The main aspects of the changes are:

• Sound marks can be registered now;
• Multiple-class application is possible;
• Electronic filing will be applied;
• The time frame has been defined for processing the examination of new applications, oppositions, cancellation actions, etc;
• Improvement to the opposition system, including the limitation and definition of the opposition and grounds for filing opposition;
• A trademark renewal application can be filed within 12 months prior to the expiration of its validity term, which is twice the length of time of the current practice of 6 months;
• The introduction of new Unfair Competition Act;
• Introducing the principle of well-known trademark recognition;
• Enhancing the protection of the exclusive right to use a trademark;
• Reinforcing the intensity of countermeasures against preemptive trademark registration, and
• Regularising the behavior of trademark agencies by imposing penalties on such agencies who commit any act considered by the administrative authority for industry and commerce to be done on bad faith or construed unfair competition.

For more clarifications, please contact info@qumsieh.com.

The project was announced in an opening ceremony and workshop held under the patronage of the Jordan Chamber of Commerce at the Landmark Hotel Amman in Jordan on 13 April 2013.

During the workshop, Mr. Nader Qumsieh, Chairman and Founder of NJQ & Associates, stated “this project is the first of its kind in the Middle East and the whole region, the main goal of this initiative is to understand the level at which brands are known to people by classifying the trademarks and create a list of the most popular and the most reliable brands in the Middle East and North Africa”.

For more information and insights into the culminating event, go to the official website of the project at www.FamousArabBrands.com.

Owners of the well known trademarks, whether their marks are registered in Syria or not, must file an objection against a specific trademark registration at the TMO based on true and reasonable justifications.

The TMO will notify the owner of the infringing mark to reply to the objection within 30 day from the notification date. No legal effects on the registered rights of the mark in case no reply is filed within the deadline.

Later, the competent committee convenes and votes whether to accept the objection request or reject it. In case it voted in favor of the objection request, a cancellation application must be filed in the name of the aggrieved part at TMO.

It is worth mentioning here that the judgment whether a specific trademark is considered a well known mark or not in Syria is considered and viewed within its conformity with the content of Article 44 (b) of the Syrian Trademark Law , which institutes the notoriety of the mark on how far it is considered known to the public concerned.

For more information please send your inquiries to syria@qumsieh.com.

Our client, Seiko Holdings Kabushiki Kaisha, uses and owns the well-known trademark ALBA in class 14 in respect of watches, clocks, other horological instruments and parts thereof, in Jordan and abroad, and filed an opposition against the said application.

We based our case on the well-known trademark of our client, the registration of ALBA, even if in another class, as this will confuse the public regarding its connection with Seiko.

After full litigation, the Registrar decided to cancel the opposed trademark ALBA in Class 30.

A Kuwaiti local holding company called Al Mawarid Group had applied for the registration of “RITZ”, ”RITZ word in A/E” and “RITZ in Arabic” in classes 24, 26, 30 & 36.

The Examiner at the KTMO office could not find any prior registration of “RITZ” in the above classes and therefore these applications were accepted and published in the Trademark Journal dated March 2003 subject to opposition within one month.

An opposition was filed by the Ritz Hotel Company, Limited a British company set up by a Cesar Ritz in 1896 and which operates the Ritz Hotel in Paris, and The Ritz-Carlton Hotel Company, L.L.C. a subsidiary of the Marriott Company, worldwide licensee of the trademark RITZ. Both companies have registrations in Kuwait in class 42 in respect of hotel services and do not have any trademarks in classes 24, 26, 30 & 36.

In spite of the following facts:

1. There are no provisions in the Kuwaiti Trademark Law to recognize well known-trademarks.
2. Kuwait is not a member state of Paris Convention.
3. Lack of experience and literature at the KTMO office.

Our arguments were based on:

1. They still have to follow international guidance in respect of well-known trademarks.
2. The role of trademark law is to avoid confusion of public and the misleading of consumers.
3. Registration of well-known trademarks will confuse the public, mislead consumers and results in an unfair competition.
4. If these goals are not achieved, then registration of trademarks in Kuwait will not have any meaning.
5. The Commercial Law has provisions to prevent unfair competition. Allowing the registration of the opposed marks will be against the Law.

Our argument was taken in consideration and the decision came out for not allowing the registration of trademark applications for “RITZ” in classes 24, 26, 30 & 36.

Acting on behalf of the above client, we initiated legal proceedings and filed an infringement case with the Casablanca Commercial Court against the infringer for unauthorized use of the mark WONDERBRA. An expert was appointed by the court to investigate the claims and the manner in which the sign was displayed on the storefront. The final report was submitted to the court with the conclusion that the said use by a third party infringes the rights of Canadelle Limited Partnership and their famous trademark WONDERBRA. This report was backed up by our arguments, evidence of prior use and ownership.

Although the infringer had already ceased the unauthorized use of the trademark, removed the signs and closed the showroom, the court issued its decision in our clients’ favor citing the fact that the use of trademark WONDERBRA by a third party was illegal, leads to public confusion and is considered unfair competition.

The major aspects of this new law:

1. Well-Known marks are protected even if they are not registered in Qatar.
2. Powers of attorney are to be legalized up to the Qatar Consulate (previously, simply signed powers were required).
3. Oppositions are to be notified to the applicant within two months instead of four. Replies to oppositions are to be filed within two months also.
4. Cancellation actions based on non-use will be approved, in case the registered owner does not use the mark in question within a one month grace period which will be granted by the Industrial Property Office as a last chance to keep the registration.
5. A trademark can be assigned with or without the enterprise (under the previous law, the assignment had to be with the enterprise).
6. Recordal of assignment in which one of the parties is a non-Qatari entity does not require the consent of the Minister of Economy & Commerce.
7. A collective mark can be assigned with the consent of the Industrial Property Office, where previously this required the consent of the Ministry of Economy & Commerce.