Trade Registration Pocket Book by Chitrang Vyas

Contents 1. Introduction ............................................................ 2 2. FAQs...................................................................... 3 3. 9th Edition of International Classiﬁcation of .......... 9 Goods & Services 4. Jurisdictions and Registration Requirements Registration in GCC • United Arab Emirates ...................................... 16 • Bahrain ........................................................... 19 • Kuwait ............................................................. 22 • Saudi Arabia ................................................... 25 • Qatar ............................................................... 28 • Oman .............................................................. 31 Registration in Middle East Countries • Algeria ............................................................ 34 • Egypt .............................................................. 37 • Iran.................................................................. 39 • Iraq.................................................................. 42 • Jordan ............................................................. 45 • Lebanon .......................................................... 47 • Libya ............................................................... 49 5. Samples, Formats and Procedure • Deed of Assignment ....................................... 52 Disclaimer • Power of Attorney ........................................... 55 Trademark Registration Pocket Book Middle East, 2010 is designed only for the • Trademark Registration Procedure in UAE .... 56 information of readers. While every effort has been made to ensure accuracy, some 6. Worldwide Requirements information that may beRegistration relevant to a particular reader may not be comprehensive or may have omitted. Community Trademark ( CTM) ...... 57 • been European • isARIPO ( African Regional Industrial This book not intended as a study of all aspects of the Trademark Registration. The book isProperty not a substitute for reading the................................... standard when dealing with points Organization) 58 of doubt or difﬁculty. • Madrid system for International Registration No responsibility for loss to any person acting or refraining from acting as a result or of Trademarks ................................................ 60 any material in this publication can be accepted by Jitendra Intellectual Property or • Trademark Registration ...................... JCA International. Receipients should not act in on India the basis of this publication61 without seeking•professional advice. List of Countries Served by us ........................ 63

Trademark Registration Pocket Book, Middle East, 2010

Introduction This pocket book has been designed by the Jitendra Intellectual Property, a member of JCA International & a division of Jitendra Consulting Group as an endeavor to support the efforts of UAE’s Ministry of Economy to uphold and protect intellectual property rights in UAE. This pocket book has been developed as a guide for the potential users of “Trademark Registration” in Middle East countries. This pocket book clearly states the uses along with the benefits that shall ensue for investors, exporters, importers, manufacturers, SMEs and all those seeking to register their trademarks in Middle East countries. With UAE’s Ministry of Economy intensifying its efforts to eliminate the usage of counterfeit goods and products, this pocket book becomes more significant to support its campaign. By registering its trademark a business ensures the protection of its rights in UAE. Registering trademarks also becomes necessary in order to help customers and authorities alike to distinguish original goods from counterfeits sold in the market. This pocket book is aimed at providing the basic information regarding trademark registration procedures in Middle East countries and also providing additional information about the 9th edition of the International Classification of Goods and Services (Nice Agreement). This pocket book looks at key areas along with explaining the basic requirements of registration in Middle East countries. It is written primarily for those who have little or no knowledge of trademark registration, but have a reasonable understanding of the basic trademark concepts and terminology. 2

F.A.Qs 1.

What is a trademark? A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

What is a service mark? A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

What is a certiﬁcation mark? A certiﬁcation mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labour on the goods or services was performed by members of a union or other organization.

What is a collective mark? A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization. 3

Trademark Registration Pocket Book, Middle East, 2010

Other forms of intellectual property People occasionally confuse trade-marks with copyright, industrial designs, patents and integrated circuit topographies. These are rights granted for intellectual creativity and are also forms of intellectual property. However: • •

•

Why register a trademark? A registered trademark gives the exclusive use of that name, providing its owner the capability: -

patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention; copyrights provide protection for literary, artistic, dramatic or musical works (including computer progammes), and three other subject-matter known as: performance, sound recording and communication signal; industrial designs are the visual features of shape, configuration, pattern or ornament (or any combination of these features), applied to a finished article of manufacture; integrated circuit topographies refer to the threedimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

To create “Trademark Value” (Goodwill), an active intangible for the company. To offer licenses and franchises. To be differentiated from competitors. To be protected from third parties using an equal or similar name, exercising the legal actions that correspond.

To protect the Internet domain name. To impede others attempting to register similar trademarks. To have priority over third parties wanting to register their trademarks, in countries which do not require registration.

What are classes? When registering a trademark you need to specify the products and services that will be associated with your trademark. The large majority of countries of the world have adopted the International Classiﬁcation. This system groups all products and services into 45 classes 34 for products, 11 for services - permitting you to specify precise and clear classes covering your trademark. The protection that is offered to a registered trademark covers only the classes speciﬁed at the time of registration, therefore, allowing two identical trademarks to coexist in distinct classes. The agencies governments are in charge of the registration of trademarks for a given class, offering greater protection and greater investment.

How do I know in which class (es) to register? When you request a Comprehensive Study you are asked to describe how you intend to use a trademark for your products and services. With this description, we will recommend to which class (es) to register and what products/services you should include in each class.

What happens if oppositions arise? The purpose of the Comprehensive Study is to limit the probability of oppositions or refusals. Nevertheless, if oppositions arise, we rely on experienced lawyers who will recommend you the appropriate course of action. 5

Trademark Registration Pocket Book, Middle East, 2010

In what countries should I register my trademark? The protection of trademarks is regional; therefore, it is advised to register your trademark in the countries where your business is located or where you plan to be located.

10. Who can register a trade-mark? Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements. 11. How long is certification of a trademark valid? All recognized trademarks are valid for ten years from the date of filing. Extensions are granted for subsequent ten-year periods upon renewal. 12. What are well-known Marks? Well-known marks “are marks that are considered to be well-known by the competent authority of the country where protection for the mark is sought. Well known marks generally benefit from stronger protection. For example, well-known marks may be protected even if they are not registered (or have not even been used) in a given territory. In addition, while marks are generally protected against confusingly similar marks only if used for identical or similar products, well-known marks are protected against confusingly similar marks for even dissimilar products, if certain conditions are met. The main purpose of this stronger protection is to prevent companies from free-riding on the reputation of a wellknown mark and/or causing damage to its reputation or goodwill.

13. Can the assignment of an application be recorded? Yes. 14. Is recording a license agreement compulsory? What are the consequences of non-recordable? Necessary in order to have effect against third parties. 15. What do the symbols ® and ™ mean? ® and ™ are common symbols associated with trademarks, although their use is not a requirement and generally provides no special legal protection. The ® symbol is used once the trademark has been registered. The ™ symbol denotes that a given sign is used by the holder as a trademark whether this sign is the subject of a trademark application. 16. Can I register a mark that sounds the same as an existing mark but looks different? If you are trying to register a mark that sounds the same as a mark already registered for identical or similar goods or services for which the earlier mark is registered, it is likely that your mark will be considered as confusingly similar and be refused. 17. Is trademark registration necessary even when the mark has been in use for many years? In countries which have a legal system based on common law, ‘prior use’ is generally sufﬁcient for claiming rights over a given trademark in case of dispute. In civil law countries, however, this is usually not the case. Only trademark registration will provide legal certainty on exclusive rights to the use of the trademark regardless of how many years an enterprise has been using the name. Even in the ﬁrst case, it is highly advisable to register a 7

Trademark Registration Pocket Book, Middle East, 2010

trademark, as registration will reinforce the position of the right holder in case of litigation. 18. Foreign registration Registering your trade-mark with the Trade-marks Ofﬁce protects your rights in U.A.E only. If you are selling wares or services in other countries, you should consider registration in each of those countries. Contact a trademark agent or the embassy of the country in question for information on foreign registration.

19. What is Trademark Infringement?

Trademark Infringement is a violation of exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees. Infringement may occur when one party, the infringer, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers.

9TH EDITION OF INTERNATIONAL CLASSIFICATION OF GOODS & SERVICES GOODS CLASS 1 (Chemicals) Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artiﬁcial resins, unprocessed plastics; manures; ﬁre extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. CLASS 2 (Paints) Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. CLASS 3 (Cosmetics and cleaning preparations) Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. CLASS 4 (Lubricants and fuels) Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks. CLASS 5 (Pharmaceuticals) Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth,

Trademark Registration Pocket Book, Middle East, 2010

dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

instruments, artiﬁcial limbs, eyes and teeth; orthopedic articles; suture materials.

CLASS 6 (Metal goods) Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; iron mongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

CLASS 11 (Environmental control apparatus) Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

CLASS 7 (Machinery) Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

CLASS 13 (Firearms) Firearms; ammunition and projectiles; explosives; ﬁreworks.

CLASS 8 (Hand tools) Hand tools and implements (hand operated); cutlery; side arms; razors. CLASS 9 (Electrical and scientific apparatus) Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fireextinguishing apparatus. CLASS 10 (Medical apparatus) Surgical, medical, dental and veterinary apparatus and 10

CLASS 12 (Vehicles) Vehicles; apparatus for locomotion by land, air or water.

CLASS 14 (Jewelry) Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments. CLASS 15 (Musical Instruments) Musical instruments. CLASS 16 (Paper goods and printed matter) Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and ofﬁce requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks. CLASS 17 (Rubber goods) Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics 11

Trademark Registration Pocket Book, Middle East, 2010

in extruded form for use in manufacture; packing, stopping and insulating materials; ﬂexible pipes, not of metal.

CLASS 23 (Yarns and threads) Yarns and threads, for textile use.

CLASS 18 (Leather goods) Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

CLASS 24 (Fabrics) Textiles and textile goods, not included in other classes; bed and table covers.

CLASS 19 (Nonmetallic building materials) Building materials (nonmetallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal. CLASS 20 (Furniture and articles not otherwise classified) Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. CLASS 21 (Housewares and glass) Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes. CLASS 22 (Cordage and fibers) Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. 12

CLASS 25 (Clothing) Clothing, footwear, headgear. CLASS 26 (Fancy goods) Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers. CLASS 27 (Floor coverings) Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile). CLASS 28 (Toys and sporting goods) Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. CLASS 29 (Meats and processed foods) Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats. CLASS 30 (Staple foods) Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice. CLASS 31 (Natural agricultural products) Agricultural, horticultural and forestry products and grains 13

Trademark Registration Pocket Book, Middle East, 2010

not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and ﬂowers; foodstuffs for animals, malt. CLASS 32 (Light beverages) Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. CLASS 33 (Wine and spirits) Alcoholic beverages (except beers).

CLASS 40 (Treatment of materials) Treatment of materials. CLASS 41 (Education and entertainment) Education; providing of training; entertainment; sporting and cultural activities. CLASS 42 (Computer, scientiﬁc & legal) Scientiﬁc and technological services and research and design relating thereto: industrial analysis and research services; design and development of computer hardware and software; legal services.

CLASS 34 (Smokers’ articles) Tobacco; smokers’ articles; matches. SERVICES CLASS 35 (Advertising and business) Advertising; business management; business administration; office functions. CLASS 36 (Insurance and financial) Insurance; financial affairs; monetary affairs; real estate affairs. CLASS 37 (Building construction and repair) Building construction; repair; installation services.

CLASS 43 (Hotels and Restaurants) Services for providing food and accommodations.

drink;

temporary

CLASS 44 (Medical, beauty & agricultural) Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. CLASS 45 (Personal) Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

CLASS 38 (Telecommunications) CLASS 39 (Transportation and storage) Transport; packaging and storage of arrangement.

goods;

travel

Trademark Registration Pocket Book, Middle East, 2010

JURISDICTIONS AND REGISTRATION REQUIREMENTS REGISTRATION IN GCC UNITED ARAB EMIRATES Classiﬁcation The international classiﬁcation of goods and services (9th edition) is followed. Class 33 and alcoholic goods in class 32 cannot be registered in the UAE. A separate application is required for each class. Documents Required: A)

Individual Applicant 1. A Power Of Attorney duly notarized and legalized up to the Consulate of the UAE 2. 20 prints of the trademark/service mark 3. Passport copy of the Applicant 4. Certified copy of the Trademark/Design registered in any other country (Notarised and Attested) Corporate Applicant 1. A Power Of Attorney duly notarized and legalized up to the Consulate of the UAE 2. 20 prints of the trademark/service mark 3. Trade License/Certificate of Incorporation i.e. Commercial Registration (Notarised and Attested) 4. Certified copy of the Trade License. Photocopy of Passport of the Local sponsor 5. Passport copies of all partners

6. Memorandum and Articles of Association (Notarised and Attested) Time Frame The assignment shall be completed within 12-15 month. Opposition Trademark applications accepted by the Registrar are published in the Trademark Bulletin. Oppositions may be filed within 30 days from publication date. Extension of time for oppositions /counter-oppositions or for responding to office actions with exceptions of that relating to preliminary examination is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 3 months with surcharge for late renewals. Documents required for renewal 1. Power of Attorney legalized 2. Copy of certificate of registration of the trademark Use Requirements Use of a trademark is not required for registration or renewal. However a trademark is susceptible to cancellation by any interested party if there has been no effective use of a mark for a period of 5 consecutive years after registration. Assignment Requirements 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, legalized, with English Translation 3. Copy of registration certificate of the marks 17

Trademark Registration Pocket Book, Middle East, 2010

Change of Name/Address Application 1. Power of attorney legalized 2. Certiﬁcate of change of name/address, legalized 3. Copy of registration certiﬁcate of the mark Licensing License recordal is not compulsory but advisable in order to be effective against third parties. 1. Power of Attorney legalized 2. Legalized License agreement

BAHRAIN Classiﬁcation The international classiﬁcation of goods and services (9th edition) is followed. Class 33 and alcoholic goods in class 32 cannot be registered in the Bahrain. A separate application is required for each class. Documents Required: A)

Individual Applicant 1. A Power Of Attorney duly notarized and legalized up to the Consulate of the Bahrain 2. 10 prints of the trademark/service mark 3. Passport copy of the Applicant 4. Certiﬁed copy of the Trademark/Design registered in any other country 5. Any document providing that he/she is registered as a trader or conducting a business activity (instead of the certiﬁcate of incorporation

Corporate Applicant. 1. Power Of Attorney duly notarized and legalized up to the Consulate of the Bahrain 2. 10 prints of the trademark/service mark 3. Trade License/Certiﬁcate of Incorporation i.e. Commercial Registration. (Notarised and Attested) 4. Certiﬁed copy of the Trade License. Photocopy of Passport of the Local sponsor 5. Passport copies of all partners 6. Memorandum and Articles of Association (Notarised and Attested)

Cancellation A trademark is subject to cancellation by any interested party within 5 years from registration date. Fines & Penalties: Payment of ﬁnes of not less than 5,000 UAE Dirham (app. US $ 1,300) and/or imprisonment. Repeat offenders will be subject to the same penalties in addition to the closure of the commercial store or enterprise for a period of not less than 15 days and not more than 6 months, together with the publication of the judgment at the expense of the offender.

Trademark Registration Pocket Book, Middle East, 2010

Time Frame The Assignment shall be completed within 18 months. Opposition Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed within 60 days from publication date. Extension of time for oppositions is not possible. Extension of time for counteroppositions or for responding to office actions is possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 3 months with surcharge for late renewals. Documents required for renewal Power of Attorney simply signed. Use Requirements Use of a trademark is not required for registration or renewal. However a trademark is susceptible to cancellation by any interested if there has been no effective use of a mark for a period of 5 consecutive years after registration.

Licensing License recordal is not compulsory but advisable in order to be effective against third parties. 1. Power of Attorney, simply signed 2. License agre ement, legalized Cancellation A trademark is subject to cancellation before the Court by any interested within 5 years from registration date. Fines and Penalties: Payment of ﬁnes of not less than 500 Bahraini Dinar (app. US $ 1,300) and not more than 4,000 Bahraini Dinar (app. US $ 10,600) and/or imprisonment for a period of not less than 3 months and not more than 1 year. Penalties will be doubled for repeat offenders, in addition to the closure of the commercial store or enterprise for a period of not less than 15 days and not more than 6 months, together with the publication of the judgment at the expense of the offender.

Assignment Requirements 1. Power of Attorney from the assignee, simply signed 2. Deed of Assignment signed by both parties legalized Change of Name/Address Application 1. Power of attorney in the new name or address, simply signed legalized 2. A letter from the owner of the trademark to this effect addressed to the Registrar 20

Trademark Registration Pocket Book, Middle East, 2010

KUWAIT Classification The international classification of goods and services (6th edition) is followed. Class 33 and alcoholic goods in class 32, and pork meat in class 29 cannot be registered in the Kuwait. A separate application is required for each class. Documents Required: A) Individual Applicant 1. A Power Of Attorney duly notarized and legalized up to the Consulate of the Kuwait 2. 20 prints of the trademark/service mark 3. Passport copy of the Applicant 4. Certified copy of the Trademark/Design registered in any other country B)

Corporate Applicant 1. A Power Of Attorney duly notarized and legalized up to the Consulate of the Kuwait 2. 20 prints of the trademark/service mark 3. Trade License/Certiﬁcate of Incorporation i.e. Commercial Registration. (Notarised and Attested) 4. Certiﬁed copy of the Trade License. Photocopy of Passport of the Local sponsor 5. Passport copies of all partners 6. Memorandum and Articles of Association. (Notarised and Attested)

Time Frame The Assignment shall be completed within 18 months. 22

Opposition Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed within 30 days from the third publication in the Official Gazette. Extension of time for oppositions/counteroppositions or for responding to office actions is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months with surcharge for late renewals. Documents required for renewal 1 Power of Attorney legalized 2 Original Kuwaiti certificate of registration of the mark for endorsement Use Requirements Use of a trademark is not required for registration or renewal. However a trademark is susceptible to cancellation by any interested if there has been no effective use of a mark for a period of 5 consecutive years after registration. Assignment Requirements 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, legalized 3. Original certificate of registration of the mark for endorsement Change of Name/Address Application 1. Power of attorney legalized 2. Official certificate evidencing the change of name/ address 23

Trademark Registration Pocket Book, Middle East, 2010

Licensing If the licensor or licensee is a Kuwaiti national, the license agreement may be recorded at the commercial register and not the Trademark Office. A legalized extract from the commercial register would then be duly recognized by the Courts if conflicts arise. Cancellation A trademark is subject to cancellation before the Court by any interested within 5 years from registration date. Fines and Penalties Payment of fines of up to 600 Kuwaiti Dinar (app. US $ 2,000) and/or imprisonment.

SAUDI ARABIA Classiﬁcation The international classiﬁcation of goods and services (9th edition) is followed. Class 33 and alcoholic goods in class 32, and pork meat in class 29, and Christmas trees and related products in class 28 cannot be registered in the Saudi Arabia. A separate application is required for each class. Documents Required: A)

Individual Applicant 1. A Power Of Attorney duly notarized and legalized up to the Consulate of the KSA 2. 20 prints of the trademark/service mark 3. Passport copy of the Applicant 4. Certiﬁed copy of the Trademark/Design registered in any other country

Corporate Applicant. 1. A Power Of Attorney duly notarized and legalized up to the Consulate of the KSA 2. 20 prints of the trademark/service mark 3. Trade License/Certiﬁcate of Incorporation i.e. Commercial Registration (Notarised and Attested) 4. Certiﬁed copy of the Trade License. Photocopy of Passport of the Local sponsor 5. Passport copies of all partners 6. Memorandum and Articles of Association (Notarised and Attested)

Trademark Registration Pocket Book, Middle East, 2010

Time Frame The Assignment shall be completed within 20 months. Opposition Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed before the Board of Grievances (First Instance Court) within 90 days from publication date. Extension of time for oppositions/counteroppositions or for responding to office actions is not possible. Protection Term Trademark registrations are valid for 10 Hijri years (approximately 9 years and 8 months) from filing date and are renewable for like periods. There is a grace period of 6 lunar months for late renewals with payment of a surcharge. Documents required for renewal 1. Power of Attorney legalized 2. Original Saudi registration certificate of the mark for endorsement Use Requirements Use of a trademark is not required for registration or renewal. However a trademark is susceptible to cancellation by any interested if there has been no effective use of a mark for a period of 5 consecutive years after registration.

Change of Name/Address Application 1. Power of attorney legalized 2. Certificate of change of name/address, legalized 3. Original Saudi registration certificate of the mark for endorsement Licensing License recordal is not compulsory but advisable in order to be effective against third parties. 1. Power of Attorney, legalized 2. License agreement, legalized 3. Original Saudi registration certificate of the mark for endorsement Cancellation A trademark is subject to cancellation by any interested party before the Board of Grievances if it can be established that the mark was unrightfully registered. Fines and Penalties: Payment of fines of not less than 50,000 Saudi Riyal (app. US $ 13,000) and not more than 1,000,000 Saudi Riyal (app. US $ 267,000) and/or imprisonment for a period of up to 1 year. Penalties are doubled for repeat offenders.

Assignment Requirements 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, legalized 3. Original Saudi registration certiﬁcate of the mark for endorsement 26

Trademark Registration Pocket Book, Middle East, 2010

QATAR Classiﬁcation The international classiﬁcation of goods and services (7th edition) is followed. Class 33 and alcoholic goods in class 32, and pork meat in class 29 cannot be registered in the Kuwait. A separate application is required for each. Documents Required: A)

Individual Applicant 1. Power Of Attorney duly notarized and legalized up to the Consulate of the Qatar 2. 10 prints of the trademark/service mark 3. Passport copy of the Applicant 4. Certified copy of the Trademark/Design registered in any other country 5. Any document providing that he/she is registered as a trader or conducting a business activity (instead of the certificate of incorporation Corporate Applicant. 1. Power Of Attorney duly notarized and legalized up to the Consulate of the Qatar 2. 10 prints of the trademark/service mark 3. Trade License/Certificate of Incorporation i.e. Commercial Registration. (Notarised and Attested) 4. Certified copy of the Trade License. Photocopy of Passport of the Local sponsor 5. Passport copies of all partners 6. Memorandum and Articles of Association (Notarised and Attested)

Time Frame The Assignment will be completed within 3 years. Opposition Trademarks Application accepted by the Registrar are published in the Gazette of Trademarks. Oppositions may be filed within 4 months from publication date. Extension of time for oppositions/counteroppositions or for responding to office actions is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months with surcharge for late renewals. Documents required for renewal 1. Power of Attorney legalized Use Requirements Use of a trademark is not required for registration or renewal. However a trademark is susceptible to cancellation by any interested if there has been no effective use of a mark for a period of 5 consecutive years after registration. Assignment Requirements 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, legalized 3. Copy of certificate of incorporation of assignee Change of Name/Address Application 1. Power of attorney legalized 2.

Extract from the commercial register or any other document evidencing this change, legalized.

Trademark Registration Pocket Book, Middle East, 2010

Licensing License recordal is compulsory in order to be effective against third parties. 1. Power of Attorney, legalized 2. License Agreement, legalized 3. Copy of certiﬁcate of incorporation of licensee Cancellation A trademark is subject to cancellation by any interested party if it can be established that the mark was unrightfully registered.

OMAN Classiﬁcation The international classiﬁcation of goods and services (8th edition) is followed. A separate application is required for each class. Documents Required: A)

Individual Applicant 1. Power Of Attorney duly notarized and legalized up to the Consulate of the Oman 2. 10 prints of the trademark/service mark 3. Passport copy of the Applicant 4. Certiﬁed copy of the Trademark/Design registered in any other country 5. Any document providing that he/she is registered as a trader or conducting a business activity (instead of the certiﬁcate of incorporation)

Corporate Applicant 1. Power Of Attorney duly notarized and legalized up to the Consulate of the Oman 2. 10 prints of the trademark/service mark 3. Trade License/Certiﬁcate of Incorporation i.e. Commercial Registration (Notarised and Attested) 4. Certiﬁed copy of the Trade License. Photocopy of Passport of the Local sponsor 5. Passport copies of all partners 6. Memorandum and Articles of Association (Notarised and Attested)

Fines and Penalties: Payment of ﬁnes of up to 20,000 Qatari Riyal (app. US $5,500) and/or imprisonment for a period of up to 2 years. Penalties are doubled for repeat offenders.

Trademark Registration Pocket Book, Middle East, 2010

Time Frame Assignment shall be completed within 3 years. Opposition Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed within 2 months from publication date. Extension of time for oppositions/counteroppositions or for responding to office actions is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months with surcharge for late renewals. Documents required for renewal 1. Power of Attorney legalized

Licensing License recordal is not compulsory but advisable in order to be effective against third parties. 1. Power of Attorney, legalized 2. License agreement, legalized 3. Copy of certificate of incorporation, certified Cancellation A trademark is subject to cancellation by any interested party if it can be established that the mark was unrightfully registered. Fines and Penalties: Payment of fines of up to 2,000 Omani Riyal (app. US $ 5,000) and /or imprisonment for a period of up to 2 years.

Use Requirements Use of a trademark is not required for registration or renewal. However a trademark is susceptible to cancellation by any interested if there has been no effective use of a mark for a period of 5 consecutive years after registration. Assignment Requirements 1. Power of Attorney from the assignee, legalized 2 Deed of Assigment, legalized 3 Copy of certificate of incorporation, certified Change of Name/Address Application 1. Power of attorney legalized 2. Certificate of change of name/address, legalized

Trademark Registration Pocket Book, Middle East, 2010

REGISTRATION IN MIDDLE EAST COUNTRIES ALGERIA Classification The international classification of goods and services (9th edition) is followed. A single application may include several classes. Filing Requirements 1. A Power of Attorney in French, simply signed. A separate power of attorney is required for each application or set of applications 2. Copy of priority document, if priority is claimed, certified 3. 15 prints of the mark for each application Time Frame The Assignment shall be completed within 2 years. Opposition Trademark applications are published in the Official Gazette after registration, and there is no provision for filing an opposition to the registration of a mark. Extension of Time Extension of time is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 34

6 months for late renewals with payment of a surcharge. Documents required for renewal 1. Power of Attorney in French simply signed stating title of the signatory 2. 15 prints of the mark 3. Proof of use Use Requirements Use of a trademark is required for renewal only. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 3 consecutive years after ﬁling date. Assignment Trademark applications and registrations may be assigned with or without the goodwill of the business concerned. 1. Power of Attorney from the assignee in French, simply signed 2. Deed of Assigment, signed by both parties with French translation notarized Change of Name/Address Application 1. Power of attorney in French simply signed 2. Certiﬁcate of change of name/address of the applicant with French translation, notarized Licensing License recordal is compulsory in order to be effective against third parties. 1. Power of Attorney in French, simply signed 2. License Agreement with French translation, notarized 35

Trademark Registration Pocket Book, Middle East, 2010

Marking Marking is not compulsory Cancellation A trademark is subject to cancellation before the court by any interested party within 5 years from ﬁling date.

EGYPT Classification The international classification of goods and services (8th edition) is followed. A separate application is required for each class. Filing Requirements 1. A Power of Attorney legalized. A general power of attorney may be used for subsequent filings 2. Copy of priority document, if priority is claimed, certified 3. 10 prints of the mark for each application Time Frame The Assignment shall be completed within 12 months. Opposition Trademark applications accepted by the Registrar are published in the trademark Gazette. Oppositions may be filed within 60 days from publication date. Extension of Time Extension of time for oppositions/counter oppositions or for responding to office actions is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 6 months for late renewals with payment of a surcharge. Documents required for renewal Power of Attorney legalized.

Trademark Registration Pocket Book, Middle East, 2010

Power of Attorney from the assignee, legalized Power of Attorney from the assignor, legalized Deed of Assigment, legalized Certiﬁcate of incorporation of the assignee, legalized

Change of Name/Address Application 1. Power of attorney, legalized 2. Certiﬁcate of change of name/address of the applicant, legalized Licensing License recordal is not compulsory but advisable in order to be effective against third parties. 1. Power of Attorney from licensor, legalized 2. Power of Attorney from licensee, legalized 3. License Agreement, legalized 4. Certiﬁcate of incorporation of the licensee, legalized Marking Marking is not compulsory Cancellation A trademark is subject to cancellation before the court by any interested party within 5 years from registration date. 38

IRAN Classification The international classification of goods and services (8th edition) is followed. Class 33 and alcoholic goods in class 32 cannot be registered in the Iran. A single application may include several classes. Filing Requirements 1. A Power of Attorney legalized. A general power of attorney may be used for subsequent filings 2. Copy of home or foreign registration, certified. If unavailable, same will be indicated on the registration certificate 3. Copy of priority document, if priority is claimed, certified 4. 10 prints of the mark for each application Time Frame The Assignment shall be completed within 12 months. Opposition Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed within 30 days from publication date. Extension of Time Extension of time for oppositions/counter oppositions or for responding to office actions is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of 39

Trademark Registration Pocket Book, Middle East, 2010

6 months for late renewals without payment of a surcharge. Documents required for renewal Power of Attorney legalized. Use Requirements Use of a trademark is not required for registration or renewal of a mark. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 3 consecutive years from registration date.

Marking Marking is not compulsory. Cancellation Cancellation proceedings must be brought within 3 years from registration date, after 3 years the trademark is deemed incontestable.

Assignment Trademark applications and registrations may be assigned with or without the goodwill of the business concerned. 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, legalized 3. Original registration certiďŹ cate of the mark(s) for endorsement Change of Name/Address Application 1. Power of attorney, legalized 2. Extract from the commercial register or any other document evidencing this change, legalized 3. Original registration certiďŹ cate of the mark(s) for endorsement Licensing License recordal is compulsory in order to be effective against third parties. 1. Power of Attorney, legalized 2. Copy of License Agreement, legalized

Trademark Registration Pocket Book, Middle East, 2010

IRAQ Classification The international classification of goods and services (7th edition) is followed with local sub-classification. A single application may include several classes and sub-classes. Filing Requirements 1. A Power of Attorney legalized. A general power of attorney may be used for subsequent filings 2. Copy of priority document, if priority is claimed, certified 3. 10 prints of the mark for each application ( Arabic transliteration is required) Time Frame The Assignment shall be completed within 2 years. Opposition Trademark applications accepted by the Registrar are published in the Trademark Bulletin. Oppositions may be filed within 90 days from the third bulletin publication date. Extension of Time Extension of time for oppositions/counter oppositions or for responding to office actions is not possible. Protection Term Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is no grace period of 6 months for late renewal of a trademark.

Documents required for renewal Power of Attorney legalized. Re-registration of a lapsed mark is possible within one month from the renewal deadline. Use Requirements Use of a trademark is not required for registration or renewal of a mark. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 2 consecutive years from registration date. Assignment Trademark applications and registrations may be assigned with or without the goodwill of the business concerned unless otherwise agreed upon. 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, legalized Change of Name/Address Application 1. Power of attorney, legalized 2. Extract from the commercial register or any other document evidencing this change, legalized For a change of address, only a legalized power of attorney is required. Licensing License recordal is compulsory in order to be effective against third parties. 1. Power of Attorney, legalized 2. License Agreement, legalized

Trademark Registration Pocket Book, Middle East, 2010

Marking Marking is not compulsory. Cancellation A trademark is subject to cancellation by any interested party if it is proved that the mark is not entitled to registration within the provisions of the law.

JORDAN Classification The international classification of goods and services (7th edition) is followed with local sub-classification. A separate application is required for each class. Filing Requirements 1. A Power of Attorney legalized. A general power of attorney may be used for subsequent filings 2. Copy of priority document, if priority is claimed, certified 3. Prints of the mark Time Frame The Assignment shall be completed within 12 months. Opposition Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed within 90 days from the publication date. Extension of Time Extension of time for oppositions/counter oppositions or for responding to office actions is possible. Protection Term Trademark registrations are valid for 10 years from filing date or from priority date if priority is claimed, and are renewable for like periods. There is a grace period of 1 year for late renewals without payment of a surcharge. Documents required for renewal Power of Attorney legalized.

Trademark Registration Pocket Book, Middle East, 2010

Use Requirements Use of a trademark is not required for registration or renewal of a mark. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 3 consecutive years preceding date of ﬁling for cancellation. Assignment Trademark applications and registrations may be assigned with or without the goodwill of the business concerned. 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, legalized Change of Name/Address Application 1. Power of attorney, legalized 2. Certiﬁcate of change of name, legalized For a change of address, only a legalized power of attorney showing new address is required. Licensing License recordal is not compulsory but advisable in order to be effective against third parties. 1. Power of Attorney, simply legalized 2. License Agreement, legalized with Arabic translation Marking Marking is not compulsory Cancellation A trademark is subject to cancellation by any interested party within 5 years from registration date.

LEBANON Classiﬁcation The international classiﬁcation of goods and services (9th edition) is followed. A single application may include several classes. Filing Requirements 1. A Power of Attorney simply signed. A separate power is required for each application 2.

Copy of priority document, if priority is claimed, certiﬁed

1 ﬁlm and 3 prints of the mark

Time Frame The Assignment shall be completed within 12 months. Opposition Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions to any registered trademark may be filed before the court. Extension of Time Extension of time is not possible. Protection Term Trademark registrations are valid for 15 years from filing date and are renewable for like periods. There is a grace period of 3 months for late renewals with payment of a surcharge. Documents required for renewal 1. Power of Attorney, simply signed 2. 1 film and 3 prints 47

Trademark Registration Pocket Book, Middle East, 2010

Use Requirements Use of a trademark is not required for registration or renewal of a mark. Assignment Trademark applications and registrations may be assigned with or without the goodwill of the business concerned. The recordal of an assignment may be made within 3 months after the transfer. Late recordals are possible upon payment of a surcharge for each delay of two months 1. Power of Attorney from the assignee,simply signed 2. Deed of Assigment, legalized Change of Name/Address Application 1. Power of attorney, simply signed 2. Certiﬁcate of change of name, legalized For a change of name, no documents are required. Licensing License recordal is not compulsory but advisable in order to be effective against third parties. 1. Power of Attorney, simply legalized 2. License Agreement, legalized Marking Marking is not compulsory Cancellation A trademark is subject to cancellation by any interested party within 5 years from ﬁling date.

LIBYA Classification The international classification of goods and services (8th edition) is followed. Class 33 and alcoholic goods in class 32 cannot be registered in Libya. A separate application is required for each class. Filing Requirements 1. A Power of Attorney legalized. A general power may be used for subsequent filings 2.

Certiﬁcate of incorporation or extract from the commercial register, legalized, with sworn Arabic translation

Copy of priority document, if priority is claimed, certiﬁed

10 prints of the mark for each application

Time Frame The Assignment shall be completed within 12 months. Opposition Trademark applications accepted by the Registrar are published in the Official Gazette before registration. Oppositions may be filed within 3 months from the filing date. Extension of Time Extension of time for oppositions/counter oppositions or for responding to office actions is not possible.

Trademark Registration Pocket Book, Middle East, 2010

Protection Term Trademark registrations are valid for 10 years from ﬁling date and are renewable for like periods. There is a grace period of 3 months for late renewals with payment of a surcharge. Documents required for renewal Power of Attorney, legalized. Use Requirements Use of a trademark is not required for registration or renewal of a mark. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 consecutive years.

1. Power of Attorney, legalized 2. License Agreement, legalized, with sworn Arabic Translation 3. Certiﬁcate of Incorporation or extract from the commercial register, legalized with sworn Arabic Translation Marking Marking is not compulsory. Cancellation A trademark is subject to cancellation by any interested party within 5 years from the date of registration.

Assignment Trademark applications and registrations may be assigned with or without the goodwill of the business concerned. 1. Power of Attorney from the assignee, legalized 2. Deed of Assigment, together with goodwill of the business, legalized, with sworn Arabic translation 3. Certiﬁcate of incorporation or extract from the commercial register, legalized, with sworn Arabic translation Change of Name/Address Application 1. Power of attorney, legalized 2. Certiﬁcate of change of name/ address from Home Registry, legalized Licensing License recordal is not compulsory, but advisable in order to be effective against third parties.

Trademark Registration Pocket Book, Middle East, 2010

SAMPLES, FORMATS AND PROCEDURE DEED OF ASSIGNMENT JITENDRA INTELLECTUAL PROPERTY

‫ﺟـــﺗـــﻳـــﻧـــﺩﺭﺍ ﻟـــﻠـــﻣـــﻠـــﻛـــﻳـــﺔ‬ ‫ﺍﻟـــﻔـــﻛﺭﻳــــــﺔ‬

Deed of Assignment

‫ﻋـــﻘـــﺩ ﻧـــﻘـــﻝ ﻣـــﻠـــﻛـــﻳـــﺔ‬

This assignment made the ……… day of ………. 20…….. Between:................................... ...................................................

‫ ﻣﻥ‬............‫ﻧﻅﻡ ﻋﻘﺩ ﻧﻘﻝ ﺍﻟﻣﻠﻛﻳﺔ ﻫﺫﺍ ﺍﻟﻳﻭﻡ‬ ...:‫ ﻓﻳﻣﺎ ﺑﻳﻥ ﻛﻝ ﻣﻥ‬.............‫ ﺳﻧﺔ‬.......‫ﺷﻬﺭ‬ ................................................. ....................................................

............................................... of

....................................................

...................................................

....................................................

...................................................

........................................ ‫ﺍﻟﻣﻘﻳﻡ ﻓﻲ‬

(hereinafter called the Assignor(s) of the one part and of............................................... .............. (hereinafter called the Assignee(s) of the other part.

….……………....………………… :‫)ﺍﻟﻣﺳﻣﻰ ﻓﻳﻣﺎ ﻳﻠﻲ ﺑﺎﻟﻣﺣﻭﻝ ( ﻣﻥ ﺟﻬﺔ‬ …….…………....………………… ........................................:‫ﺍﻟﻣﻘﻳﻡ ﻓﻲ‬ :‫)ﺍﻟﻣﺳﻣﻰ ﻓﻳﻣﺎ ﻳﻠﻲ ﺑﺎﻟﻣﺣﻭﻝ ﺍﻟﻳﻪ( ﻣﻥ ﺟﻬﺔ‬

Whereas the Assignor(s) is/are the proprietor(s) of the following trademark(s) registered in ……… under No(s).

‫ﺣﻳﺙ ﺃﻥ ﺍﻟﻣﺣﻭﻝ ﻫﻭ ﺍﻟﻣﺎﻟﻙ ﺍﻟﻭﺣﻳﺩ‬ ..................‫ﻟﻠﻌﻼﻣﺎﺕ ﺍﻟﺗﺟﺎﺭﻳﺔ ﺍﻟﻣﺳﺟﻠﺔ ﻓﻲ‬ ‫ ﺗﺣﺕ‬.............................................. ............:‫ﺍﻷﺭﻗﺎﻡ‬

...................................................

....................................................

...................................................

....................................................

...................................................

....................................................

And whereas the Assignor(s) has/have agreed with the assignee(s) to assign, sell and transfer the said registered trademark(s) to the assignee(s).

‫ﻭﺣﻳﺙ ﺃﻥ ﺍﻟﻣﺣﻭﻝ ﻗﺩ ﺍﺗﻔﻕ ﻣﻊ ﺍﻟﻣﺣﻭﻝ ﺍﻟﻳﻪ ﻋﻠﻰ‬ ‫ﻧﻘﻝ ﻭﺑﻳﻊ ﻭﺗﺣﻭﻳﻝ ﻣﻠﻛﻳﺔ ﺍﻟﻌﻼﻣﺎﺕ ﺍﻟﺗﺟﺎﺭﻳﺔ‬ .‫ﺍﻟﻣﺫﻛﻭﺭﺓ ﺍﻟﻰ ﺍﻟﻣﺣﻭﻝ ﺍﻟﻳﻪ‬

Now this deed witnesses that in pursuance of the said agreement and in consideration of the sum of ………………………………. the receipt of which is hereby acknowledged, the Assignor(s) do hereby assign and transfer to the Assignee(s) the said registered trademark(s) together with the goodwill of the business concerned in the goods in respect of which the said trademark(s) is/are respectively registered.

‫ﺍﺷﻬﺎﺩﺍ ﺑﺫﻟﻙ ﻭﻭﻓﻘﺎ ﻟﻼﺗﻔﺎﻕ ﻳﺔ ﺍﻟﻣﺫﻛﻭﺭﺓ ﻭﺑﻣﻘﺎﺑﻝ‬ ............................................‫ﻣﺑﻠﻎ‬ ‫ ﺍﻟﺫﻱ ﻳﻌﺗﺭﻑ ﺍﻟﻣﺣﻭﻝ‬........................ ‫ ﻳﻧﻘﻝ ﺍﻟﻣﺣﻭﻝ ﻭﻳﺣﻭﻝ ﺍﻟﻰ ﺍﻟﻣﺣﻭﻝ‬.‫ﺑﺎﺳﺗﻼﻣﻪ‬ ‫ﺍﻟﻳﻪ ﻣﻠﻛﻳﺔ ﺍﻟﻌﻼﻣﺎﺕ ﺍﻟﺗﺟﺎﺭﻳﺔ ﺍﻟﻣﺫﻛﻭﺭﺓ ﺃﻋﻼﻩ‬ ‫ﻣﻊ ﺍﻟﺳﻣﻌﺔ ﺍﻟﺗﺟﺎﺭﻳﺔ ﺍﻟﻣﺗﻌﻠﻘﺔ ﺑﺎﻟﺑﺿﺎﻋﺔ ﺍﻟﺗﻲ‬ ‫ ﻭﺑﺫﻟﻙ ﺃﺻﺑﺣﺕ‬،‫ﻣﻥ ﺃﺟﻠﻬﺎ ﺳﺟﻠﺕ ﻫﺫﻩ ﺍﻟﻌﻼﻣﺎﺕ‬ ‫ﺍﻟﻌﻼﻣﺎﺕ ﻣﻭﺿﻭﻉ ﻫﺫﺍ ﺍﻻﺗﻔﺎﻕ ﻣﻥ ﺗﺎﺭﻳﺧﻪ ﻣﻠﻛﺎ‬ .‫ﺧﺎﺻﺎ ﻟﻠﻣﺣﻭﻝ ﺍﻟﻳﻪ ﻭﻣﻥ ﻳﺧﻠﻔﻪ ﺑﺻﻭﺭﺓ ﻣﻁﻠﻘﺔ‬ ‫ﻭﻳﻘﺑﻝ ﺍﻟﻣﺣﻭﻝ ﻭﺍﻟﻣﺣﻭﻝ ﺍﻟﻳﻪ ﺗﺣﻭﻳﻝ ﺍﻟﻣﻠﻛﻳﺔ‬ ‫ﺍﻵﻧﻔﺔ ﺍﻟﺫﻛﺭ ﻭﻳﻭﻛﻼﻥ ﺑﻬﺫﺍ‬

Accordingly, the said registered trademark(s) has /have become as from the date of this deed the absolute property of the Assignee(s) and their assigns and/or successor(s). The Assignor(s) and the Assignee(s) accept the aforesaid assignment and hereby appoint. ………………… to pursue the necessary procedures to effect the resignation of this Deed at the Registrar’s Ofﬁce concerned.

.................................................. ‫ ﻻﺗﺧﺎﺫ ﺍﻻﺟﺭﺍءﺍﺕ ﺍﻟﺿﺭﻭﺭﻳﺔ‬................. ‫ﻟﻠﻘﻳﺎﻡ ﺑﺗﺳﺟﻳﻝ ﻫﺫﺍ ﺍﻟﻌﻘﺩ ﻟﺩﻯ ﺩﺍﺋﺭﺓ ﺍﻟﻣﺳﺟﻝ‬ .‫ﺍﻟﻣﺧﺗﺹ‬

‫ﺍﺳﺗﺷﻬﺎﺩﺍ ﻋﻠﻰ ﻣﺎ ﺗﻘﺩﻡ ﻓﻘﺩ ﻭﺿﻌﺕ ﺑﻬﺫﺍ ﺍﻟﻌﻘﺩ‬ ‫ﺍﻻﺧﺗﺎﻡ ﻭﺍﻟﺗﻭﺍﻗﻳﻊ ﻟﻸﻁﺭﺍﻑ ﺍﻟﻣﺫﻛﻭﺭﻳﻥ ﻓﻲ ﺍﻟﻳﻭﻡ‬ .‫ﻭﺍﻟﺳﻧﺔ ﺍﻟﻣﺑﻳﻧﻳﻥ ﺃﻋﻼﻩ‬

Trademark Registration Pocket Book, Middle East, 2010

POWER OF ATTORNEY

In witness whereof the common seals of the parties hereto were hereunto afﬁxed the day and year ﬁrst above written.

I/We.................................................................................................. Of.......................................................................................................

Assignee(s)‫ﺍﻟﻣﺣﻭﻝ ﺍﻟﻳﻪ‬

Assignor(s)‫ﺍﻟﻣﺣﻭﻝ‬

Have appointed Jitendra Intellectual Property- to act as my/our agents for the registration, cancellation or renewal, amendment and assignment of trademarks, patents, designs, copyrights or recording license agreements and domain names belonging to me/us in the United Arab Emirates. I/ we request that all notices, requisitions, communications and certiﬁcates relating thereto to be sent to the said Agent(s) at the following address, which is also my/our address for the purpose of serving all the above : Jitendra Intellectual Property – P. O. Box 43630, Dubai, United Arab Emirates. I/We hereby undertake to give notice to the department(s) concerned of any change in my/ our address for serving the notices mentioned above during the period of protection. I/We authorize the said Agent(s) to appoint a substitute or substitutes, to alter and amend any documents, to maintain the matter subject hereof in force, to defend my/ our rights against oppositions and legal proceedings, to deposit oppositions on my/ our behalf, to appoint lawyers to represent me/us and /or defend my/our rights before any administrative and/or legal entity, and I/we hereby conﬁrm and ratify whatsoever the said Agents, their substitute(s) may lawfully do. I/We hereby revoke all previous authorizations (if any) in respect of the same matter. Signed in………………………………………………………… This day of ………………………………………………………

Trademark Registration Pocket Book, Middle East, 2010

TRADEMARK REGISTRATION PROCEDURE IN UAE Search

European Community Trademark (CTM) Unfavourable

Favourable Filing Of Trademark Application

Stop

Initial Inspection Rejection

Approval From Ministry

Appeal

Paper Publication In 2 Local Newspapers

Unfavourable Stop

Favourable

Objection Appeal

Unfavourable

Favourable

Publication In Website Publication In OfďŹ cial Gazette Cd Trademark CertiďŹ cation

Stop

* The above process takes approximately 12 to 15 months 56

WORLDWIDE REGISTRATION REQUIREMENTS

A CTM registration will be one trademark right covering all the countries of the European Union namely: 15. Lithuania 1. Austria 16. Luxembourg 2. Belgium 17. Malta 3. Cyprus 18. Poland 4. Czech Republic 19. Portugal 5. Denmark 20. Slovakia 6. Estonia 21. Slovenia 7. Finland 22. Spain 8. France 23. Sweden 9. Germany 24. The Netherlands 10. Greece 25. United Kingdom 11. Hungary 26. Bulgaria 12. Ireland 27. Romania 13. Italy 14. Latvia Requirements 1. A power of attorney signed by the applicant, indicating the full name and position of the signatory. 2. The particulars of the applicant. 3. Prints of the mark. 4. A list of goods and/or services and the classes pertaining thereto. 5. Translation of foreign terms is required. 6. A General Authorization form is required for international customers.

Trademark Registration Pocket Book, Middle East, 2010

ARIPO AFRICAN REGIONAL INDUSTRIAL PROPERTY ORGANIZATION African Regional Industrial Property Organization is a creation of the joint efforts of the United Nations Economic Commission for Africa and the world Intellectual Property. The said efforts were incarnated in the Lusaka Agreement which was adopted by a diplomatic conference held at Lusaka, Zambia on December, 1976. ARIPO only covers ﬁfteen countries of English ‫ﺫ‬speaking Africa (Anglophone Africa) or strictly speaking former British colonies. ARIPO ofﬁce administers Intellectual Property matters as provided for in the Harare Protocol and the Banjul Protocol. Banjul Protocol deals with trademarks. States currently party to the Banjul Protocol are Botswana, Lesotho, Malawi, Namibia, Swaziland, Tanzania, Uganda and Zimbabwe. Total eight states are the members.

Tanzania and Zimbabwe. The 34 classes of the International classiﬁcation of goods are followed for Malawi and Uganda. One application can cover more than one class. Duration A trademark registration shall be valid for 10 years as of the date of registration and may be renewed for similar consecutive period. Renewal of Application (a) Simply Signed Power of Attorney (b) Prints of the trademark as originally registered Assignments and Licensing (a) A power of attorney simply signed (b) A duly authenticated assignment and licensing document

The ARIPO regional system provides choice as to the route of filing applications namely, the member state route and the ARIPO office route. An applicant may file a single application either at one of the contracting state office or directly to ARIPO office. An applicant whichever route he chooses has the right to designate in his application any or all members of ARIPO where he wishes his intellectual property right to be protected. Language used is English. Classification The 42 classes of the International classification of goods and services are followed for Botswana, Lesotho, Namibia, 58

Trademark Registration Pocket Book, Middle East, 2010

MADRID SYSTEM FOR INTERNATIONAL REGISTRATION OF TRADEMARKS Madrid System functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. The Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. The total number of member countries to the Madrid System is 84 of which majorities are members to the Madrid Protocol (http://www.wipo.int/ export/sites/www/treaties/en/documents/pdf/madrid_marks. pdf) Among the GCC Countries Bahrain and Oman are the member countries in Madrid Protocol.

TRADEMARK REGISTRATION IN INDIA India follows the 8th edition of NICE classiﬁcation, but the Registry is currently not equipped to accept services in class 43, 44 & 45. Hence these services will fall under class 42 for the present. This class is therefore looked upon as a residual class of sorts. Filing Requirements 1. A simple signed Power of Attorney 2. Name(s), nationality, occupation and address of the applicant(s) 3. 10 copies of the mark 4. A certiﬁed priority document or a copy of it duly notarized, if priority is to be claimed 5. From which date (or month of the year or yesr) the mark is being used in India. If not used in India, mention ‘proposed to use’ Time Frame The Assignment shall be completed within 18-20 months.

The objectives of the Madrid system are two- fold. Firstly, it helps in obtaining protection for trademark internationally. Secondly, since an international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier.

Opposition Under the Trademark law opposition to the registration of a mark can be ﬁled on the ground that it is identical or similar to an earlier registered trademark and also that the goods speciﬁcation of both the marks are similar or identical.

The Madrid System of international registration cannot be used by a person or legal entity which does not have the necessary connection, through establishment, domicile or nationality, with a member of the Madrid System. Nor can it be used to protect a mark outside the Madrid Union.

Protection Term The registration when granted is valid for a period of 10 years from the date of registration (i.e. the date of application)

Trademark Registration Pocket Book, Middle East, 2010

Renewal of Trademark/Service Mark 1. A simple signed Power of Attorney 2. The trademark registration number and the mark registered along with a copy of the registration certiďŹ cate Assignment 1. A simply signed Power of Attorney 2. Trademark Application/registration number and the mark proposed to be registered 3. A notarized copy of assignment deed signed by the assignor and the assignee

LIST OF COUNTRIES SERVED BY US GCC UAE Bahrain KSA Kuwait Oman Qatar

ARIPO Botswana Lesotho Namibia Swaziland Tanzania Uganda Zimbabwe

Middle East Algeria Egypt Gaza Strip Iraq Jordan Lebanon Libya Morocco Sudan Syria Tunisia West Bank Yemen Iran Turkey

Asia China Malaysia Singapore Thailand Pakistan Bangladesh Sri Lanka Afghanistan South Korea Indonesia Japan

4. Name, Adress, nationality and professionor nature of business of the assignee 5. Whether the assignment is with or without the goodwill of the business. If it is with or without the goodwill of the business, it has to be registered with the Trademark Registry within six months from the assignment deed Change of Name 1. A simple signed Power of Attorney in the new name and address 2. A notarized copy of the change of name certiďŹ ed issued by the competent authority

Trademark Registration Pocket Book, Middle East, 2010

EUROPEAN COUNTRIES Austria Belgium Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Ireland Italy

Latvia Lithuania Luxembourg Malta Poland Portugal Slovakia Slovenia Spain Sweden The Netherlands United Kingdom Bulgaria Romania

Other European Countries Russia Ukraine

Latin American Countries Brazil Argentina Ecuador Honduras Jamaica Peru Mexico Panama

Other Countries USA & Canada Australia New Zealand

FOR MORE DETAILS, PLEASE VISIT OR CONTACT US ON: www.jcatrademarkuae.com Email: legalip@jitendragroup.ae

Disclaimer

Trademark Registration Pocket Book Middle East, 2010 is designed only for the information of readers. While every effort has been made to ensure accuracy, some information that may be relevant to a particular reader may not be comprehensive or may have been omitted. This book is not intended as a study of all aspects of the Trademark Registration. The book is not a substitute for reading the standard when dealing with points of doubt or difďŹ culty. No responsibility for loss to any person acting or refraining from acting as a result or any material in this publication can be accepted by Jitendra Intellectual Property or JCA International. Receipients should not act on the basis of this publication without seeking professional advice.