Our client, AL Jazeera Paints Manufacturing Company, is the registered owner of the trademark AL-JAZEERA PAINTS in Latin and Arabic characters in Jordan in class 2.

An ex-employee of our client filed a trademark application for AL-JAZEERA PAINTS in Jordan and have a registration certificate since 17 December 1996 in class 2 under number 41121.

A cancellation action can be submitted within five (5) years from the date of registration, but we filed a cancellation action on behalf of our client long after the five year period ended, so we based our argument on the infringer’s bad faith based on Paris Convention per the following:

• Our client’s mark is famous;
• The infringing trademark is confusingly similar to our client’s mark in terms of pronunciation, general appearance, and designated goods, and
• The registration of the alleged mark has harmed our client’s rights, as it was registered in bad faith.

We submitted evidences that “Al-Jazeera Paints” is well known amongst the target market and dealers who work in this field, and the Registrar decided to cancel the registration of the alleged trademark. This is a precedential decision in Jordan considering.

If you need more information about our practice in Jordan, please contact us at jordan@qumsieh.com.

For more information, please contact kuwait@qumsieh.com.

It is worth pointing out that although the term stipulated for applying for the National Stage is thirty (30) months from the priority application claimed based on the Paris Convention, an international PCT Application can enter into the National Stage even before the minimum term of twenty (20) months provided that it has already been got the International Search Report, the Written Opinion, and the International Publication.

However, PCT Applications filed on or after 6 June 2009 only will be eligible to this new rule.

The main aspects of the new ordinance are:

Service Marks
Service marks in classes 35 to 42 are now registrable.

Definition of “Mark”
The definition of “mark” has been expanded to include figurative elements, color, sound or any combination thereof.

Priority
Priority can now be claimed within six months from the filing date based on any earlier application filed in a country that is a party to the Paris Convention.

Well-Known Trademarks
A well-known trade mark is now protected even if it is not registered nor in actual use in Pakistan. However, the protection shall only be available to a mark that is well-known in Pakistan if it is a mark of a person who is either a National of, or domiciled in, a Convention Country, but irrespective of the fact whether or not that person carries on business or has goodwill in Pakistan.

Domain Names
The provisions of the new law have been made applicable to Domain names, if a Domain name is used as a Source Identifier, meaning that the Domain name is used on the Internet to distinguish goods or services of one undertaking from others, and that the Domain name is not a mere directional reference similar to the use of a telephone number or business address.

Divisional Application
Under the new law, a divisional application is also permissible for the registration of a part of the trade mark in respect of any or all goods, services or both, but should be by a person who has already made an application for registration of a trade mark and the said application is still pending.

Protection
A Collector of Customs has been given more powers to seize goods bearing infringing trade marks. The other remedies of filing a suit in a court of law for recovery of damages, and an order for injunction, are also available to the proprietor of a trade mark or its assignee or licensee.

Collective Marks
Registration of Collective Marks has also been made permissible allowing members of an Association to distinguish goods or services of one undertaking from those of other undertakings.

Pending Matters
The applications which have been filed for registration under the old law of 1940 will be treated as having been filed under the new law, and the trade marks already registered shall be transferred to the Register to be maintained under the new law.

Duration & Renewal
The trade mark shall be registered for a period of ten years and may be renewed on payment of the prescribed fee for unlimited terms of ten years each.

Official Fees
There is no change in official fees.

Effects on Trademarks
Saudi Arabia has entered a reservation with regard to item “Four” of Article (4), and item “One” of Article (7) of the Convention for not accepting the registration of goods and products falling under class 33.

Effects on Patents
Disclosed patents filed between 7 February 2004 and 10 March 2004 will not be received. Moreover, Patent applications with claiming priority exceeding 12 months filed after the effective date of 11 March 2004, will be rejected.

Berne Agreement
Now copyright protection in Saudi Arabia is guided by Berne Agreement Principles, while it entered a reservation with regard to clause (1) of item “First” of Article (2) of Berne Agreement not to protect the Artistic works and Literary compilations prohibited by Sharia “Islamic law”.