06-25-2012 (Newsletter Issue 10/12)IP Office Is RelocatingThe Industrial Property Office in Qatar has moved to new premises as per the following address particulars:
The Industrial Property Office
Al Jeedah Building
PO Box 1958
Tel +974 4012 2222
Fax +974 4494 5000
The flow of work has not been ceased due to this relocation and they are normally functioning.
Source: JAH & Co. IP, Doha, Qatar
02-07-2012 (Newsletter Issue 2/12)Customs Recordal Soon ImplementedThe provisions of Article 7 of the new Law on Intellectual Property Rights Border Measures (Law No. 17 of 2011) came into force in January 2011 and trademarks customs recordal will soon be implemented. Article 7 of the new Law stipulates the following:
Article (7): “The right holder may submit an application with the Department requesting registration of all data related to its rights, and its address in the State, in a registry specific for this purpose at the Department, and the Minister will issue a decision on the registration procedures and fees upon a proposal by the Director General of the Department”.
By way of elaboration on the above, the rights holders are now allowed to "record" all relevant information related to their marks. This will definitely mean that, with a recordation system in place, Customs will be allowed to adopt an ex-officio border system, whereby they can immediately target, intercept and confiscate shipments of infringing goods and thus avoiding the delays inherently involved in seeking judicial action. Therefore, products suspected of being counterfeit will be suspended and the rights owner as well as the importer will be immediately notified.
In this perspective it should be noted that the documents and other relevant requirements needed for the recordal and the recordal period have not been specified yet.
Please note that Morocco, Sudan, Tunisia and the UAE (Dubai, Sharjah and Ras Al Khaimah) are offering customs recordal.
Source: JAH & Co. IP , Doha, Qatar
Legal basis is the Trademark Act No. (3) for the year 1978 which was put in force in January 25th, 1981. On June 15th, 2002, a new trademark Law No. (9) for the year 2002 on Trademarks, Trade Names, Geographical Indications and Industrial Models and Designs was passed. However, the Implementing Regulations of the said law had not been issued until end of 2007, but the law as it concerns trademarks was put in force from the date of publication according to the Implementing Regulations of the old law no. 3 of 1978.
Ministerial Decision number 47 of 2005 was issued on March 6th, 2005 raising the official fees dramatically. The said decision was put into effect on June 26th, 2005.
Trademark protection is obtained by registration.
Nice classification, 7th edition
Exception: class 33 and beers in class 32 and pork meat in class 29.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices and any combination of the mentioned signs. The following trademark types are registrable: trade marks, service marks and collective marks.
The application is filed at the Trademark Office.
A separate application has to be filed for each class.
Only tradesmen can apply for trademarks.
Foreign applicants need a local agent.
A power of attorney legalised by a Qatari consulate abroad is necessary.
Foreign applicants do not need a domestic registration.
A simple copy of the extract from the commercial register or incorporation certificate of the applicant should be submitted.
The application process includes a formal and substantive examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use or if there is a registration in a foreign country following a substantial examination system.
The processing time from first filing to registration is approx. 8 to 12 months.
Before registration, the trademark application is published in the Trademark Journal.
The opposition period is 4 months from date of the publication. Opposition cases should be settled by the Trademarks Registrar which can be appealed before the civil court by any party.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from the registration, it may be subject to cancellation.
The official fee from first filing to registration in the normal course of action is approx. EUR 700.00 per class.
Trademark Licence Agreement
In Qatar a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. Licences can only be recorded for registered trademarks. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence, unless this is provided for as such in the sale agreement or in the licence agreement originally executed by the parties. There are no statutory provisions prescribing the terms of a licence agreement, but the terms and conditions agreed upon between the two parties constitute the licence agreement.
There are provisions in law for the recordal of a licensee. The recordal is not mandatory, but it will not have any effect against third parties unless recorded in the Trademarks Register and published in the Trademarks Gazette. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement.
The following documents are required for a recordal:
1. The certified licence agreement signed by the parties and duly legalised up to a Qatari Consulate
2. A power of attorney from the licensee legalised up to a Qatari Consulate or any other Arabian Consulate
3. A simple copy of the certificate of incorporation, or an abstract of the entry of the registered user in the Commercial Register
The licence agreement becomes effective and enforceable against third parties from the date of signature of the agreement, provided that it is recorded in the Trademarks Register and published in the Trademarks Gazette.
There is no evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and may also call upon the owner to institute infringement proceedings, but he may not institute proceedings in his own name if the proprietor refuses or neglects to do so. The licensee can take action against infringements only if he is so authorised by the legitimate owner of the trademark, or if this is expressly provided for in the licence agreement.
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We would like to thank the following law firms for their assistance in updating the information provided:
01-24-2011JAH & CO. IP
, Doha, Qatar
NJQ & Associates, Amman, JordanLicensing
12-15-2011JAH & CO. IP
, Doha, Qatar
NJQ & Associates, Amman, Jordan