Lysaght & Co

Intellectual Property Newsroom

(Developments within the last 6 months)

Cambodia - Patent Applications may now be filed

We have just learnt that it has finally become possible to file patent applications in Cambodia, after many years of inactivity in this jurisdiction.

Patent applications may therefore now be filed by a national or resident of a member of the Paris Convention or WTO, or a national or resident of Cambodia. Applications may contain a claim to the priority of one or more earlier national applications filed in a member of the Paris Convention or WTO.

Should you require any further information on the documentary requirements or costs involved, please do not hesitate to contact us.

1st July 2008

Sao Tome & Principe - Accession to the PCT

With effect from 3 April 2008, Sao Tome & Principe became the 139th country to accede to the PCT at WIPO. The PCT will enter into force in Sao Tome & Principe with effect from 3 July 2008, and will be automatically designated in each PCT application that is filed from this date on.

Please note that, whilst Sao Tome & Principe will be bound by the PCT from this date, we understand that it has not yet amended its patent law in order to permit the processing of national phase applications. It is likely therefore that such national phase applications, once filed, will remain dormant until such time as the law has been amended and the Patent Office has issued guidelines for the processing of PCT applications.

24th June 2008

OAPI - Accession to the Hague Agreement

The African Intellectual Property Organization (OAPI) acceded to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs on 16 June 2008, and its accession will become effective as from 16 September 2008.

The Hague System now has a total number of 49 contracting parties covering 70 states, and the Geneva Act has effect in 27 of these contracting parties covering 61 states.

20th June 2008

Kosovo - Update

Further to our previous updates on Kosovo, we have now been informed that the deadline for revalidating existing Yugoslavian or Serbia and Montenegrin registrations in Kosovo is definitely 1 October 2008.

We invite any clients interested in obtaining such rights in Kosovo, to send us their instructions at their earliest convenience.

16th June 2008

Montenegro - Intellectual Property Office has now opened

The IP Office in Montenegro opened on 28 May 2008, and is now operational and accepting new applications.

It will not be necessary to file for revalidation of any Serbian registrations that were registered prior to 28 May 2008, as these will automatically be valid in Montenegro until their next renewal date. However any changes to be recorded, or maintenance of these rights, will need to be effected separately in both Serbia and Montenegro.

Regarding Serbian applications that were still pending as at the cut off date of 28 May 2008, these will need to be applied for and examined in Montenegro. A copy of the Serbian application as filed will need to be submitted as evidence with the application in Montenegro, whereupon the Montenegrin application will be afforded the Serbian application/priority date.

To file a new national application we will require a Power of Attorney to be simply signed by an authorised signatory of the applicant company.

If you require a re-application of a pending Serbian application to be filed in Montenegro, we will need to have a copy of the Serbian application to evidence the filing date. Our associates can obtain this directly from Serbia, but we will of course need you to provide us with the Serbian application number.

28th May 2008

Montenegro - Opening of the Intellectual Property Office - 28 May 2008

The Intellectual Property Office of Montenegro will be inaugurated on 28 May 2008, and is supposed to become operational between 29 May 2008 and 2 June 2008.

Validity of Registered Serbian National IP Rights:

All national Intellectual Property rights registered in Serbia prior to the inauguration of the Montenegro IP Office will automatically be valid in Montenegro. Although it is probable that the Montenegro IP Office will require IP holders to submit written proof of validity of their rights in Serbia on the date of inauguration of the Montenegro IP Office, there will be no formal need for a full revalidation procedure. We should have the details of the procedure involved once the IP Office of Montenegro is inaugurated.

Validity of Pending Serbian National IP Rights:

National Intellectual Property rights applied for in Serbia, which have not been registered prior to the inauguration of Montenegro IP Office, will have to be re-applied for in Montenegro within a period of six months in order to maintain the Serbian priority date. Subsequently, these rights will be examined and registered locally in Montenegro.

9th May 2008

Vanuatu - Revisions to Trade Marks Act

We have been advised by the Vanuatu authorities that a new Bill amending the existing Trade Marks Law has been passed by Parliament and will be brought into force shortly.

Currently, the Vanuatu law only allows for the re-registration of existing national UK registrations. At the moment, we have no details of what changes might be brought about by the new Bill, but we will publish further information as and when it is received.

24th April 2008

Kosovo - Update

We refer to our earlier articles regarding the inauguration of the Kosovan Intellectual Property Office.

Contrary to previous indications that the deadline for revalidating existing Yugoslavian or Serbia and Montenegrin registrations in Kosovo is 1 October 2008, we have ascertained that this deadline may well prove to be earlier. We are awaiting further news in this respect, once the Kosovan IP Office has issued a notice setting the final deadline. In the meantime, we would recommend that you send us any instructions in this regard by 1 September 2008 at the latest, to ensure that no rights are prejudiced.

Please also note that, in order to revalidate granted Yugoslavian or Serbia and Montenegrin patent registrations in Kosovo, the Kosovan Patent Office will require a certified copy of a Certificate of Validity from the Serbian Patent Office. Whilst we would be pleased to obtain this document on your behalf, we would point out that it may take some weeks for the Serbian Patent Office to issue these Certificates once requested, and we have ascertained that simple copies will not be accepted by the Kosovan authorities. Please therefore ensure that you instruct us in relation to any of your cases as soon as possible, to ensure that we can obtain the necessary Certificate of Validity and submit this to the Kosovan Patent Office in good time before the deadline (which, as mentioned above, may be as early as September 2008).

We will report all further news in this matter promptly.

11th April 2008

OAPI - Extension of rights to new territories

We wish to draw your attention to an important change in OAPI practice regarding the extension of rights to new territories.

An OAPI registration covers those territories that are members of OAPI at the time of registration. Following the introduction of the Extension Regulation on 4 December 1998, it became possible to extend rights to territories that join OAPI subsequently, by filing an application for extension.

On 1 January 2008 the Extension Regulation was amended to introduce the concept of automatic extension on renewal. The intention of the amendment is to confirm that all trade marks renewed after 4 December 1998 extend automatically to the countries that are members of OAPI at the time of renewal, effective from the date of renewal.

As a consequence of this amendment, OAPI is now rejecting applications for extension to territories which it considers are already protected as a result of a prior renewal. However, it still remains possible to apply for extension of rights to a new country at any time before the renewal of the OAPI right.

Although this new interpretation of the law is a practical and cost-effective solution to the extension of rights to new OAPI countries, we are concerned that this regulatory amendment may be open to challenge for being in conflict with the law, which requires an extension application to be filed in order to extend existing OAPI registrations to new jurisdictions, and makes no mention of automatic extension on renewal.

A second issue is the wording of the amendment itself. The amendment is intended to take retroactive effect and apply to all renewals filed since the Extension Regulation came into effect on 4 December 1998. However, this is not clear from the wording of the amendment, which on strict interpretation implies that only renewals filed after 1 January 2008 extend automatically to all the OAPI states.

We have discussed our concerns with OAPI, who have maintained their position. In OAPI’s view the Extension Regulation and its subsequent amendment does not conflict with the law, but serves to clarify a matter over which the law itself silent. The fact that the law provides for the filing of extension applications does not preclude automatic extension on renewal, but gives IP owners the option of applying for extension of rights if they wish, before renewal takes place.

In conclusion, although we have reservations about the legal basis for this new application of the law, we believe that in practice it is most unlikely that a court would fail to support OAPI’s change in procedure. Furthermore, OAPI have confirmed that the Bangui Accord is due to be revised in the next two years and that any inconsistencies will then be rectified.

27th March 2008

Gambia - Implementation of Industrial Property Act 1989

The Industrial Property Act 1989 entered into force in Gambia on 2 April 2007. The new act repeals the 1916 Act and introduces the International Classification of Goods and Services.

Despite the effective date of 2 April 2007, the relevant Regulations have yet to enter into force, but in a communication issued on 25 March 2008, the Registrar states that applications will be accepted in the international classes with immediate effect. Applications following the former classification will be accepted up to 2 April 2008; thereafter, they will be refused unless filed in international classes.

We are also advised that all applications received from 2 April 2007 will be reclassified into the International Classification by the Registrar, although at present it is unclear what the process for reclassification will be. We understand that the Registrar has decided that she will reclassify existing applications, rather than the agents who filed the applications. Given the staff shortages at the Registry, and the speed at which matters are normally handled in Gambia, we are not at all optimistic that the reclassification of existing cases will take place in the foreseeable future. Furthermore, we are not convinced that the Registrar will reclassify the applications correctly, and it is presently not known whether we will be able to appeal against any reclassifications which are obviously incorrect. It is also unclear as to which version of the International Classification will be used, although we believe that it is likely to be the ninth edition.

Nevertheless, the written confirmation that the International Classification is in use, and that service marks are being accepted, must be welcomed. Gambia is one of the few countries in the region with a significant tourism industry, and we recommend that trade mark owners active in the service classes should file their trade marks in Gambia as soon as possible.

26th March 2008

Madagascar - Accession to the Madrid Protocol

On 28 January 2008, Madagascar deposited its instrument of accession to the Madrid Protocol concerning the International Registration of Marks. The Protocol enters into force in Madagascar on 28 April 2008.

Furthermore, Madagascar has announced that the time limit of one year to exercise the right to notify a refusal of protection of an international application is replaced by 18 months, in accordance with Article 5(2)(d) of the Protocol.

We anticipate that because of the relative ease of filing through the International Registration system, there will be a significant increase in companies wishing to register their marks in Madagascar. However, it is important for potential applicants to understand the trade mark registration system which operates in Madagascar, a first to file system which does not recognise common law rights through use. Applications are examined on relative grounds and in practice will be refused in the event that an identical or closely similar mark already exists. However, there is no provision to appeal against refusals to OMAPI, the Trade Mark Office; appeals must be filed through the courts. Similarly, whilst trade marks are published they cannot be opposed; the only remedy available is cancellation, which again must be filed through the courts. Not only does this make trade mark prosecution expensive, cases brought before the courts are subject to lengthy delays, and the level of knowledge of IP among judges and court officials in Madagascar is not particularly high, to say the least.

Furthermore Madagascar is a country in which trade mark piracy is rife, and local distributors of western products will regularly register the trade marks of the goods they are selling, but in their own name. We know of at least one local company that makes a habit of registering popular western brand names in their own name before the proprietor has done so, resulting in the rejection of the proprietor’s subsequent application by OMAPI. In the absence of an earlier registered right, it is extremely difficult to obtain cancellation of such registrations as there is no specific provision in the law to do so on the basis that they were filed in bad faith. Although Madagascar recognises the provisions of Article 6bis of the Paris Convention, owners of lesser-known marks who find that their marks are already registered are likely have problems in trying to cancel such registrations.

We take this opportunity to remind you that it is important for proprietors of trade marks which they intend to use in Madagascar, to register them sooner rather than later. Further, we recommend that proprietors wishing to file their trade mark in Madagascar, whether via Madrid or nationally, should conduct searches prior to filing to establish whether any problems are likely to be encountered. Searches in Madagascar are reliable by African standards and results can be obtained within 3 - 4 working days.

We have been lobbying OMAPI for changes in the law. Specific provision needs to be made for opposition, and such proceedings should be heard at OMAPI rather than by the courts. The law should also be amended to allow for opposition and cancellation proceedings to be filed on the basis of bad faith; ideally, we would like OMAPI to handle cancellation proceedings in the first instance as well.

It is hoped that Madagascar's accession to the Madrid Protocol will lead to a significant increase in demand for such changes in the law to be made.

14th March 2008

Bangladesh - Introduction of Service Marks

We have received reports from Bangladesh that the Trade Marks Act 2008 is now in force. The purpose of the new Act is to introduce service mark registration. It is understood that the Ninth Edition of the Nice Classification is being followed.

No further information about the contents of the new law, apart from the introduction of service marks, is known at this time. We understand that multi-class applications are still not accepted, so it seems likely that the introduction of service marks is the only feature of the new law. However, we recommend that any clients who may wish to register trade marks in the service classes should file as soon as possible.

Further information will be posted on this website as and when it is received.

13th March 2008

Gambia - Publication of Trade Marks Journal

We are very pleased to report that for the first time in 26 years, Gambia is beginning to publish the Trade Marks Journal again. This will come as a relief to applicants whose trade marks have been pending for over a quarter of a century, simply because publication has not taken place.

The Registry has indicated that it intends to deal with the considerable backlog of pending cases by publishing a significant number of Bulletins this year. Further information will be posted on this website as and when it has been received.

7th March 2008

Madagascar - Membership of Madrid Protocol

WIPO has announced that the terms of the Madrid Protocol will enter into force in Madagascar on 28 April 2008. However, we have yet to receive independent verification from OMAPI that the Madrid system will be fully operational as of that date. We will update this website as soon as further information is received.

7th March 2008

Kosovo - Update

As previously reported, the Kosovo IP Office opened on 19 November 2007. Since this date, it has been possible to file applications for the revalidation of existing Yugoslavian or Serbia and Montenegrin registrations, and to file new independent applications for trade marks, patents and designs. However, the IPO has recently advised that the deadline to revalidate such cases in Kosovo is 1 October 2008, not 18 November 2008 as previously advised.

The situation regarding International Registrations covering Serbia is that they are not enforceable in Kosovo. Whilst Serbia is a member of both the Madrid Agreement and Protocol, Kosovo is not, and as Kosovo does not consider itself to be part of Serbia, International Registrations covering Serbia are not valid or enforceable in Kosovo. Unfortunately, nothing can be done to remedy the situation as Kosovo cannot become a signatory to the Madrid Agreement or the Madrid Protocol unless it becomes a member of WIPO, and it cannot become a member of WIPO until it becomes a member of the UN. Due to the political problems relating to the international status of Kosovo, this cannot be expected to change in the near future.

Therefore, we recommend that holders of International Registrations covering Serbia should apply to register their marks as national applications in Kosovo, if protection in Kosovo is desired.

4th March 2008

Gambia - Revised Industrial Property Law - Patent Reregistrations

As previously posted on this website, we have been aware since November 2007 that the Industrial Property Act (1989) was published in the Gambia on 2 April 2007. Unfortunately, however, this fact was not made known either to local agents in the Gambia or internationally at the time of publication of the law, and there is a great deal of confusion as to whether the new law is actually in force now that it has been published. As the necessary implementing Rules and Regulations have yet to be prepared and published, it is believed by some that the law is not yet in full force and effect. However, others have been led to believe that the new law is indeed fully effective and that the provisions of the old laws are no longer applicable. We are currently awaiting urgent written clarification from the Gambian Registrar to this effect, but unfortunately the situation is still, at the time of writing, unresolved.

The new Act, once in effect, will repeal the following intellectual property Acts:

• The Registration of United Kingdom Patents Act 1925
• The United Kingdom Designs (Protection) Act 1936
• The Trade Marks Act 1916

The main implications of the new law, from a patent perspective, are as follows:

Requirements for patentability
• An invention must now satisfy the requirements of absolute novelty, inventive step and industrial applicability, and it must not relate to "excluded" subject matter (please see below).

Reregistration of granted UK patents
• A requirement of absolute novelty of inventions is specified in the new law. Thus, the new law does not provide for the filing of applications for reregistration of granted UK or EP(UK) patents in the Gambia.

• However, the new Act does include transitional provisions, which set a period of 12 months from entry into force of the revised Act, during which proprietors of UK or European(UK) patents may still apply for reregistration of their patents. The transitional period will expire on 2 April 2008, if it is deemed that the new law came into force on 2 April 2007. As stressed above, this is not yet clarified, and the deadline may well prove to be irrelevant or may be extended under the discretion of the Registrar. Please do, however, bear this date in mind should you have any UK patents that you wish to reregister in the Gambia, as it may well be that the date of 2 April 2008 is in fact strictly adhered to by the Registry.

Term of Protection and Annuity Payments
• The new law specifies that a patent will be granted for a term of 15 years, extensible by a further five years upon request and upon provision of proof of working of the invention in the Gambia. Annuities are now payable annually, commencing on the first anniversary of the filing date of a patent application. Under the old law, maintenance fees were payable every four years from the date of registration of a patent in the Gambia.

• Whilst it appears that annuities will be payable annually in respect of both UK-based reregistration patents and local independent patents, it is not yet clear whether back annuities will be payable in respect of existing cases, or indeed how existing cases will be treated under these new provisions. We are still awaiting clarification in this regard.

Exclusions from patentability
• The new Patents Act lists several exclusions from patentability in the Gambia. Of particular note is the exclusion of methods of treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body. This exclusion does not extend to products for use in any of these methods. We therefore suggest that claims relating to methods of treatment be drafted in the form: "Substance X for use in a method of treating disease Y" (in cases where Substance X has not been disclosed for use in the treatment of any such method in the prior art), or as Swiss-style claims ("Use of Substance X in the manufacture of a medicament for treating disease Y").

Utility Models
• The revised Act provides for the grant of utility model certificates and independent design registrations in the Gambia.

We will post further information on this website as soon as we have any news to report.

Please do not hesitate to contact us should you require any clarification of the above matters.

27th February 2008

Dominica - Registration of Service Marks now Possible

For many years, Dominica has operated a dual system of trade mark registration. Applications may be filed locally, but the local law still uses the former British classification of fifty goods classes. Trade mark owners with national UK registrations can also base applications on their existing UK rights, and the resulting registration in Dominica will mirror that of the UK. However, until recently, it was not possible to include any of the service classes in a UK-based application.

We have just been informed that the Registrar in Dominica has determined that it is now possible to register service marks in Dominica, provided applications are based on a corresponding UK registration which is registered in the service classes. The situation regarding locally filed substantive applications remains unchanged.

Full particulars of this change in practice, particularly the effective date, have yet to be determined, and further information will be posted on our website as and when it is received.

26th February 2008