Abu-Ghazaleh Intellectual Property Bulletin, February 1997

Under the patronage of H. E. Sheikh Khalifa Bin Salman Al-Khalifa the Prime Minister of the State of Bahrain

Abu-Ghazaleh Intellectual Property AGIP & ASPIP Arab Society for the Protection of Industrial Property are hosting the Second Arab International Conference on the Protection of Intellectual Property Rights in the Arab Countries on April 21-22, 1997

Please contact our Regional Office in Amman, Jordan for more information or for a free brochure

GCC: Call for the Establishment of a Centre for the Registration of Pharmaceuticals, Patents and Trademarks

Sheikh Saud Ben Saqer Al-Qasmi, Chairman of Gulf Pharmaceutical Industries Company "Gulphar," appealed to the Ministers of Health in the Arab Gulf Countries to establish a Gulf Centre for the registration of medicines, patents and trademarks in the countries of the Gulf Cooperation Council (G. C. C.). In a press conference last month, Sheikh Saud confirmed that the obstacle facing registration of medicines impedes the advancement of such industry, especially when medicine is not marketable without being registered with the ministries of health.

WEST BANK: SERVICE MARKS NOW REGISTRABLE For more information, or for charges, please contact our West Bank Office or our Regional Office in Amman.

MOROCCO: Fee Increase

The Moroccan government has decided to increase official fees in respect of all intellectual property matters. The decision took effect December 5, 1996.

The decision, No. 2.96.606 of November 20, 1996 was published by the Ministry of Finance & Foreign Investment and the Ministry of Commerce and Industry in the Official Gazette No 4431 dated December 5, 1996.

The fees payable to the Patent & Trademark Office in Tangier remain unchanged.

In This Issue l BAHRAIN IP Conference -page 1 l GCC: Call for the Establishment of a Centre for the Registration of Pharmaceuticals, Patents, and Trademarks -page 1 l WEST BANK : Service Marks -page 1 l MOROCCO : Fee Increase -page 1 l ALGERIA Amends Draft Copyright Law -page 2

Legal Angle l The Status of Intellectual Property in SYRIA Part (III) -page 4 l Legal Recourse Against Trademark Infringement in Kuwait -page 5 l EGYPT Rejects cancellation of an American Trademark -page 5

ALGERIA Amends Draft Copyright Law Algeria's draft copyright law has been amended by a recent legislative instrument that harmonizes with both telecommunication technology and international conventions including the Berne Convention.

The new draft includes several additions on the nature of the works of databases. The amendments cover local works like original works in the fields of dressmaking and fashion and enact the exclusive right principle to the author by granting him/her wide competence as per the current international practice and the Berne Convention, which is regarded as the basic reference for copyright protection in the world.

Algeria has prepared its accession papers to the Berne Convention because the new legislation has become in line with the provisions of the convention. The new amendments classified the works which fall in the public domain and folkloric works whose copyrights are handled by the National Copyright Office.

As to the protection period, the draft law extends the protection period from 25 years after the death of the author to 50 years. This extension affects all types of works whether they have individual, joint or collective authorship.

The new legislation grants protection to photographic works for 50 years. Copyrights are excercisable whether or not the works were made through conventional or technological methods.

The Head of the Copyright Office, Mr. Izz Al-Deen Katib, declared that the draft amendment granted the right to lease out works of art, which is a new right that was not recognized in the Berne Convention and was mentioned for the first time in the Morocco Convention. The new law expanded the scope of the publication right in such a way as not to be limited to manuscripts but was extended to audio and audiovisual works. The law therefore governs the relationship between the publisher and author and enumerates the obligations of both parties.

The new draft law is characterized, Mr. Katib goes on, by the principle of the protection of neighbouring rights, being the rights of performers, producers of phonograms and broadcasting organizations. Also, it governs the collective administration of authors' rights and neighbouring rights and places either civil or criminal penalties for infringement upon those rights. On being asked about the importance of considering international conventions in the new project, Mr. Katib replied that the provisions of the new law take into consideration all the international copyright agreements which were originally signed in 1752 as well as the Berne Convention for the Protection of Literary and Artistic Works.

The Head of the Copyright Office added that since the new draft law derived provisions from those conventions, it recognizes equal rights for both Algerian and non-Algerian authors.

The amendments provide that the protection of copyright is not subject to any formality and that the work is protected by itself at creation and clearance for circulation by the National Copyright Office.

Mr. Katib said that the new legislation recognizes the right of the artist to a remuneration for the determination of his artistic performance and his/her right to receive a remuneration for the performance that is fixed on audio or audiovisual form.

Mr. Katib added that control of the material determination of the performance will, from now on, be taken over by the National Office for Copyright and Neighbouring Rights as stipulated by the law.

As for the moral rights of performers, the new legislation leaves those rights to the contractual relationships that are entered into between the performers and the producers of phonograms and audiovisual works of art.

The provisions of the new law take into consideration all the international copyright agreements which were originally signed in 1752 as well as the Berne Convention for the Protection of Literary and Artistic Works.

Our Regional and Jordan Offices can be reached by E-mail at agip@tag.com.jo AGIP's WEB SITE http://www.agip.com

GCC: Call for the Establishment of a Centre for the Registration of Pharmaceuticals, Patents and Trademarks

Sheikh Saud said that embodying such integration in the pharmacutical industry may be attained through establishing a Gulf centre which makes the Gulf countries an economic power in the field of pharmaceuticals, enables them to deal with friendly countries on equal footings, makes such friendly countries recognize the pharmaceutical industries in the Gulf states and allows exchange of such products.

Sheikh Saud also added that it would be possible to approve the certificates of registration issued jointly by the Gulf States due to the economic importance of such countries for many other countries. Developed countries apply this procedure. For example, registration in the U.S.A. is carried out in one centre, namely, The American Food and Drug Administration Agency, which undertakes registration for more than 260 million people in more than fifty states. The same is applied in Europe where a unified centre undertakes registration for more than 300 million people. This also applies in China, India and other countries.

The Gulf States, separately, constitute a very small portion when compared to international pharmaceutical companies in terms of introducing new products in this field. Moreover, each country cannot establish a fully equipped centre capable of issuing certificates of registration of pharmaceutical products which are produced locally and approved in developed countries.

However, if the Gulf States jointly establish a unified centre fully equipped and qualified either by employing national, Arab, or international expertise in this field, applying the best international conditions for registering pharmaceuticals, certificates of registration of pharmaceuticals may then be approved on the international level, and the centre may determine the fees necessary for registration of pharmaceuticals in the remaining countries.

At present, there are more than 5 thousand kinds of pharmaceuticals registered in the Gulf States. Supposedly, if the registration fees specified for the registration of each pharmaceutical product are $ 10,000.00, an amount of $150 millions is thus collected every four years (as registration is valid for a period of four years). This means that the annual income may reach $ 12.5 million. This is in addition to registration of drug companies, studies on biotic valence and availability, patents and trademarks, which may raise the income to reach $ 15 million per year.

Sheikh Saud also confirmed that when the centre is established, the prices of medicines will decrease due to the possibility of specifying a unified price all over the Gulf States, which may be accepted by any company desirous to market its products in a very large market like the Gulf States.

Sheikh Saud Al-Qasmi stated that last year, the sales of "Gulphar" amounted to 140 million dirhams, that 50% of the sales were to Gulf States. At present, the company is looking for new markets in Europe, Africa and other countries of the world. He also stated that a new factory for antibiotics has been built and that it is scheduled to start production this year.

Mr. Hamad Abdul-Rahman Al-Midfa', Minister of Education and Acting Minister of Health, confirmed that Gulf pharmaceutical industries are considered an essential step towards achieving the availability of all medicines and are also considered as one of the factors for scientific and technological advancement. The said industry is deemed a very important and strategic one, as medicine is regularly required by every house and every person in all communities.

Mr. Al-Midfa' also added that on the local level, pharmaceutical industry and medical equipment receive all kinds of support through the facilities made available by the Ministry of Health.

Gulf pharmaceutical industries are considered an essential step towards achieving the availability of all medicines and are also considered as one of the factors for scientific and technological advancement.

Watch for Our Watch Service! Registration alone does not ensure that trademarks conflicting with yours have not been and will not be registered. To further help protect your trademarks across the Arab World, AGIP (TMP AGENTS) offers a Trademark Watch Service. Should we, following a thorough screening of Official Gazettes of the Arab countries, find a trademark similar or identical to yours, we will provide you with a full report in time for you to lodge an opposition.

Our offices undertake regular and comprehensive searches for interested clients. Please contact any of our 21 offices or our Regional Office in Amman, Jordan, for any enquiries about the service and relevant charges.

ABLE's News Update

l The Status of Intellectual Property in SYRIA PART (III) l Legal Recourse Against Trademark Infringement in Kuwait l Egypt Rejects Cancellation of an American Trademark

The Status of Intellectual Property in SYRIA PART (III)

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. Legislative Decree No. 152/L. R. dated July 19, 1939 was issued under which 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 regulating the commercial and industrial property protection "the Protection Act", and it is in force to this day 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 fourth form of protection:

INTERNATIONAL PROTECTION

1. Paragraph (1) of Article 6/2 of the Paris Convention provides the following:

"The countries of the community, whether of their own selves if their legislation so allows, or according to the request of the concerned party shall undertake to reject or cancel the registration and prevent using the industrial or trademark which constitute a copying, imitation or translation which would cause obscurity in a mark which the competent authority in the country in which the registration or use was made believes it to be reputed on the basis of actually being the mark pertaining to a person who enjoys the advantages of this convention and used on similar or identical products".

This provision also applies if the main part of the mark constitutes a copying of this reputed mark or an imitation thereof which would cause confusion. It gives the aggrieved party the right to request cancellation of the registration of a mark similar to his/her reputed mark or an imitation or translation thereof, and prevent its use:

a. If the legislation of the country in which the procedure required to be taken so allows.

b. If the competent authority in the country in which the registration was made believes that the mark of the plaintiff requesting cancellation is reputed. The Syrian Protection Act issued under Legislative Decree No. 47 for 1946 is in conformity in many of its provisions with the provisions of the Paris Convention.

There is nothing in this Protection Act that prohibits the owner of the said mark to request cancellation of the registration of a mark similar to his/or her own.

Article (1) of the implementing regulations issued under Ministerial Order No 2084 dated 12.8.1996 confirmed the application of the Paris Convention.

2. However, in application of the said opinion of the State's Council, after the elapse of 60 days as from the date of depositing the mark complained against, the plaintiff, can only resort to the courts. Resorting to courts in the application of Paragraph (1) of Article 6/2 of the Paris Convention is not confirmed. It is believed that the Paris Convention should be implemented, and its provisions applied. This was confirmed by the implementing regulations previously referred to.

3. It should be noted that Syria has, according to Decision No. 152 LR issued on 19.7.1939, joined the Madrid Convention concluded on 14.4.1981 relating to repression of false or deceptive indications of source on goods.u

ABLE's News Update

l The Status of Intellectual Property in SYRIA PART (III) l Legal Recourse Against Trademark Infringement in Kuwait l Egypt Rejects Cancellation of an American Trademark

Legal Recourse Against Trademark Infringement in Kuwait

Kuwait applies the provisions of its trademark law which was enacted in 1961. Articles 92, 93, 94 and 95 of the Kuwaiti Trademark Law stipulate:

Article 92

Any person who: 1. Falsifies or imitates a mark registered under the law so as to mislead the public, or uses, in bad faith, a falsified or imitated mark; 2. Places on his products, in bad faith, a mark which is the property of another person; 3. Knowingly sells, offers for sale or circulation, or possesses with the intention to sell, products bearing a falsified, imitated or unlawfully placed mark; 4. Infringes in bad faith, the provisions of Articles 94-98 pertaining to trademark specifications;

shall be punished with imprisonment for a period not exceeding three years, and with a fine not exceeding 3000 Rupees or with one of those penalties.

Article 93

The owner of a mark may, at any time, even before instituting civil or criminal action, apply on the strength of an official certificate testifying the registration of the mark to obtain a decision from the judge competent to hear the civil or criminal action, to take precautionary measures as may be required, and in particular seizure of the instruments or tools used or which may have been used in committing the offences, as well as the products, goods, trade names, wrapping materials, papers or any other matter on which the mark or specifications in question have been placed. Such seizure may be effected on importing goods from abroad.

The court order may also call upon one or more experts to assist the person effecting the seizure in his duty and it may require the applicant to produce a guarantee.

Article 94

The seizure proceedings set down in the preceding Article shall be null and void if not followed, within eight days from the date of effecting the seizure, through raising a civil or criminal action against the person in respect of whom such proceedings had been taken.

Article 95

The court may, in any civil or criminal action, order confiscation of the articles seized or which may be seized at a later date, for deducting the value thereof from damages awarded or fines, or the disposal thereof in any other way as may be deemed expedient by the court.

The court may also order the destruction of illegal marks and, when expedient, destruction of the products, wrapping materials, packing materials, shop-signs, catalogues and other things bearing such mark or illegal specifications, as well as the destruction of instruments and tools used, particularly, in the falsification operation; it may also order, even in the event of acquittal, the destruction of all the aforesaid.

The court may order publication of the judgement in the official gazette at the expense of the convicted person.u

EGYPT Rejects Cancellation of an American Trademark

The South Cairo Court has rejected a lawsuit filed by the Company Egypt and Gulf Import and Export requesting cancellation of the American trademark "Parka" on the pretext that the trademark has not been used for five years on a regular basis. The Court stated that the American trademark "Parka" has priority in use and registration in Egypt when compared to that of the Egyptian company.


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