New Industrial Property Law brings important changes

On December 18 2014 the new Industrial Property Law No 23/13, which amends the existing act, No 17/97, came into force. There is a lot of substance in the new law; below is a summary of the most noteworthy changes.

As regards patents, there is now scope for divisional patent applications. The new law provides for mandatory substantive examination of patent applications and there is provision for compulsory licences for non-exploitation of an invention. The law confirms that annuities are only payable once the patent is granted. Very significantly, the European Patent Office (EPO) has entered into an agreement with the Moroccan Industrial and Commercial Property Office (OMPIC) allowing for the validation of European patents. The validation agreement entered into force on March 1 2015, from which date Morocco may be designated in a European patent application (or a PCT application designating Europe). A European patent validated in Morocco will have the same legal effect as a Moroccan patent, and will be subject to Moroccan patent law. Morocco will not be a member of the European Patent Convention (EPC), nor a so-called ‘extension state’. Instead, the validation agreement is a bilateral arrangement between the EPO and OMPIC.

On the trademark front, there will now be substantive examination of trademark applications, which means that applications can be refused for example on the grounds that a trademark is non-distinctive.

As with patents, there is provision for the division of applications, in this case on the basis of goods or services. The opposition procedure has been improved in that the term for issuing decisions has been reduced, and in cases where the trademark applicant does not respond to the notice of opposition within a two-month period, the office will go ahead and make a decision. As for renewals, it will in future only be possible to renew a trademark in exactly the form in which it is registered.

There is special provision for tackling counterfeiting. The customs authorities will now have the power to detain counterfeits that are in transit (this power will extend to goods that are misleading as regards geographical details and designations of origin). There is also provision for requiring the infringer to pay the cost of warehousing and destroying the goods.

The new law also makes provision for designs and models. Registration will be for a five-year period, and this term will be extendible for four further five-year periods. Once again there is scope for divisional applications. An application for registration will be published within a period of six months, although it will be possible to delay publication for a maximum period of 18 months.

Further, various enforcement measures have been introduced:

• there is provision for longer prison terms and heavier fines for infringers;
• the IP owner has the option of choosing between civil action and criminal proceedings; and
• the presiding judge in an infringement case has the power to order the seizure of goods, as well as other materials, instruments and documents relevant to the alleged infringement.

Lastly, there are some provisions of a miscellaneous nature. There is provision for a dating system, which means that the creator of a work can record the date of the work’s creation. The thinking is that this recordal can serve as proof if the date of the work’s creation becomes an issue, but this recordal will only serve as proof for a period of five years. There is a provision that says that any interested person can now file remarks regarding the validity of an IP application within a period of two months – the IP applicant will have a right of reply, also within a two-month period. There is also a provision that says that there is a right of reply to any rejection by the office – the period here is one month. The term for filing priority documents has been increased from three to four months. Lastly, there will be greater regulation of the IP profession, with the office drawing up a list of approved IP practitioners.

Wayne Meiring, Spoor & Fisher Jersey, St Helier