Abu-Ghazaleh Intellectual Property Bulletin, January 1997

In Egypt, a committee was formed at the Ministry of Commerce and Supply to draft a unified act for the elements of intellectual property. The new act includes five existing laws, namely copyrights, models, industrial designs, patents of invention and commercial register.

This step will be taken within the framework of the policy of the Government to facilitate commercial registration procedures and protect trademarks and the national industry in particular after the application of the GATT agreement in the field of intellectual property.

The new draft act will be presented to the Council of Ministers and the Government for referral to the People's Council during its current session. It should be an incentive to foreign investors who may wish to invest in Egypt in the field of industry, in particular due to the strict protection the act provides the trademarks.

The act is said to provide for increasing the period of protection for models, designs and trademarks to a renewable period of 10 years. It will also allow the publication of the model or mark to make opposition possible. It also allows third parties access to the model or industrial design to make sure that it is not a counterfeit nor imitation product.

The new act will provide for substantive examination of the model, design or patent to ensure that it is novel and innovative. The act will severely punish infringers.

US Grants EGYPT US$ 2.6 Million for Intellectual Property

A special administration for international trade in the Ministry of Trade and Supply was established last month as a subordinate to the internal trade sector as well as to review the intellectual property law and to prepare its final draft. A US grant of US $ 2.6 million has been allocated to implement the procedure.

International marks will be maintained by a new system which depends on the use of computer and modern apparatus. Likewise, all the international marks which obtained ISO certificate will be entered into computer screens and information centers in Egypt. The procedure will be implemented under a schedule, starting this month, and covers foreign and local trademarks whose owners request their accreditation by the Ministry of Trade and Supply. A committee was formed to make a working paper on supervising works of art and computer offices.

ANNOUNCEMENT In order to ensure prompt services to our clients, AGIP's advance payment policy has been waived for THE UNITED ARAB EMIRATES. This decision follows last month's cancellation of the policy for the KINGDOM OF SAUDI ARABIA. The advance payment policy has thus been eliminated from all our offices.


Legal Angle l The Status of Intellectual Property in SYRIA Part (II) -page 4

PARIS Intellectual Property Seminar A Success! AGIP's Intellectual Property Seminar titled Intellectual Property Protection and the Fight Against Infringement in the Middle East, held in Paris on November 29, 1996 was hailed as a success. Professionals, lawyers, and manufacturers from France and other French speaking countries attended the seminar which was held in collaboration with the DREE (La Direction des Relations Economiques Extérieures). Leading figures spoke at the seminar, including Mr. François Eyssette, representative of the Union des Fabriquant, Mrs. Marie José Semence of DREE, Mr. Christian Ponsot of the French Embassy in Amman, Jordan, and Mr. Talal Abu-Ghazaleh, AGIP Chairman.

In her address, DREE's Marie José Semence affirmed that "defending intellectual property is a priority for all countries whether they be producers or consumers. Infringement represents henceforth about 5% to 6% of world commerce. A legal arsenal has thus been adopted on the national, community and international levels to face this phenomenon that affects the world economy and the security of products."

Mrs. Semence added that all informative and developmental activities taken in this field by either the public or private sectors are to be saluted. She further stated that AGIP's seminar was a good opportunity to measure the efforts undertaken by the Arab World to defend intellectual property rights and to engage in fruitful discussions with French manufacturers.

In his introductory statement, Mr. Ponsot, Economic and Commercial Counsel at the French Embassy in Amman, Jordan, stated that "most of the Arab World has devised and applied intellectual property laws; the fight against infringement has begun and the results have been satisfactory."

Mr. Ponsot also stated that "...intellectual property in the developing countries in general and the Arab World in particular is a major concern, and that the Arab World has recently witnessed a real and important awakening as far as intellectual property is concerned."

As an old and close friend of AGIP's Chairman, Mr. Ponsot recalled that he has, throughout the years, seen AGIP grow as the leader in the Arab World and North Africa and witnessed its major role in the development of intellectual property protection in the Arab world.

Many participants voiced concern over the slow pace in which intellectual property protection was being enforced in the Arab world. While they applauded the signs of progress, there was still the feeling that the laws were not being sufficiently enforced.

Mr. Talal Abu-Ghazaleh explained that the laws were in fact being duly enforced and implemented. But the Arab world is in a period of transition, despite of which great steps towards the protection of intellectual property have been made. The Chairman also added that one reason for the seminar was to find ways to accelerate as well as ensure the thorough implementation of such laws.

Among other speakers, Mr. Mohammad Doofesh, presented yet more concrete examples of the milestones that some of the Arab countries have achieved in the field of intellectual property as he detailed the developments that have and taken place country by country.

At the conclusion of the seminar, Dr. Fouad Boustany, ABLE's Beirut Office Manager, pointed out that the seminar highlighted the importance of monitoring infringements manufactured or sold in the Arab World. AGIP will further develop its Watch Service with technical and legal collaboration from its sister company ABLE (Abu-Ghazaleh Legal Services). He also stated that "it is essential for AGIP to employ, in the coming months, all the necessary efforts to advise the authorities in the Arab World to faster apply intellectual property laws.

NOTICE FROM TUNISIA

Please be advised that Mr. Slim Bin Amor has left AGIP and is therefore no longer reprensenting our firm. Please contact Mr. Amjad Al-Amad, now our Tunisia Office Manager at fax no. (216-1) 355-058.

CORRECTION In the December 96 issue of the TMP Bulletin, we mistakenly identified the location of the upcoming Unified Patent Office of the GCC (Gulf Cooperation Council) countries to be Muscat, Oman. The Patent Office will in fact be set up in Riyadh, Saudi Arabia. The office, to be situated in the GCC General Secretariat, is expected to open its doors for registrations this month.

The unified office for the registration of patents is part of collective measures to tighten intellectual property laws and encourage innovation in the Gulf.

BAHRAIN IP Conference: April 21-22, 1997

The Arab Society for the Protection of Industrial Property (ASPIP) and Abu-Ghazaleh Intellectual Property - AGIP are hosting the Second Arab International Conference on the Protection of Intellectual Property Rights in the Arab Countries on the occasion of Bahrain's joining the Paris and the Berne Conventions. Held in Bahrain, April 21-22, 1997, under the patronage of H. E. Sheikh Khalifa Bin Salman Al-Khalifa, the Prime Minister of the State of Bahrain, the conference aims at providing the latest developments in intellectual property. The conference will also look at ways in which owners of intellectual property can protect their rights, their products and their profits. Experts from Arab and Western countries will be present to discuss state-of-the-art methods used by companies to ensure that they are not affected by piracy. The conference will also address international treaties and licensing agreements that regulate intellectual property rights. Below are the main topics to be addressed at the two-day seminar:

Emergence and Development of Copyright (in Old and New Societies).

Essence of Copyright and the Extent of Protection Afforded to it in Comparative Legislations.

International Regulations for Copyright Protection (International and Regional Agreements)

Extent of Protection Afforded to Copyright and Works covered by it.

Transfer of Copyright Through Different Legal Actions and their Admissibility.

Contracts for Publishing Copyrights and Problems Associated with Them.

Counterfeiting of Works and Established Penalties.

WTO and Copyright Laws in the Arab Countries.

Model of a Draft Law for Copyright Protection.

Patent Laws in Developing Countries, the Latest Developments.

Patentable and Non-Patentable Inventions.

Patents as an Ownership Right and Compulsory Licensing and Expropriation of Patents.


The Termination of a Patent.

The Importance of Patents as a Tool for Technological and Economical Developments in Developing Countries.

Needed Changes in Planning Under WTO and its Implications.

Pre-Existing International Conventions

The TRIPs Agreement.

WIPO and WTO Cooperation Agreement to Implement the TRIPs Agreement.

Field of Patent Technology and Patent Rights.

Conditions for Patentability and Burden of Proof.

A participation form is enclosed for those wishing to attend. Please contact our Regional office in Amman, Jordan, for a complete brochure.

SAUDI ARABIA: Priority Claim Only on Reciprocity Basis The Kingdom of Saudi Arabia is not a member to any international conventions; hence claiming priority is not applicable in this country except when based on the principle of reciprocal treatment between Saudi Arabia and individual countries.

An applicant wishing to claim priority in Saudi Arabia should submit to the Trademark Office a declaration issued by the Trademark Office in the respective country stating that it is prepared to grant reciprocal treament of claiming priority to applications deposited by Saudi Arabian applicants. This declaration document is to be submitted to the Saudi Arabian Trademark Office along with a legalised document supporting the priority claim of the relative trademark registration.

It is noteworthy that a reciprocal treament document needs to be submitted on behalf of the applicants of one country only once. A declaration relating to claiming priority on the basis of reciprocal treatment was submitted recently to the Saudi Arabian Trademark Office by an Austrian applicant. The list of countries to which Saudi Arabia grants reciprocal treatment has thus been increased as follows: the United States of America, France, Germany, Singapore and Austria.

ABLE's News Update l The Status of Intellectual Property in SYRIA PART (II) Administrative and Penal Protection

The Status of Intellectual Property in SYRIA PART (II)

Syria is presently witnessing an increase in its economic activity in investment, trade, and exports, a fact which gives intellectual property rights a special place on the Syrian national agenda. Since 1924, measures have been taken to protect literary, industrial and commercial property. Many legislative Decrees regulating this protection were enacted. Under Legislative Decree No. 152/L. R. dated July 19, 1939, Syria joined the Paris Convention of 1883 and its amendments and the Madrid Convention of 1891 and its amendments. Moreover, Legislative Decree No. 47 dated October 9, 1946 was issued to regulate the commercial and industrial property protection "the Protection Act", currently in force in Syria.

The various legislations in Syria contain many provisions aiming at protecting and enforcing trademarks and suppressing their infringement, so that they constitute a guarantee for both the producer who is the owner of the original mark and the consumer. Such protection has the following forms:

1. Civil Protection 2. Administrative Protection. 3. Penal Protection. 4. International Protection

This issue of the TMP Bulletin features the second and third of the four forms of protection:

ADMINISTRATIVE AND PENAL PROTECTION

Administrative Protection

1. The Minister of Supply & Internal Trade in Syria issued Decision No. 2084 dated 12.8.1996 for enforcing the provisions of the Paris Convention. The rules of these instructions were actually in conformity with its provisions.

Some of the rules contained in the said instructions relating to trademarks are as follows:

a. The mark should possess its own distinctive quality, i.e. the symbol in itself should be a total special expression and it should have an external distinguishing element. Thus, it may be concluded that registration of a mark similar to or imitating another mark already registered is prevented.

b. The registration of a trademark which is identical or similar to an internationally reputed mark is also prevented.

c. The Trademark's Register at the Directorate of Protection should indicate any relevant material regarding its use by a court order.

d. Registration of foreign marks whose period of protection expired is prohibited, except if the applicant proves that the proprietor of such mark has died, or that the legal capacity of the enterprise holding such mark is terminated, and that the heirs of the deceased have no objection against registration, or for other reasons. Such a mark, however, can be registered only when three years have elapsed after its protection expired, and on the basis that the foreign mark in such cases is considered to be the reputed mark.

e. The name of another person may not be comprised in a trademark, except if this person or his heirs approve this.

The Administration can cancel the registration of a mark similar or identical to another mark already registered, provided that this will be made within 60 days as from the date of registration, without the need for a court decision.

2. Importation of goods which bear invalid description or marks or bear marks imitating marks registered in Syria is prohibited. The practice was that the owners of rights in marks registered in Syria can oppose importation of goods which un-rightfully bear their registered marks by submitting an application to the Customs Administration attached to the documents or the certificates confirming the right of opposition. In case the opposition proves to be valid, the Customs Administration may prevent entering the goods which bear the imitating mark. 3. As a general rule, adoption and registration of marks is optional. However, Legislative Decree No. 245 dated 26.5.1952 obligated placing a trademark on some national products. It also subjected the importation of some foreign raw or manufactured products to such requirement. It subjected these mandatory marks to the provisions of the Protection Act No. 47 for 1946, and left decision on which products are subject to such obligation to the competent executive authorities in Syria.

4. Legislative Decree No. 135 dated 30.11.1961 required writing in Arabic letters the trade and industrial marks on the goods which are produced in Syria, provided that foreign letters may be added beside the Arabic letters. It also provided that the Arabic letters should be bigger and more distinct on the mark.

This Decree also required amending the marks registered prior to its enactment in order to be in conformity with its provisions.

Penal Protection

The penal protection of the distinguishing industrial and trade marks depends on two legal reference works:

First: Part (6) of the Law for the Protection of Commercial & Industrial Property Issued in Law Decree No. 47 for 1946.

a. Article (101) of Chapter (2) of this Part provided the following:

"He who indicates in any manner that the trademark is registered, while it is not registered, imitates or uses a deposited mark without the permission of its owner even if he adds words to this mark such as the type, class or composition, etc., which may deceive the buyer, places on his products or on commercial goods a mark pertaining to another, sells or offers for sale, while he is aware of it, a commodity bearing an imitating mark or a mark similar to the original mark for the purpose of deceit, or delivers a commodity other than the one requested from him under a certain mark shall be punished with a fine of Syrian Lira 50 to 500 and imprisonment from three months to three years, or by one of those two penalties.

This law also provided for punishing all cases of making or using similar marks which carry data which may deceive the buyer and steal the trade name.

This law is stringent in the cases of imitating and using imitating marks. Article (105) of this law provided that "in case of repeating the crimes punishable by Articles 1-1, 1-2 and 1-4, the penalty may not be less than the maximum limit fixed in these articles, and not higher than double this maximum limit. The law also provides for imprisonment from two months to five years. The subsequent Articles provide for the measures to establish violations and to institute proceedings.

Second: Chapter (6) of Part (II) of the Penal Law Issued in Legislative Decree No. 148 for 1949.

Article (687) of this Decree defined the commercial and industrial trademarks. Article (688) provided that "Any person, while being aware, imitates a trademark pertaining to another, even if he adds to it other words such as similarity, class, type or quality, or places a mark pertaining to another or an imitating mark on his produce or commodities, or on the sale of a produce bearing a usurped or imitated mark or offers it for sale shall be punished with a fine of Syrian Lira 100-500 and with imprisonment with labour from three months to three years or with one of these penalties if his work may cheat the buyer. This law also punishes in the cases of making and using marks similar to the registered marks with the intent of cheating. This law also punishes for unfair competition and for usurping the trade name and address.

NEXT ISSUE International Protection in SYRIA

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