Morocco issued Law No. 23-13 on December 18, 2014, which amends and completes Law No. 17-97 of 2000. The new law entered to force on the date of announcement and publication in the official gazette.
The law includes provisions on the protection of patents, integrated circuits, industrial designs, trademarks, and trade names.
The main features of the law regarding trademarks are as follows:
Examination on absolute is now possible. Prior to the new law, applications were published after passing only through formal examination, and a certificate was issued in the absence of an opposition. An important consequence of introducing substantive examination is that if a registered trademark should have been refused on absolute in the first place, any interested party may bring proceedings to have the mark declared invalid.
The new law reduces the time period to respond to oppositions from six months to two months. This reduction is expected to develop a faster and more structured procedural process.
- Division of Trademark Applications
It will now be possible for an applicant to transform a single application into several divisional applications. At any time before registration, an applicant may request that their application be divided into two or more separate applications, with each relating to different goods or services. The main reason for dividing an application up in this way is to isolate the problematic parts of an application. The process increases the chances of the uncontroversial parts being registered. Divided applications will have the same filing date as the original application. Where division occurs after the application has been published, any objections to the original application apply to each of the divisional applications.
- Article 6ter of the Paris Convention
Article 135 of the amended law generally excludes trademarks from registration which consist of specifically protected emblems now defines admission of the provisions of Article 6ter of the Paris Convention related to prohibitions concerning state emblems, official hallmarks, and emblems of intergovernmental organizations.
- Unconventional Marks
The definition of a figurative representation of a sign under Article 133 has expanded to include 3D trademarks. Although this is stepping stone, difficulty may arise at the time of substantive examination. However, the following rule of thumb is generally applied by the examiners of the TMO: a sign will not be registered as a trademark if it consists exclusively of a shape which (1) results from the nature of the goods themselves, (2) is necessary to obtain a technical results, and (3) gives substantial value to the goods. The law also refers to sound and smell marks as non-conventional marks that can be registered, in addition to 3D marks. In fact, sound and smell marks are not new additions to the law but existed in the previous law prior to the amendments.
Although the administration of such rights is still in development, broadening the definition of a trademark is clearly a sign of the positive direction Morocco is taking towards internationally standardizing trademark protection.
As for patents, the main features of the law are:
- Substantive Examination
Substantive examination is now possible, whereas previously, applications were granted within eight months following formal examination only.
- EP Validation
The possibility to validate European patents, which was not an option previously.
Annuities will become due after grant, whereas previously, annuities were due each year starting from the date of filing.
- Divisional Applications
It is possible to file divisional applications, whereas in the past this was not an option.
Additionally, since there will be examination and possible rejection, the general provisions now allow for an applicant to petition against a rejection.
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