Lysaght & Co

Intellectual Property Newsroom

(Developments within the last 6 months)

Uganda - Service Marks and Nice Classification - UPDATE

Having issued a directive last week stating that the Ninth Edition of the Nice Classification is now fully operative in Uganda, including service classes, the Registry has issued a "clarification" of its previous statement.

The Ninth Edition will enter into force in Uganda when the Trade Marks Bill which is currently before Parliament has been passed, and a new Trade Marks Law enters into effect. So, regrettably, service marks cannot be registered as yet, although as indicated in our earlier posting, the law would have to be changed in order to give validity to such an announcement.

Further details of the new law and when it is expected to enter into force will be posted on our website as soon as this information is available.

17th June 2009

Egypt - Terms and annuities for PCT National Phase Applications

We have, for some time, been aware of an amendment which was alleged to have been made to the calculation of the term of protection and payment of annuities in respect of PCT national phase patent applications in Egypt. We have been monitoring this matter closely, because we had received advice from our Egyptian associate that no official notification to this effect had been issued by the relevant minister of the Egyptian government, and that any advice which we had received to the contrary from other agents in Egypt was therefore incorrect.

On 6 June 2009, an Administrative Circular No. 1/2009 was finally issued by the Egyptian Patent Office regarding the above amendments. However, once again, we were advised by our associates in Egypt that this notification was not effective and that the Patent Office was refusing to recognise or apply the contents of the circular, because changes of this sort can only be made by a ministerial decree. Our associates met with the Director of the Egyptian Patent Office to discuss this matter, and finally, on 15 June 2009, an amended Administrative Circular was issued which has been accepted by the Egyptian Patent Office.

The circular (which retains its date of 6 June 2009) states that both the term of a PCT-derived patent and the deadline for paying annuities thereon will now be calculated from the international filing date instead of the local filing date, and that back renewal fees are therefore now payable retroactively in respect of both pending patent applications and granted patents within 6 months of the issuance of the decision, i.e. before 6 December 2009. Examples showing how the new calculations are to be made are set out below for your convenience.

For new PCT national phase applications filed from now on in Egypt, the annuities that fell due on the first anniversary of the international filing date will normally be payable upon entry into the PCT national phase in Egypt. If priority is not claimed in the PCT application, the annuities which were due on the first anniversary and the second anniversary of the international filing date will normally be payable.

e.g. 1. International filing date = 3 January 2008;
Earliest priority date = 5 January 2007;
National phase deadline = 30 months from 5 January 2007 = 5 July 2009;
Annuity payable upon entry into national phase = that which fell due on 3 January 2009 (second annuity). Third annuity due on 3 January 2010.

2. International filing date = 3 January 2007;
No priority claimed;
National phase deadline = 30 months from 3 January 2007 = 3 July 2009;
Annuities payable upon entry into national phase = those which fell due on 3 January 2008 (second annuity) and 3 January 2009 (third annuity). Fourth annuity due on 3 January 2010.

For already-pending applications and granted patents with filing dates prior to 6 June 2009, the annuities which fell due on the first and each subsequent anniversary of the international filing date that have already passed will be payable as an accumulated retroactive annuity before 6 December 2009. However, any annuities which have already been paid under the old system (i.e. calculated from the local filing date) are taken into account and cancel out the equivalent renewals due under the new system, as shown in the below example:

3. International filing date = 14 February 2005;
Local filing date = 10 August 2006;
Under new system, annuities payable = those which were due on 14 February 2006 (second annuity), 14 February 2007 (third annuity), 14 February 2008 (fourth annuity) and 14 February 2009 (fifth annuity).
However, under old system, annuities already paid = those which were due on 10 August 2007 (second annuity) and 10 August 2008 (third annuity).
Therefore, annuities payable before 6 December 2009 (end of grace period set by Administrative Circular No. 1/2009) = fourth and fifth only (because second and third already paid under old system).
Sixth annuity then due 14 February 2010.

As far as already-issued Letters Patents are concerned, we understand that the Patent Office will issue an official letter stating that the term of all national phase patents deriving from PCT applications with international filing dates on or after 6 September 2003 (the date on which Egypt joined the PCT) will be 20 years from the international filing date. Thus, there will be no need to have each Letters Patent corrected to reflect the new term.

Should you have any queries in this regard, please do not hesitate to contact us.

17th June 2009

Uganda - Registration of Service Marks and Nice Classification - Ninth Edition

Uganda has adopted the Ninth Edition of the Nice Classification, as of 9 June 2009.

This means that for the first time, trade marks can now be registered in respect of services in classes 35 - 45. The legality of this change in practice is, in our view, open to doubt as the change in practice has not been accompanied by a change in the law. Nevertheless, as the Registry is now accepting service marks in practice, we recommend that the proprietors of service marks should now file applications to secure their rights in Uganda as soon as possible.

12th June 2009

Djibouti - New Industrial Property Legislation

A new Industrial Property Law No. 050/AN/09 was adopted by the Djibouti Parliament on 27th April 2009 and will come into force 6 months from publication of the enforcing Decree.

A law was also passed for the establishment of a new Industrial Property Office which will be known as "OFFICE DJIBOUTIEN DE LA PROPRIETE INDUSTRIELLE ET COMMERCIALE (ODPIC)".

Further updates will be posted as they arise.

8th May 2009

Iran - Implementation of New law on Intellectual Property

As you may be aware, the Iranian Parliament approved a new law on Intellectual Property in 2008, which was published in the Official Gazette on 20 April 2008. The Iranian Industrial Property Office (IIPO) had one year from that date within which to implement the accompanying regulations. We now write to confirm that the IIPO has prepared the relevant regulations and, following their recent publication in the Official Gazette, the new law is now in force.

A summary of the main provisions of the new law is provided below:

The IIPO has increased all of the official fees, in some cases by nearly 10,000%.
The IIPO has introduced penalty payments for the late renewal of trade marks, patents and industrial designs, the amount being 50% of the relevant official fee.
The filing formalities must be completed within 60 days from the date of notification by the IIPO, although an additional 60 days may be obtained upon the approval of the IIPO.
Annuity payments may be made up to two months prior to the anniversary of the filing date of a patent application, although a six month grace period is allowed after the expiration of the anniversary date upon payment of a surcharge.
Renewal of a trade mark is possible up to one year prior to the expiration date, although a six month grace period is allowed after the expiration date upon payment of a surcharge.
Renewal of industrial designs is possible up to six months prior to the expiration date, although a six month grace period is allowed after the expiration date upon payment of a surcharge.
In the case of administrative oppositions with no prior IP registration in Iran, the plaintiff must file a new trade mark, patent or industrial design application simultaneously with its opposition.
The IIPO will impose an official fee for filing administrative oppositions.
In the case of an administrative opposition or a rejection of an IP application by the IIPO, a committee at the IIPO will make an initial decision, and the applicant must present its case before that committee. A verdict issued by the committee is challengeable before the First Instance Court of Tehran and also the Appeal court.
The IIPO will require all pages relating to a patent application to be translated into Farsi, although it appears that a translation of only summary of the application is possible.
The IIPO will introduce a separate fee for Madrid trade mark applications.

We will keep you apprised of any further information that we can ascertain regarding the new law in due course. In the meantime, please do not hesitate to contact us if you have any further questions.

1st April 2009

Chile - The 140th PCT Contracting State

Chile became the 140th PCT Contracting State on 2 March 2009. The PCT will enter into force in Chile on 2 June 2009.

10th March 2009

Peru - The 141st PCT Contracting State

Peru became the 141st PCT Contracting State on 6 March 2009. The PCT will enter into force in Peru on 6 June 2009.

10th March 2009

Guernsey - New Patent Legislation

New legislation was passed in Guernsey on 28 January 2009, which extends the scope of protection that will be available to patent applicants in this jurisdiction.

The new law, The Registered Patents and Biotechnological Inventions Ordinance (Patents Ordinance) is expected to come into force later in 2009. It repeals the current long-established patent law, and provides for the reregistration of any foreign granted patent. Under the previous law, only UK or European (UK) patents could be reregistered. This development means that it will soon be possible to register new types of patents in Guernsey, such as business methods, which have not previously been available for registration there.

If you have any questions on this matters, please do not hesitate to contact us.

25th February 2009

Bahrain - New Patent Law and Implementing Regulations

We have just learnt that the Bahraini Patent Office has finally started to accept the payment of patent annuities, for the first time in this jurisdiction. As we have previously reported, the Implementing Regulations for the new patent law in Bahrain came into force on 10 May 2006, and whilst the requirement for the payment of annuities was introduced as of that date, the Bahraini Patent Office has not been accepting any annuity payments until now.

In view of this new development, annuities are therefore now payable annually, for the remainder of the patent term of 20 years from the filing date of all granted patents (including those granted before the promulgation of the new law and which are still valid), starting from the fee which fell due in 2006. The back annuities must be paid in respect of each patent within six months of the date of receipt of the official notification in this regard, i.e. before the non-extendible deadline of 22 June 2009. Failure to pay these back fees, or indeed any future annuities, will result in the lapse of the patent.

As mentioned above, annuities are payable with effect from 2006, and annually thereafter, based on each anniversary of the grant date of the patent from 2006 onwards. For instance, for a patent granted on 28 October 1996, annuities are payable in respect of 2006 (the 11th annuity), 2007 (the 12th annuity), and 2008 (the 13th annuity). All of these back annuities are payable before 22 June 2009. In this example, the fee for 2009 (the 14th annuity) must then be paid before 28 October 2009, or within a six month grace period thereafter along with a late fine, and annually thereafter.

Please let us know if you have any queries in this matter.

10th February 2009

Gambia - Registrar refusing apps for reregistration of granted EP/UK Patents

As you may remember, we previously warned you of the possibility that our recent applications for the reregistration of granted UK or EP(UK) patents in Gambia would not be valid, by virtue of the publication of the new Industrial Property Act (which introduces a requirement of absolute novelty, and so precludes the filing of such reregistration applications), although it appeared that the Registrar was still accepting such applications.

We regret to advise that the Registrar has now decided to refuse and return the reregistration applications which we have recently filed, and will not accept any further such applications. We are somewhat surprised by this development, as the Registrar has, until now, indicated that these applications were still permissible under the discretionary transitional provisions of the new law.

We therefore regret that we will be unable to proceed further with such applications in the future.

3rd February 2009

Dominica - New Trade Marks Act in Force

A new Act entitled the "Marks, Collective Marks and Trade Names Act of 1999" came into force in Dominica on 01 February 2009. This new Act abolishes the dual system of local applications, and those based on existing UK marks. The final deadline by which granted UK marks can be registered in Dominica will expire on 01 February 2010 - one year from the date of entry into force of the new law.

U.K. based applications

The transitional provisions of the new Act provide that any person who, on the coming into force of the new Act (01 February 2009), is the owner of a trade mark registered, or applied for, in the United Kingdom may, within 12 months of the entry into force of the new Act, file an application for registration of the same trade mark under the new Act. Any such applications will be accorded the filing date or priority date accorded to the application or registration in the United Kingdom.

Local/Substantive applications under the new Act

Previous Acts are repealed, however existing registrations shall remain in force for the unexpired portion of their existing term and may be renewed under the provisions of the new Act.

Some points of particular significance are as follows :-

The new law reduces the initial validity period from 14 years to 10 years, calculated from the date of application. Subsequent renewals will also be granted for consecutive periods of 10 years.
The IP Officer and the Registry has advised that all pending UK and non-UK based applications that were filed under the old Act (prior to 01 February 2009) but published and/or registered on or after 01 February 2009 are considered to have been granted under the new Act and will be granted for an initial validity period of 10 years from the application date.
It is now possible to claim Paris Convention priority.
The International Classification of Goods and Services (9th Edition) has been adopted. The filing of multi-class applications is permitted.
Existing national registrations must be re-classified upon renewal.
Non-use of a mark for any continuous period of three (3) years following registration renders it vulnerable to cancellation on the grounds of non-use.
A Trade Mark License Agreement must be recorded to the effective against third parties.
License Agreement must provide for quality control, by the licensor, of the quality of the goods or services. Where a license agreement does not provide for such quality control, or if quality control is not effectively carried out, the license agreement will be considered invalid.
Collective marks can be registered. A copy of the regulations governing the use of the collective mark must accompany the application.
A Collective Mark may not be the subject of a License Agreement.

Please do not hesitate to contact us if you require any further information.

2nd February 2009

Djibouti - New Industrial Property Legislation

We are pleased to report that a new bill for the protection of industrial property was adopted on 27 January 2009 by the Council of Ministers. The legislation now awaits the approval of the House of Representatives, which we expect to take place within the next six months. Once enacted, the new law will come into force six months after its publication in the Official Journal.

The new law provides for the official filing of applications for patents, integrated circuit diagrams, industrial designs and models, trade marks for products and services, commercial names, geographical indications and names of origin, as well as for the control of unfair competition.

The implementation of the new law is subject to the establishment of the Djibouti Office of Industrial and Commercial Property, and to the Regulations being put in place. It may therefore be some time before the new law finally becomes effective. We will monitor this situation closely and will provide updates as soon as we have further news.

30th January 2009

Dominica - New Patent Act finally in force - UPDATE

We have just ascertained that, frustratingly, and contrary to previous advice which we received from our associate in Dominica, the final deadline by which granted UK or European(UK) patents can be registered in Dominica will expire on 25 August 2009, and not 1 February 2009. We have only just received a copy of the new Patents Act and Regulations from our associate, and we noticed upon studying this law that a transitional period of one year from the date of entry into force of the new law was provided for this purpose. Thus, as the new law came into force on 25 August 2008, we immediately queried with our associate as to why we had been advised that the final date for filing reregistration applications would expire on 1 February 2009. In response, we have just been notified that this date was indeed wrongly reported by our associates, and that such applications can be validly filed before 25 August 2009.

We apologize for any inconvenience caused by our associate's miscommunication of the deadline, and would ask that you kindly send us your instructions for the reregistration of any granted UK or EP(UK) patents in Dominica in good time before 25 August 2009 so as to ensure that we may file them before the expiry of this final deadline.

20th January 2009

Vanuatu - Amendments to Trade Marks and Patents Acts

We have recently been advised by the Vanuatu Financial Services Commission that re-registration on the basis of an existing Community Trade Mark or an International Registration is not possible. This is despite the fact that the new trade mark laws clearly indicate that "If a person is a registered proprietor of a trade mark in a (EU) Member State; or by virtue of an entry in the Register of Trade Marks kept under the laws of the Member State or in accordance with the terms of a treaty; convention, arrangement or agreement to which the member State is a party the person may apply to have the trade mark registered in Vanuatu".

We are taking the matter up with the Vanuatu Financial Services Commission as it would appear that the Commission does not understand the terms of its own law. However, for the forseeable future, applications in Vanuatu can only be based on national registrations in EU member states.

In the meantime, if you have any question on the above, please do not hesitate to contact us.

20th January 2009

Navigation Homepage History of Lysaght & Co. Services Countries Personnel News & Law Updates Scales of Fees Order Form Information Order Form Contact Information Client Login Sitemap	Lysaght & Co Intellectual Property Newsroom (Developments within the last 6 months) Uganda - Service Marks and Nice Classification - UPDATE Having issued a directive last week stating that the Ninth Edition of the Nice Classification is now fully operative in Uganda, including service classes, the Registry has issued a "clarification" of its previous statement. The Ninth Edition will enter into force in Uganda when the Trade Marks Bill which is currently before Parliament has been passed, and a new Trade Marks Law enters into effect. So, regrettably, service marks cannot be registered as yet, although as indicated in our earlier posting, the law would have to be changed in order to give validity to such an announcement. Further details of the new law and when it is expected to enter into force will be posted on our website as soon as this information is available. 17th June 2009 Egypt - Terms and annuities for PCT National Phase Applications We have, for some time, been aware of an amendment which was alleged to have been made to the calculation of the term of protection and payment of annuities in respect of PCT national phase patent applications in Egypt. We have been monitoring this matter closely, because we had received advice from our Egyptian associate that no official notification to this effect had been issued by the relevant minister of the Egyptian government, and that any advice which we had received to the contrary from other agents in Egypt was therefore incorrect. On 6 June 2009, an Administrative Circular No. 1/2009 was finally issued by the Egyptian Patent Office regarding the above amendments. However, once again, we were advised by our associates in Egypt that this notification was not effective and that the Patent Office was refusing to recognise or apply the contents of the circular, because changes of this sort can only be made by a ministerial decree. Our associates met with the Director of the Egyptian Patent Office to discuss this matter, and finally, on 15 June 2009, an amended Administrative Circular was issued which has been accepted by the Egyptian Patent Office. The circular (which retains its date of 6 June 2009) states that both the term of a PCT-derived patent and the deadline for paying annuities thereon will now be calculated from the international filing date instead of the local filing date, and that back renewal fees are therefore now payable retroactively in respect of both pending patent applications and granted patents within 6 months of the issuance of the decision, i.e. before 6 December 2009. Examples showing how the new calculations are to be made are set out below for your convenience. For new PCT national phase applications filed from now on in Egypt, the annuities that fell due on the first anniversary of the international filing date will normally be payable upon entry into the PCT national phase in Egypt. If priority is not claimed in the PCT application, the annuities which were due on the first anniversary and the second anniversary of the international filing date will normally be payable. e.g. 1. International filing date = 3 January 2008; Earliest priority date = 5 January 2007; National phase deadline = 30 months from 5 January 2007 = 5 July 2009; Annuity payable upon entry into national phase = that which fell due on 3 January 2009 (second annuity). Third annuity due on 3 January 2010. 2. International filing date = 3 January 2007; No priority claimed; National phase deadline = 30 months from 3 January 2007 = 3 July 2009; Annuities payable upon entry into national phase = those which fell due on 3 January 2008 (second annuity) and 3 January 2009 (third annuity). Fourth annuity due on 3 January 2010. For already-pending applications and granted patents with filing dates prior to 6 June 2009, the annuities which fell due on the first and each subsequent anniversary of the international filing date that have already passed will be payable as an accumulated retroactive annuity before 6 December 2009. However, any annuities which have already been paid under the old system (i.e. calculated from the local filing date) are taken into account and cancel out the equivalent renewals due under the new system, as shown in the below example: 3. International filing date = 14 February 2005; Local filing date = 10 August 2006; Under new system, annuities payable = those which were due on 14 February 2006 (second annuity), 14 February 2007 (third annuity), 14 February 2008 (fourth annuity) and 14 February 2009 (fifth annuity). However, under old system, annuities already paid = those which were due on 10 August 2007 (second annuity) and 10 August 2008 (third annuity). Therefore, annuities payable before 6 December 2009 (end of grace period set by Administrative Circular No. 1/2009) = fourth and fifth only (because second and third already paid under old system). Sixth annuity then due 14 February 2010. As far as already-issued Letters Patents are concerned, we understand that the Patent Office will issue an official letter stating that the term of all national phase patents deriving from PCT applications with international filing dates on or after 6 September 2003 (the date on which Egypt joined the PCT) will be 20 years from the international filing date. Thus, there will be no need to have each Letters Patent corrected to reflect the new term. Should you have any queries in this regard, please do not hesitate to contact us. 17th June 2009 Uganda - Registration of Service Marks and Nice Classification - Ninth Edition Uganda has adopted the Ninth Edition of the Nice Classification, as of 9 June 2009. This means that for the first time, trade marks can now be registered in respect of services in classes 35 - 45. The legality of this change in practice is, in our view, open to doubt as the change in practice has not been accompanied by a change in the law. Nevertheless, as the Registry is now accepting service marks in practice, we recommend that the proprietors of service marks should now file applications to secure their rights in Uganda as soon as possible. 12th June 2009 Djibouti - New Industrial Property Legislation A new Industrial Property Law No. 050/AN/09 was adopted by the Djibouti Parliament on 27th April 2009 and will come into force 6 months from publication of the enforcing Decree. A law was also passed for the establishment of a new Industrial Property Office which will be known as "OFFICE DJIBOUTIEN DE LA PROPRIETE INDUSTRIELLE ET COMMERCIALE (ODPIC)". Further updates will be posted as they arise. 8th May 2009 Iran - Implementation of New law on Intellectual Property As you may be aware, the Iranian Parliament approved a new law on Intellectual Property in 2008, which was published in the Official Gazette on 20 April 2008. The Iranian Industrial Property Office (IIPO) had one year from that date within which to implement the accompanying regulations. We now write to confirm that the IIPO has prepared the relevant regulations and, following their recent publication in the Official Gazette, the new law is now in force. A summary of the main provisions of the new law is provided below: The IIPO has increased all of the official fees, in some cases by nearly 10,000%. The IIPO has introduced penalty payments for the late renewal of trade marks, patents and industrial designs, the amount being 50% of the relevant official fee. The filing formalities must be completed within 60 days from the date of notification by the IIPO, although an additional 60 days may be obtained upon the approval of the IIPO. Annuity payments may be made up to two months prior to the anniversary of the filing date of a patent application, although a six month grace period is allowed after the expiration of the anniversary date upon payment of a surcharge. Renewal of a trade mark is possible up to one year prior to the expiration date, although a six month grace period is allowed after the expiration date upon payment of a surcharge. Renewal of industrial designs is possible up to six months prior to the expiration date, although a six month grace period is allowed after the expiration date upon payment of a surcharge. In the case of administrative oppositions with no prior IP registration in Iran, the plaintiff must file a new trade mark, patent or industrial design application simultaneously with its opposition. The IIPO will impose an official fee for filing administrative oppositions. In the case of an administrative opposition or a rejection of an IP application by the IIPO, a committee at the IIPO will make an initial decision, and the applicant must present its case before that committee. A verdict issued by the committee is challengeable before the First Instance Court of Tehran and also the Appeal court. The IIPO will require all pages relating to a patent application to be translated into Farsi, although it appears that a translation of only summary of the application is possible. The IIPO will introduce a separate fee for Madrid trade mark applications. We will keep you apprised of any further information that we can ascertain regarding the new law in due course. In the meantime, please do not hesitate to contact us if you have any further questions. 1st April 2009 Chile - The 140th PCT Contracting State Chile became the 140th PCT Contracting State on 2 March 2009. The PCT will enter into force in Chile on 2 June 2009. 10th March 2009 Peru - The 141st PCT Contracting State Peru became the 141st PCT Contracting State on 6 March 2009. The PCT will enter into force in Peru on 6 June 2009. 10th March 2009 Guernsey - New Patent Legislation New legislation was passed in Guernsey on 28 January 2009, which extends the scope of protection that will be available to patent applicants in this jurisdiction. The new law, The Registered Patents and Biotechnological Inventions Ordinance (Patents Ordinance) is expected to come into force later in 2009. It repeals the current long-established patent law, and provides for the reregistration of any foreign granted patent. Under the previous law, only UK or European (UK) patents could be reregistered. This development means that it will soon be possible to register new types of patents in Guernsey, such as business methods, which have not previously been available for registration there. If you have any questions on this matters, please do not hesitate to contact us. 25th February 2009 Bahrain - New Patent Law and Implementing Regulations We have just learnt that the Bahraini Patent Office has finally started to accept the payment of patent annuities, for the first time in this jurisdiction. As we have previously reported, the Implementing Regulations for the new patent law in Bahrain came into force on 10 May 2006, and whilst the requirement for the payment of annuities was introduced as of that date, the Bahraini Patent Office has not been accepting any annuity payments until now. In view of this new development, annuities are therefore now payable annually, for the remainder of the patent term of 20 years from the filing date of all granted patents (including those granted before the promulgation of the new law and which are still valid), starting from the fee which fell due in 2006. The back annuities must be paid in respect of each patent within six months of the date of receipt of the official notification in this regard, i.e. before the non-extendible deadline of 22 June 2009. Failure to pay these back fees, or indeed any future annuities, will result in the lapse of the patent. As mentioned above, annuities are payable with effect from 2006, and annually thereafter, based on each anniversary of the grant date of the patent from 2006 onwards. For instance, for a patent granted on 28 October 1996, annuities are payable in respect of 2006 (the 11th annuity), 2007 (the 12th annuity), and 2008 (the 13th annuity). All of these back annuities are payable before 22 June 2009. In this example, the fee for 2009 (the 14th annuity) must then be paid before 28 October 2009, or within a six month grace period thereafter along with a late fine, and annually thereafter. Please let us know if you have any queries in this matter. 10th February 2009 Gambia - Registrar refusing apps for reregistration of granted EP/UK Patents As you may remember, we previously warned you of the possibility that our recent applications for the reregistration of granted UK or EP(UK) patents in Gambia would not be valid, by virtue of the publication of the new Industrial Property Act (which introduces a requirement of absolute novelty, and so precludes the filing of such reregistration applications), although it appeared that the Registrar was still accepting such applications. We regret to advise that the Registrar has now decided to refuse and return the reregistration applications which we have recently filed, and will not accept any further such applications. We are somewhat surprised by this development, as the Registrar has, until now, indicated that these applications were still permissible under the discretionary transitional provisions of the new law. We therefore regret that we will be unable to proceed further with such applications in the future. 3rd February 2009 Dominica - New Trade Marks Act in Force A new Act entitled the "Marks, Collective Marks and Trade Names Act of 1999" came into force in Dominica on 01 February 2009. This new Act abolishes the dual system of local applications, and those based on existing UK marks. The final deadline by which granted UK marks can be registered in Dominica will expire on 01 February 2010 - one year from the date of entry into force of the new law. U.K. based applications The transitional provisions of the new Act provide that any person who, on the coming into force of the new Act (01 February 2009), is the owner of a trade mark registered, or applied for, in the United Kingdom may, within 12 months of the entry into force of the new Act, file an application for registration of the same trade mark under the new Act. Any such applications will be accorded the filing date or priority date accorded to the application or registration in the United Kingdom. Local/Substantive applications under the new Act Previous Acts are repealed, however existing registrations shall remain in force for the unexpired portion of their existing term and may be renewed under the provisions of the new Act. Some points of particular significance are as follows :- The new law reduces the initial validity period from 14 years to 10 years, calculated from the date of application. Subsequent renewals will also be granted for consecutive periods of 10 years. The IP Officer and the Registry has advised that all pending UK and non-UK based applications that were filed under the old Act (prior to 01 February 2009) but published and/or registered on or after 01 February 2009 are considered to have been granted under the new Act and will be granted for an initial validity period of 10 years from the application date. It is now possible to claim Paris Convention priority. The International Classification of Goods and Services (9th Edition) has been adopted. The filing of multi-class applications is permitted. Existing national registrations must be re-classified upon renewal. Non-use of a mark for any continuous period of three (3) years following registration renders it vulnerable to cancellation on the grounds of non-use. A Trade Mark License Agreement must be recorded to the effective against third parties. License Agreement must provide for quality control, by the licensor, of the quality of the goods or services. Where a license agreement does not provide for such quality control, or if quality control is not effectively carried out, the license agreement will be considered invalid. Collective marks can be registered. A copy of the regulations governing the use of the collective mark must accompany the application. A Collective Mark may not be the subject of a License Agreement. Please do not hesitate to contact us if you require any further information. 2nd February 2009 Djibouti - New Industrial Property Legislation We are pleased to report that a new bill for the protection of industrial property was adopted on 27 January 2009 by the Council of Ministers. The legislation now awaits the approval of the House of Representatives, which we expect to take place within the next six months. Once enacted, the new law will come into force six months after its publication in the Official Journal. The new law provides for the official filing of applications for patents, integrated circuit diagrams, industrial designs and models, trade marks for products and services, commercial names, geographical indications and names of origin, as well as for the control of unfair competition. The implementation of the new law is subject to the establishment of the Djibouti Office of Industrial and Commercial Property, and to the Regulations being put in place. It may therefore be some time before the new law finally becomes effective. We will monitor this situation closely and will provide updates as soon as we have further news. 30th January 2009 Dominica - New Patent Act finally in force - UPDATE We have just ascertained that, frustratingly, and contrary to previous advice which we received from our associate in Dominica, the final deadline by which granted UK or European(UK) patents can be registered in Dominica will expire on 25 August 2009, and not 1 February 2009. We have only just received a copy of the new Patents Act and Regulations from our associate, and we noticed upon studying this law that a transitional period of one year from the date of entry into force of the new law was provided for this purpose. Thus, as the new law came into force on 25 August 2008, we immediately queried with our associate as to why we had been advised that the final date for filing reregistration applications would expire on 1 February 2009. In response, we have just been notified that this date was indeed wrongly reported by our associates, and that such applications can be validly filed before 25 August 2009. We apologize for any inconvenience caused by our associate's miscommunication of the deadline, and would ask that you kindly send us your instructions for the reregistration of any granted UK or EP(UK) patents in Dominica in good time before 25 August 2009 so as to ensure that we may file them before the expiry of this final deadline. 20th January 2009 Vanuatu - Amendments to Trade Marks and Patents Acts We have recently been advised by the Vanuatu Financial Services Commission that re-registration on the basis of an existing Community Trade Mark or an International Registration is not possible. This is despite the fact that the new trade mark laws clearly indicate that "If a person is a registered proprietor of a trade mark in a (EU) Member State; or by virtue of an entry in the Register of Trade Marks kept under the laws of the Member State or in accordance with the terms of a treaty; convention, arrangement or agreement to which the member State is a party the person may apply to have the trade mark registered in Vanuatu". We are taking the matter up with the Vanuatu Financial Services Commission as it would appear that the Commission does not understand the terms of its own law. However, for the forseeable future, applications in Vanuatu can only be based on national registrations in EU member states. In the meantime, if you have any question on the above, please do not hesitate to contact us. 20th January 2009

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