trademark registration in uae

Jitendra Trademark Covers.indd 2-3 5/12/10 11:17:28 PM

Contents1. Introduction ............................................................ 22. FAQs ...................................................................... 33. 9th Edition of International Classification of .......... 9 Goods & Services4. 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 ............................................................... 495. Samples, Formats and Procedure • Deed of Assignment ....................................... 52 • Power of Attorney ........................................... 55 • Trademark Registration Procedure in UAE .... 566. Worldwide Registration Requirements • European Community Trademark ( CTM) ...... 57 • ARIPO ( African Regional Industrial

Property Organization) ................................... 58 • Madrid system for International Registration

of Trademarks ................................................ 60 • Trademark Registration in India ...................... 61 • List of Countries Served by us ........................ 63

DisclaimerTrademark 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 difficulty.

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.


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Trademark Registration Pocket Book, Middle East, 2010

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.

2. 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.

3. 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.

4. 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.

IntroductionThis 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 shallensue 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 itscampaign. 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 andServices (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.

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- 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.

6. 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.

7. 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.

8. 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.

Other forms of intellectual propertyPeople 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:

• 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 anycombination of these features), applied to a finishedarticle of manufacture;

• integrated circuit topographies refer to the three-dimensional configuration of the electronic circuitsembodied in integrated circuit products or layout designs.

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

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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 rightsover 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

9. 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 meetthe 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 subsequentten-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. Forexample, 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 well-known mark and/or causing damage to its reputation or goodwill.

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9TH EDITION OF INTERNATIONAL CLASSIFICATION

OF GOODS & SERVICESGOODS

CLASS 1 (Chemicals) Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fireextinguishing 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, as registration will reinforce the position of the right holder in case of litigation.

18. Foreign registrationRegistering your trade-mark with the Trade-marks Officeprotects 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 trade-mark 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.

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instruments, artificial limbs, eyes and teeth; orthopedicarticles; suture materials.

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

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

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

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 officerequisites(except furniture); instructionaland 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

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

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 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 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; fire-extinguishing apparatus.

CLASS 10 (Medical apparatus) Surgical, medical, dental and veterinary apparatus and

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

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

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, driedand 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 andconfectionery, 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

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

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 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 stuffingmaterials (except of rubber or plastics); raw fibrous textilematerials.

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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 designrelating thereto:industrial analysis and research services; design and development of computer hardware and software; legal services.

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

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.

not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs foranimals, 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 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 estateaffairs.

CLASS 37 (Building construction and repair) Building construction; repair; installation services.

CLASS 38 (Telecommunications)

CLASS 39 (Transportation and storage) Transport; packaging and storage of goods; travel arrangement.

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6. Memorandum and Articles of Association (Notarised and Attested)

Time FrameThe assignment shall be completed within 12-15 month.

OppositionTrademark applications accepted by the Registrar are published in the Trademark Bulletin. Oppositions may be filed within 30 days from publication date. Extension of timefor oppositions /counter-oppositions or for responding to office actions with exceptions of that relating to preliminaryexamination is not possible.

Protection TermTrademark registrations are valid for 10 years from filing dateand are renewable for like periods. There is a grace period of 3 months with surcharge for late renewals.

Documents required for renewal1. Power of Attorney legalized2. Copy of certificate of registration of the trademark

Use RequirementsUse 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 Requirements1. Power of Attorney from the assignee, legalized2. Deed of Assigment, legalized, with English

Translation 3. Copy of registration certificate of the marks

JURISDICTIONS AND REGISTRATION REQUIREMENTS

REGISTRATION IN GCC

UNITED ARAB EMIRATES

ClassificationThe 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 mark3. Passport copy of the Applicant4. Certified copy of the Trademark/Design registered in

any other country (Notarised and Attested)

B) Corporate Applicant1. A Power Of Attorney duly notarized and legalized up

to the Consulate of the UAE2. 20 prints of the trademark/service mark3. 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 sponsor5. Passport copies of all partners

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BAHRAIN

ClassificationThe 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.


1. A Power Of Attorney duly notarized and legalized up to the Consulate of the Bahrain


any other country5. Any document providing that he/she is registered as

a trader or conducting a business activity (instead of the certificate of incorporation

B) Corporate Applicant. 1. Power Of Attorney duly notarized and legalized up to

the Consulate of the Bahrain2. 10 prints of the trademark/service mark3. 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 sponsor5. Passport copies of all partners6. Memorandum and Articles of Association (Notarised

and Attested)

Change of Name/Address Application1. Power of attorney legalized2. Certificate of change of name/address, legalized3. Copy of registration certificate of the mark

LicensingLicense recordal is not compulsory but advisable in order to be effective against third parties.

1. Power of Attorney legalized2. Legalized License agreement

CancellationA 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.

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1. Power of Attorney, simply signed2. License agre ement, legalized

CancellationA 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.

Time FrameThe Assignment shall be completed within 18 months.

OppositionTrademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filedwithin 60 days from publication date. Extension of time for oppositions is not possible. Extension of time for counter-oppositions or for responding to office actions is possible.


Documents required for renewalPower of Attorney simply signed.

Use RequirementsUse 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 Requirements1. Power of Attorney from the assignee, simply signed2. Deed of Assignment signed by both parties

legalized

Change of Name/Address Application1. Power of attorney in the new name or address,

simply signed legalized2. A letter from the owner of the trademark to this effect

addressed to the Registrar

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OppositionTrademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filedwithin 30 days from the third publication in the Official Gazette.Extension of time for oppositions/counter- oppositions or for responding to office actions is not possible.


Documents required for renewal1 Power of Attorney legalized2 Original Kuwaiti certificate of registration of the mark

for endorsement


Assignment Requirements1. Power of Attorney from the assignee, legalized2. Deed of Assigment, legalized3. Original certificate of registration of the mark for

endorsement

Change of Name/Address Application1. Power of attorney legalized2. Official certificate evidencing the change of name/

address

KUWAIT

ClassificationThe 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


any other country

B) Corporate Applicant1. A Power Of Attorney duly notarized and legalized up

to the Consulate of the Kuwait2. 20 prints of the trademark/service mark3. Trade License/Certificate of Incorporation i.e.


Passport of the Local sponsor5. Passport copies of all partners6. Memorandum and Articles of Association. (Notarised

and Attested)


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SAUDI ARABIA

ClassificationThe 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.


1. A Power Of Attorney duly notarized and legalized up to the Consulate of the KSA


any other country

B) Corporate Applicant. 1. A Power Of Attorney duly notarized and legalized up

to the Consulate of the KSA2. 20 prints of the trademark/service mark3. Trade License/Certificate of Incorporation i.e.



and Attested)

LicensingIf 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 thecommercial register would then be duly recognized by the Courts if conflicts arise.

CancellationA trademark is subject to cancellation before the Court by any interested within 5 years from registration date.

Fines and PenaltiesPayment of fines of up to 600 Kuwaiti Dinar (app. US $ 2,000)and/or imprisonment.

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Change of Name/Address Application1. Power of attorney legalized2. Certificate of change of name/address, legalized3. Original Saudi registration certificate of the mark for

endorsement


1. Power of Attorney, legalized2. License agreement, legalized3. Original Saudi registration certificate of the mark for

endorsement

CancellationA 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.


OppositionTrademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filedbefore the Board of Grievances (First Instance Court) within 90 days from publication date. Extension of time for oppositions/counter- oppositions or for responding to officeactions is not possible.

Protection TermTrademark registrations are valid for 10 Hijri years (approximately 9 years and 8 months) from filing date and arerenewable for like periods. There is a grace period of 6 lunar months for late renewals with payment of a surcharge.

Documents required for renewal1. Power of Attorney legalized2. Original Saudi registration certificate of the mark for

endorsement


Assignment Requirements1. Power of Attorney from the assignee, legalized2. Deed of Assigment, legalized3. Original Saudi registration certificate of the mark for

endorsement

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Time FrameThe Assignment will be completed within 3 years.

OppositionTrademarks Application accepted by the Registrar are published in the Gazette of Trademarks. Oppositions may be filed within 4 months from publication date. Extension oftime for oppositions/counter- oppositions or for responding to office actions is not possible.


Documents required for renewal1. Power of Attorney legalized


Assignment Requirements1. Power of Attorney from the assignee, legalized2. Deed of Assigment, legalized3. Copy of certificate of incorporation of assignee

Change of Name/Address Application1. Power of attorney legalized2. Extract from the commercial register or any other

document evidencing this change, legalized.

QATAR

ClassificationThe 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.


1. Power Of Attorney duly notarized and legalized up to the Consulate of the Qatar



a trader or conducting a business activity (instead of the certificate of incorporation

B) Corporate Applicant. 1. Power Of Attorney duly notarized and legalized up to

the Consulate of the Qatar2. 10 prints of the trademark/service mark3. Trade License/Certificate of Incorporation i.e.



and Attested)

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OMAN

ClassificationThe international classification of goods and services (8th edition) is followed. A separate application is required for each class.


1. Power Of Attorney duly notarized and legalized up to the Consulate of the Oman



a trader or conducting a business activity (instead of the certificate of incorporation)

B. Corporate Applicant1. Power Of Attorney duly notarized and legalized up to

the Consulate of the Oman2. 10 prints of the trademark/service mark3. Trade License/Certificate of Incorporation i.e.



and Attested)

LicensingLicense recordal is compulsory in order to be effective against third parties.

1. Power of Attorney, legalized2. License Agreement, legalized3. Copy of certificate of incorporation of licensee

CancellationA 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 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.

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1. Power of Attorney, legalized2. License agreement, legalized3. Copy of certificate of incorporation, certified

CancellationA 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.

Time FrameAssignment shall be completed within 3 years.

OppositionTrademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filedwithin 2 months from publication date. Extension of time for oppositions/counter- oppositions or for responding to officeactions is not possible.


Documents required for renewal1. Power of Attorney legalized


Assignment Requirements1. Power of Attorney from the assignee, legalized2 Deed of Assigment, legalized3 Copy of certificate of incorporation, certified

Change of Name/Address Application1. Power of attorney legalized2. Certificate of change of name/address, legalized

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6 months for late renewals with payment of a surcharge.

Documents required for renewal1. Power of Attorney in French simply signed stating

title of the signatory2. 15 prints of the mark3. Proof of use

Use RequirementsUse 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.

AssignmentTrademark 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 Application1. Power of attorney in French simply signed2. Certificate of change of name/address of the

applicant with French translation, notarized

LicensingLicense 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

REGISTRATION IN MIDDLE EAST COUNTRIES

ALGERIA

ClassificationThe international classification of goods and services (9th edition) is followed. A single application may include several classes.

Filing Requirements1. 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 FrameThe Assignment shall be completed within 2 years.

OppositionTrademark applications are published in the Official Gazetteafter registration, and there is no provision for filing anopposition to the registration of a mark.

Extension of TimeExtension of time is not possible.

Protection TermTrademark registrations are valid for 10 years from filing dateand are renewable for like periods. There is a grace period of

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EGYPT

ClassificationThe international classification of goods and services (8th edition) is followed. A separate application is required for each class.

Filing Requirements1. A Power of Attorney legalized. A general power of

attorney may be used for subsequent filings2. Copy of priority document, if priority is claimed,

certified3. 10 prints of the mark for each application


OppositionTrademark applications accepted by the Registrar are published in the trademark Gazette. Oppositions may be filedwithin 60 days from publication date.

Extension of TimeExtension of time for oppositions/counter oppositions or for responding to office actions is not possible.

Protection TermTrademark registrations are valid for 10 years from filing dateand are renewable for like periods. There is a grace period of 6 months for late renewals with payment of a surcharge.

Documents required for renewalPower of Attorney legalized.

MarkingMarking is not compulsory

CancellationA trademark is subject to cancellation before the court by any interested party within 5 years from filing date.

38 39


Use RequirementsUse 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 from registration date.


1. Power of Attorney from the assignee, legalized2. Power of Attorney from the assignor, legalized3. Deed of Assigment, legalized4. Certificate of incorporation of the assignee,

legalized

Change of Name/Address Application1. Power of attorney, legalized2. Certificate of change of name/address of the

applicant, legalized


1. Power of Attorney from licensor, legalized2. Power of Attorney from licensee, legalized3. License Agreement, legalized4. Certificate of incorporation of the licensee, legalized

MarkingMarking is not compulsoryCancellationA trademark is subject to cancellation before the court by any interested party within 5 years from registration date.

IRAN

ClassificationThe 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.


attorney may be used for subsequent filings2. Copy of home or foreign registration, certified. If

unavailable, same will be indicated on the registration certificate




OppositionTrademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filedwithin 30 days from publication date.


Protection TermTrademark registrations are valid for 10 years from filing dateand are renewable for like periods. There is a grace period of

40 41


6 months for late renewals without payment of a surcharge.




1. Power of Attorney from the assignee, legalized2. Deed of Assigment, legalized3. Original registration certificate of the mark(s) for

endorsement

Change of Name/Address Application1. Power of attorney, legalized2. Extract from the commercial register or any other

document evidencing this change, legalized3. Original registration certificate of the mark(s) for

endorsement


1. Power of Attorney, legalized2. Copy of License Agreement, legalized

MarkingMarking is not compulsory.

CancellationCancellation proceedings must be brought within 3 years from registration date, after 3 years the trademark is deemed incontestable.

42 43


IRAQ

ClassificationThe international classification of goods and services (7th edition) is followed with local sub-classification. A singleapplication may include several classes and sub-classes.


attorney may be used for subsequent filings2. Copy of priority document, if priority is claimed,

certified3. 10 prints of the mark for each application ( Arabic

transliteration is required)

Time FrameThe Assignment shall be completed within 2 years.

OppositionTrademark applications accepted by the Registrar are published in the Trademark Bulletin. Oppositions may be filedwithin 90 days from the third bulletin publication date.


Protection TermTrademark registrations are valid for 10 years from filing dateand are renewable for like periods. There is no grace period of 6 months for late renewal of a trademark.


Re-registration of a lapsed mark is possible within one month from the renewal deadline.


AssignmentTrademark 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, legalized2. Deed of Assigment, legalized

Change of Name/Address Application1. Power of attorney, legalized2. 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.


1. Power of Attorney, legalized2. License Agreement, legalized

44 45



CancellationA 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

ClassificationThe international classification of goods and services (7th edition) is followed with local sub-classification. Aseparateapplication is required for each class.


attorney may be used for subsequent filings2. Copy of priority document, if priority is claimed, certified3. Prints of the mark


OppositionTrademark applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filedwithin 90 days from the publication date.

Extension of TimeExtension of time for oppositions/counter oppositions or for responding to office actions is possible.

Protection TermTrademark registrations are valid for 10 years from filing dateor 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.


46 47


Use RequirementsUse 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 forcancellation.


1. Power of Attorney from the assignee, legalized2. Deed of Assigment, legalized

Change of Name/Address Application1. Power of attorney, legalized2. Certificate of change of name, legalized

For a change of address, only a legalized power of attorney showing new address is required.


1. Power of Attorney, simply legalized2. License Agreement, legalized with Arabic translation


CancellationA trademark is subject to cancellation by any interested party within 5 years from registration date.

LEBANON

ClassificationThe international classification of goods and services (9th edition) is followed. A single application may include several classes.

Filing Requirements1. A Power of Attorney simply signed. A separate power

is required for each application2. Copy of priority document, if priority is claimed,

certified3. 1 film and 3 prints of the mark


OppositionTrademark applications accepted by the Registrar are published in the Official Gazette. Oppositions to any registeredtrademark may be filed before the court.

Extension of TimeExtension of time is not possible.


Documents required for renewal1. Power of Attorney, simply signed2. 1 film and 3 prints

48 49


Use RequirementsUse of a trademark is not required for registration or renewal of a mark.

AssignmentTrademark 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 signed2. Deed of Assigment, legalized

Change of Name/Address Application1. Power of attorney, simply signed2. Certificate of change of name, legalized

For a change of name, no documents are required.


1. Power of Attorney, simply legalized2. License Agreement, legalized


CancellationA trademark is subject to cancellation by any interested party within 5 years from filing date.

LIBYA

ClassificationThe 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 Requirements1. A Power of Attorney legalized. A general power may

be used for subsequent filings2. Certificate of incorporation or extract from the

commercial register, legalized, with sworn Arabic translation




OppositionTrademark applications accepted by the Registrar are published in the Official Gazette before registration.Oppositions may be filed within 3 months from the filingdate.


50 51



Documents required for renewalPower of Attorney, legalized.

Use RequirementsUse 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 from the assignee, legalized2. Deed of Assigment, together with goodwill of the

business, legalized, with sworn Arabic translation3. Certificate of incorporation or extract from the

commercial register, legalized, with sworn Arabic translation

Change of Name/Address Application1. Power of attorney, legalized2. Certificate of change of name/ address from Home

Registry, legalized

LicensingLicense recordal is not compulsory, but advisable in order to be effective against third parties.

1. Power of Attorney, legalized2. License Agreement, legalized, with sworn Arabic

Translation3. Certificate of Incorporation or extract from the

commercial register, legalized with sworn Arabic Translation


CancellationA trademark is subject to cancellation by any interested party within 5 years from the date of registration.

52 53


JITENDRA INTELLECTUAL PROPERTY

لـــلـــمـــلـــكـــيـــة جـــتـــيـــنـــدراالـــفـــكريــــــة

Deed of Assignment مـــلـــكـــيـــة نـــقـــل عـــقـــد

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

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

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

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

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

............................................................................................ في المقيم….……………....…………………

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

جهة: اليه) من بالمحول يلي (المسمى فيما

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

الوحيد المالك هو المحول أن حيثفي.................. المسجلة التجارية للعالماتتحت ..............................................

األرقام:........................................................................................................................................................................

DEED OF ASSIGNMENT

SAMPLES, FORMATS AND PROCEDURE

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).

اليه على المحول مع اتفق قد المحول وحيث أنالتجارية العالمات ملكية وتحويل وبيع نقل

اليه. الى المحول المذكورة

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. 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.

وبمقابل ية المذكورة لالتفاق ووفقا بذلك اشهادامبلغ............................................المحول يعترف الذي ........................المحول الى ويحول المحول ينقل باستالمه.أعاله المذكورة التجارية العالمات ملكية اليه التي بالبضاعة المتعلقة التجارية السمعة معأصبحت وبذلك العالمات، هذه سجلت أجلها منملكا تاريخه من االتفاق موضوع هذا العالماتمطلقة. بصورة يخلفه ومن اليه للمحول خاصاالملكية تحويل اليه والمحول المحول ويقبل

بهذا الذكر ويوكالن اآلنفة..................................................الضرورية االجراءات التخاذ .................المسجل دائرة لدى العقد هذا بتسجيل للقيام

المختص.

………………… to pursue the necessary procedures to effect the resignation of this Deed at the Registrar’s Officeconcerned.

العقد بهذا وضعت فقد تقدم ما على استشهادااليوم في المذكورين لألطراف والتواقيع االختام

والسنة المبينين أعاله.

54 55


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

Assignee(s)اليه المحول

Assignor(s)المحول

POWER OF ATTORNEY

I/We..................................................................................................Of.......................................................................................................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 thesaid 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 ratifywhatsoever 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 ………………………………………………………

56 57


Favourable Unfavourable

TRADEMARK REGISTRATION PROCEDURE IN UAE

Stop

Filing Of Trademark Application

Rejection

Unfavourable Favourable

Approval From Ministry

Objection Publication In Website

Publication In OfficialGazette Cd

Trademark Certification

* The above process takes approximately 12 to 15 months

Stop

Unfavourable Favourable

Stop

Search

Initial Inspection

Appeal Paper Publication In 2 Local Newspapers

Appeal

Requirements1. 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.

WORLDWIDE REGISTRATION REQUIREMENTS

European Community Trademark (CTM)A CTM registration will be one trademark right covering all the countries of the European Union namely:

1. Austria 2. Belgium 3. Cyprus 4. Czech Republic 5. Denmark 6. Estonia 7. Finland 8. France 9. Germany 10. Greece 11. Hungary 12. Ireland 13. Italy 14. Latvia

15. Lithuania 16. Luxembourg 17. Malta 18. Poland 19. Portugal 20. Slovakia 21. Slovenia 22. Spain 23. Sweden 24. The Netherlands 25. United Kingdom26. Bulgaria27. Romania

58 59


ARIPO AFRICAN REGIONAL INDUSTRIAL

PROPERTY ORGANIZATIONAfrican 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 fifteencountries of English ذspeaking Africa (Anglophone Africa) or strictly speaking former British colonies.

ARIPO office administers Intellectual Property matters asprovided 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.

The ARIPO regional system provides choice as to the route of filing applications namely, the member state route and theARIPO office route. An applicant may file a single applicationeither at one of the contracting state office or directly toARIPO office. An applicant whichever route he chooses hasthe 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.

ClassificationThe 42 classes of the International classification of goodsand services are followed for Botswana, Lesotho, Namibia,

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.

DurationA 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

60 61


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 regionaltrademark office. An international mark so registered isequivalent 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 greatlythe 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.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.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.

TRADEMARK REGISTRATION IN INDIAIndia follows the 8th edition of NICE classification, but theRegistry 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 Requirements1. A simple signed Power of Attorney2. Name(s), nationality, occupation and address of the

applicant(s)3. 10 copies of the mark4. A certified priority document or a copy of it duly notarized,

if priority is to be claimed5. 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 FrameThe Assignment shall be completed within 18-20 months.

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

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

62 63


Renewal of Trademark/Service Mark1. A simple signed Power of Attorney2. The trademark registration number and the mark

registered along with a copy of the registration certificate

Assignment1. A simply signed Power of Attorney2. Trademark Application/registration number and the mark

proposed to be registered3. A notarized copy of assignment deed signed by the

assignor and the assignee4. Name, Adress, nationality and professionor nature of

business of the assignee5. 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 Name1. A simple signed Power of Attorney in the new name and

address2. A notarized copy of the change of name certified issued

by the competent authority

ARIPOBotswanaLesothoNamibiaSwazilandTanzaniaUgandaZimbabwe

AsiaChinaMalaysiaSingaporeThailandPakistanBangladeshSri LankaAfghanistanSouth KoreaIndonesiaJapan

GCCUAEBahrainKSAKuwaitOmanQatar

Middle EastAlgeriaEgyptGaza StripIraqJordanLebanonLibyaMoroccoSudanSyriaTunisiaWest BankYemenIranTurkey

LIST OF COUNTRIES SERVED BY US

64 65


EUROPEAN COUNTRIESAustriaBelgiumCyprusCzech RepublicDenmarkEstoniaFinlandFranceGermanyGreeceHungaryIrelandItaly

Other European CountriesRussiaUkraine

Other CountriesUSA & CanadaAustraliaNew Zealand

FOR MORE DETAILS, PLEASE VISIT OR CONTACT US ON:

www.jcatrademarkuae.comEmail: [email protected]

LatviaLithuaniaLuxembourgMaltaPolandPortugalSlovakiaSloveniaSpainSwedenThe NetherlandsUnited KingdomBulgariaRomania

Latin American CountriesBrazilArgentinaEcuadorHondurasJamaicaPeruMexicoPanama

DisclaimerTrademark 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 difficulty.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.

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