Morocco rings the changes

On 18 December 2014, the new Industrial Property Law, No. 23 -13, which amends the existing Act, No. 17/97, came into force in Morocco.

Noteworthy changes include:

Division. There is provision for divisional applications.
Substantive examination: The new law provides for mandatory substantive examination of patent applications.
Compulsory licences. There is provision for compulsory licences for non-exploitation of an invention.
Annuities. The law confirms that annuities are only payable once the patent is granted.
European patents. 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 will enter into force on 1 March 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.

Examination. There will now be substantive examination of trade mark applications, which means that applications can be refused for example on the grounds that a trade mark is non-distinctive.
Division. There is provision for the division of trade mark applications on the basis of goods or services.
Renewal. It will in future only be possible to renew a trade mark in exactly the form in which it is registered.
Opposition. The opposition procedure has been improved in that the term for issuing decisions has been reduced. If the trade mark applicant does not respond to the notice of opposition within a two-month period, the Office will make a decision.
Counterfeits. The customs authorities will have the power to detain counterfeits that are in transit, and 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.

Period. There is provision for registration for a five-year term – this period will be extendible for four further five-year periods.
Division. Divisional design applications may be filed.
Publication. An application for registration will be published within a period of six months, although there is provision for a delay of publication for a maximum period of 18 months.

Penalties. There is provision for longer prison terms and heavier fines for infringers.
Options. The new law gives the IP owner the option of choosing between civil action and criminal proceedings.
Seizure. There is provision for the presiding judge in an infringement case to order the seizure of goods, as well as other materials, instruments and documents relevant to the alleged infringement.

Dating. A system that allows the creator of a work to record the date of the work’s creation has been established – the thinking is that this recordal can serve as proof if the date of the work’s creation becomes an issue. The recordal will, however, only serve as proof for a period of five years.
Remarks. 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.
Right of reply. There is a right of reply to any rejection by the Office. The period is one month.
Priory documents. The term for filing priority documents has been increased from three to four months.
Representation. The Moroccan Industrial Property Office will be drawing up a list of approved IP practitioners.

Please contact us for further information.

Date published: 2015/02/05
Author: Spoor and Fisher

Tags: general ip news industrial property law morocco patents trade marks