harmonize global IP practices and assist EU membership candidates in aligning their regulations through EUIPN and the “Team Europe” initiative, both involved in strengthening IP rights.

 

The Practice Document, which summarizes key messages and principles, is available in Bosnian, Croatian, Serbian, and English.

 

Other related documents published by the Institute are:

 

  • CP3 – Distinctiveness of figurative trade marks containing descriptive or non-distinctive words
  • CP4 – Protection scope for black-and-white trademarks
  • CP5 – Likelihood of confusion (impact of non-distinctive/weak elements)
  • CP8 – Use of trade marks when their form differs from the registered one

 

The exact timeline for the implementation of the Practice Document is yet to be determined.

 

By: Berina Prolaz

 

 

Hungary IPO Issues 2024 Annual Report

 

The Hungarian IPO has recently released its annual report for 2024, highlighting a notable rise in IP activity over the past five years – national patent applications rose by 34%, utility model applications by 43%, design applications by 12%, and trade mark applications by 4%.

 

At the end of 2024, the number of valid national patents stood at 907, reflecting a slight 0.4% decline from the previous year. However, the number of patents validated in Hungary rose by 3%, reaching 35,043. In the trade mark sector, the number of valid national trade marks totaled 50,242, reflecting a 1% increase from the previous year, while international trade mark filings decreased by 4%, closing the year at 66,984.

 

Despite a 7% decline in national design registrations, other IP rights showed positive trends. Registered national utility models saw a modest 1% rise, plant variety registrations grew by 10%, and Supplementary Protection Certificates (SPCs) recorded a notable 23% increase.

 

The report also highlighted that 72 national trade marks have been in existence for over a century.

 

By: Erika Farkas

 

 

Key IP Developments in Slovenia in 2024

 

In June 2024, Slovenia adopted its National IP Strategy 2030, which has already entered into effect, while an official Action Plan is expected to be adopted soon.

 

Supported by EUIPO, EPO, and WIPO, the Slovenian Intellectual Property Office (SIPO) hosted a 16-nation meeting on collective rights and an international conference on geographical indications in September and November 2024 respectively, also signing agreements with IP offices in Portugal, Latvia, Lithuania, Denmark, and Austria.

 

Compared to 2023, Slovenia’s 2024 IP activity showed mixed trends: Slovenia’s trade mark filings declined by 5% nationally and 4% internationally, while EU trade mark applications rose by 14%. Design filings increased by 12% nationally and 15% via the Hague Agreement, while registered EU designs fell by 33%.

 

Patent filings showed growth, with national applications up by 5%, supplementary protection certificates surging by 48%, and PCT filings via SIPO rising by 32%, while European patents entering Slovenia’s register dropped by 21%.

 

At the EPO, Slovenia marked its third straight year of growth in patent filings with a 2% rise, surpassing the EU average decline of 0.4%.

 

Leading fields included electrical machinery, transport, pharmaceuticals, organic fine chemistry, and chemical engineering. With 156 filings, Slovenia ranked 34th at EPO, up from 37th place in 2023, and one-third of its patent applications featured at least one woman inventor.

 

By: Maja Žnidarič Plevnik

 

 

Ukraine Officials Shut Down Production of Fake Perfumes

 

Ukraine’s Economic Security Bureau officials have recently put an end to the production and distribution of counterfeit perfumes and cosmetics in the Kharkiv, Kyiv, and Poltava regions.

 

The authorities raided the production facilities of the persons involved and seized more than 10,000 counterfeit products, nearly 30 tons of raw materials, as well as various chemical ingredients and packaging components, with a total estimated value of USD 400,000.

 

The fake goods bearing well-known brand names were sold through online platforms and retails stores, with orders being delivered through postal services.

 

Test purchases and subsequent laboratory analyses confirmed that the seized items were indeed counterfeit and of poor quality.

 

A criminal investigation is ongoing.

 

By: Oleh Karpenko

 

 

Iconic 3D LEGO Minifigure Trade Mark Recognized as Well-Known in Ukraine

 

On 8 October 2024, the Ukrainian IPO’s Appeal Board granted well-known status to the 3D LEGO minifigure trade mark, recognizing LEGO Juris A/S's strong presence in Ukraine.

 

Founded in Kyiv in 2012, UkrBricks joined the LEGO Ambassador Network, while Ukraine’s Ministry of Education partnered with LEGO in 2010 and 2021 to bring LEGO Education kits into classrooms.

 

LEGO’s 2021 release of a special “Home Alone” set, created by Ukrainian designer Oleksiy Storozhuk, became the largest in LEGO’s history (3,955 pieces).

 

Currently, 181 trade marks enjoy a well-known status in Ukraine. Several factors contribute to this status, including the extent and duration of use, public awareness, market value, and enforcement history.

 

More details are available in the Special Information System (SIS), a search engine developed by the Ukrainian National Office for Intellectual Property and Innovation (UANIPIO) that provides access to information on all types of industrial property rights.

 

By: Oleh Karpenko

 

 

Middle East

 

Bahrain and EPO Strengthen Patent Cooperation

 

Bahrain’s Ministry of Industry and Commerce (MOIC) and the European Patent Office (EPO) have partnered to improve patent processing efficiency, reflecting a broader shift toward harmonizing international IP standards and reducing administrative burdens for applicants.

 

The bilateral Memorandum of Understanding (MoU), effective from 12 January 2025 to the end of 2027, aims to enhance patent examination quality and consistency through the cooperation in training, information exchange, and operational alignment.

 

A key part of the agreement is the Patent Prosecution Highway (PPH) pilot, launched on 1 March 2025 for a two-year period. It enables applicants filing with MOIC or EPO to request expedited examination if a corresponding application has a positive patentability ruling from the partner office, streamlining search and examination to avoid duplication of work and reduce processing time.

 

Through this agreement, Bahrain joined a global network of jurisdictions collaborating with the EPO, including Europe, the US, Japan, South Korea, China, and the national IPOs in Australia, Brazil, Canada, Mexico, Singapore, and Saudi Arabia.

 

By: Sara Omran

 

 

Iraq Strengthens Customs Enforcement

 

Iraq’s General Customs Authority (GCA) has recently launched several initiatives to modernize customs procedures and combat counterfeit goods—an encouraging step for IP rights holders.

 

Key measures include advanced electronic systems aimed at streamlining customs processes and enhancing surveillance of goods, with a strong focus on detecting and intercepting counterfeit products.

 

As Iraq strengthens its enforcement measures and aligns more closely with international IP protection standards, rights holders are encouraged to review their customs recordals to maintain compliance and take full advantage of the improved framework.

 

By: Sara Omran

 

 

 

ARTICLE

 

When Local Rights Prevail: The Burger King vs. Hungry Jack’s Case and the Imperative of Global Trade Mark Strategy


International expansion offers global brands immense opportunities, but it also brings legal complexities that, if overlooked, can enable local businesses to assert their rights with lasting consequences. A striking example is the long-standing dispute between Burger King and Hungry Jack’s in Australia, which highlights the strength of local trade mark rights and the critical need for pre-entry due diligence.

 

Background: A Name Already Taken

 

When Burger King planned its entry into Australia in 1971, it discovered that the trade mark “Burger King” had already been registered by a small local business. Rather than securing rights through acquisition, the company launched its Australian operations under the name Hungry Jack’s, a substitute inspired by the Pillsbury pancake mixPillsbury being Burger King’s parent company at the time.

 

The franchise agreement allowed Hungry Jack’s to operate using Burger King’s core menu and systems, but under the local name. Over time, Hungry Jack’s built local brand equity and developed an independent market identity.

 

Legal Conflict and Local Victory

 

Years later, Burger King moved to reclaim its original name and terminate the agreement, which was reportedly unsuccessful. Hungry Jack’s counterclaimed for breach of contract, arguing that Burger King acted in bad faith by trying to undermine the franchise.

 

The Australian courts sided with Hungry Jack’s, affirming the franchisee’s rights and awarding substantial damages. The decision reinforced national IP rights against global reputation.

 

Key Take-Aways for Global Brands:

 

  • Local trade mark rights might take precedence in certain circumstances - registration in one jurisdiction does not automatically grant rights in another. In Australia, a prior local registration prevented Burger King from using its name entirely.

 

  • A global strategy demands local action. Each country has its own IP laws and failing to secure trade mark rights in advance can leave brands vulnerable or even excluded.

 

  • Contracts can be binding, and franchise or licensing agreements should be drafted with local considerations in mind. For example, in contractual disputes in the Middle East, fairness and good faith are often important considerations.

 

  • Local businesses might hold senior rights.  


The Burger King vs. Hungry Jack’s dispute serves as a cautionary tale: local business interests should be considered in IP planning.

 

By: Sara Omran

 

 

CWB



About the Firm



Related Newsletters