03-12-2013 (Newsletter Issue 3/13)
The Yemeni Ministry of Industry and Trade (YMIT) has recently launched a new system to file trademark applications electronically on the following website: www.yipo.gov.ye
This new system allows applicants to settle the official fees at the Patent & Trademark Office (PTO) and then fill out an electronic application form along with the requirements, check and review it for accuracy and precision, and then submit it directly over the internet to the Intellectual Property Office. Original copies of the required documents should still be filed at the PTO. The sole purpose of this system is to save the PTO's time regarding entering the data and the required documents to their system. It is cost efficient, and in turn will shorten the examination procedure along with its publication notices.
The YMIT’s goal is to fasten all its services by developing an electronic system for all procedures, which will facilitate the process for clients primarily and will ensure better quality service.
07-17-2012 (Newsletter Issue 11/12)10th Edition of Nice ClassificationThe Yemeni Trademarks Registrar will start using the 10th edition of Nice Classification as of August 1, 2012.
Source: JAH, Doha, Qatar
12-01-2011 (Newsletter Issue 14/11)Official Fees for Publishing IncreasedThe Yemeni Ministry of Industry and Trade has issued Ministerial Decision No. 246 of the year 2011 regarding the designation of the Trademark Gazette (AL-TIJARAH) as a means to disseminate business sector services related to Intellectual Property (IP) provided by the Ministry of Industry & Trade and the provision of fees for publication.
The decision endorsed by Yemeni Minister of Industry and Trade Eng. Hisham Sharaf Abdullah on November 2, 2011 and circulated on November 13, 2011 can be summarized as per the following:
- The publication upon acceptance and publication upon registration have been merged in one publication instead of two, and the official fees have also been merged.
- The size of the publication will be managed by the number of digits included in the list of goods of the application.
- A new size has been indicated for publication; that is 2/3 of a page which was not available before.
Source: JAH & Co. IP , Doha, Qatar
10-25-2011 (Newsletter Issue 12/11)New Industrial Designs Implementing RegulationsThe implementing regulations related to Industrial Designs Law No. 28 of 2010 in Yemen have been issued under Ministerial Decision No. 212 of 2011 of October 3, 2011. The main amendments of this Law are as follows:
- Disclosure of the invention without the knowledge or consent of the inventor shall not be taken into consideration as relative novelty bar if it occurred within the 6-month period preceding the filing date or priority date of the patent application.
- Design applications are published in the Official Gazette upon acceptance. Oppositions may be filed within 90 days from publication date.
- The protection term is extended to 10 years from filing date, instead of 15 years as per the provisions of the previous law. Renewal is no longer possible. No provision for the payment of annuities.
Source: JAH & Co. IP, Doha, Qatar
10-01-2011 (Newsletter Issue 11/11)
Official Fees Increased and Re-structured
The Council of Ministers has issued their decision No. 178 for the year 2011 by which the official fees in respect of trademark and industrial designs services have been increased.
The previously implemented sub-classes system has been withdrawn along with their respective extra charges, and the official fees must be paid at filing time instead of separating the fees on each stage respectively.
The total official fees from filing to registration have been increased by 150% compared to the old fees.
For industrial designs:
- Charges: The total official fees have increased to USD $200 instead of USD $170.
- Protection: The design is valid for 10 years and no annuity payments are required to sustain the application.
It is worth mentioning that previously, an industrial design was valid for 5 years, and renewable for 2 periods, each of 5 years, giving a total of 15 years of protection.
This decree was deemed effective from 26 September 2011.
Source: NJQ & Associates, Jordan
09-06-2011 (Newsletter Issue 10/11)Trademark Implementing Regulations IssuedThe Yemeni Trademark Office has implemented a new regulation amending the official fees for trademark services. The main amendments are:
- Filing and registration fees have been changed. Please see new fees below.
- Sub class fees will be eliminated.
- Fees for trademarks in black & white and colours will be unified.
The new regulations have not been completely implemented. It is expected in the nearest future.
Source: JAH & Co. IP, Doha, Qatar
06-01-2011 (Newsletter Issue 8/11)
Trademark Office not Functioning
Due to the ongoing unrest the functioning of the Trademark and Patent Office in Yemen has been interrupted.
Source: SABA & Co.
02-01-2011 (Newsletter Issue 2/11)
Opposition and Renewal Period Changed
The Yemeni Ministry of Industry and Trade issued on November 21st, 2010 Law No. 23 for the year 2010 relating to Trademarks and Geographical Indications. The new law is effective from February 22th, 2011.
The main important points of this new law are as follows:
- The opposition period has been decreased to 90 days calculated from the publication date. (Article 14)
- The grace period for the renewal of a mark registration has been increased to 12 months, noting this would be subjected to the payment of lateness fine. (Article 24)
- Any mark cancelled by the request of its owner can not be registered by any other interested party for the same or similar goods or services unless after three years from the date of cancellation. (Chapter 05)
- The registration fees can be paid within 12 months from the expiry of the opposition period.
- As indicated in Article (06), well-known marks are now recognized as per the following:
1- Any mark application filed for goods or services identical or similar to a well-known mark would be rejected by the Registrar if the well-known mark is not registered in Yemen.
2- If the well-known mark is registered in Yemen, then any mark application in any class would be rejected for being similar or identical to a well-known mark.
- As per Chapter (04), the new law indicates clear provisions for recording of license agreements and recording of assignments, such as the following:
1- The possibility to record the license agreement for some or all the products covered by a mark registration.
2- It is now compulsory to record the license agreement, as the license will not be affected unless it is recorded with the Trademark Office.
- As per Section (03), Chapters (32-40), the new Law has indicated the protection of geographical indications, and also clarifies the relation between trademarks bearing a geographical indication/ geographical indications.
- The new Law has clearly indicated the possibility of claiming priority within six months calculated from the filing date in any member country of Paris Convention, in this case the filing date in Yemen will be the same as the filing date in the original application. (Article 54)
- The new Law has also indicated the penalties against infringement of marks through legal action with the relative court.
12-01-2010 (Newsletter Issue 17/10)
New Trademark Law Issued/Opposition Period Changed
Yemeni President Ali Abdullah Saleh issued on November 22th, 2010, decision No. 23 of the year 2010 concerning trademarks and geographical indications which will be implemented by the Ministry of Industry and Trade.
The 61-article law includes definitions, trademarks, geographical indications, temporary procedures, penalties and general provisions.
Major amendments are:
- the opposition period decreases from 6 months to 3 months
- severe penalties for infringement
- one year trademark renewal period
The new law will come into force 3 months after its issuance.
Legal basis is the unified Intellectual Property Law No. 19 of 1994.
Trademark protection is obtained by registration.
Nice classification, 8th edition
Exception: Class 33 and alcoholic goods in class 32.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks and trade names.
The application is filed at the Registrar of Trademarks at the Ministry of Industry and Trade located in Sanaa.
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 authenticated by the Consulate of the Republic of Yemen or any other Arab Consulate is necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal 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.
The processing time from first filing to registration is approx. 12 months.
The first office action is taken after approx. 3 to 4 months.
Following the successful examination, the trademark application is published in the official gazette “Al-Tijarah”.
The opposition period is 3 months from the publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
is 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 each.
The Trademark Law provides for a grace period of 1 year from the date of expiration.
A trademark is vulnerable to cancellation upon the request of any interested party who can establish that the trademark was not actually used during the 5 years immediately preceding the application for cancellation or that there was no bona fide use of the trademark on a good in respect of which the trademark was registered.
The official fee for filling a trademark is USD 230.- (approx. EUR 163.- ) in one class. The publication fee is USD 144.23 (approx. EUR 100.-). There is no registration fee.
Trademark Licence Agreement
In Yemen a licence agreement has to be in writing. It is not permitted to license the use of unregistered marks. 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. There are no specific statutory provisions in the civil or common law stipulating terms or conditions for the licensing of trademarks. Such matters may be decided upon by the parties, including the term of the licence which term should not exceed the term of protection of the trademark registration.
There are no provisions in law for the recordal of a licensee. The recordal of a licence is voluntary, but non-recordal may affect use requirements. There is no time frame for a recordal and no prescribed form or content for the validity of a licence agreement. The terms and conditions agreed between the parties will constitute the licence agreement.
The following documents are required for a recordal:
1. A power of attorney executed by the licensee legalised up to a Yemeni Consulate or any other Arabian Consulate
2. The licence agreement legalised up to a Yemeni Consulate
3. A simple copy of the registration certificate or the last renewal certificate
Upon the recordal of a licence agreement in the Trademarks Register and its publication in the Official Gazette it will be effective and enforceable vis-à-vis third parties from the application date of the recordal.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may not join the trademark owner in infringement proceedings. An infringement action can only be defended by the legitimate owner of the trademark. The licensee may call upon the owner to institute infringement proceedings, but he may not defend any infringement action unless so authorised by the owner of the trademark. The licensee may not institute any proceedings related to the trademark registration in his own name if the proprietor refuses or neglects to do so, unless so authorised by the owner of the mark.
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