The article below provides general information on the trademark protection system in the countries of our region. It gives an overview on the use of trademarks in our part of the world in addition to the legal system that governs the trademark protection.
In principle, countries of our part of the world are civil law countries, meaning that the code typically exhaustively covers the complete system of law. This also means that trademark protection is on a “first to file” rather than a “first to use” basis, unlike common law countries. Having a first-to-file system means that registration is absolutely necessary for the protection of trademarks. Countries in our region may offer a limited amount of common law rights but this of course is a matter solely determined by the practitioner handling the case.
All of the countries from our region have national laws which facilitate the filing, registration and enforcement of trademark rights. In general, filing trademark applications in most of the countries from our region entails similar procedures. It is possible to register a mark in these countries without actually using the mark. Therefore, it is not necessary to provide detailed information on trademark applications regarding the existing use of the mark. However, trademark rights should be maintained through actual use of the trademark. Trademark registrations in most of the jurisdictions from our region may be vulnerable to cancellation in the event of non-use, which is usually a period of either three or five years. Therefore, it is important to implement programs that ensure valid use of the marks in order to avoid cancellation.
It is also worth noting that, unlike the US where a cancellation action is similar to an opposition action in applicable law, the situation is not the same in some of the countries of our region. More specifically, administrative procedures for a non-use cancellation of a trademark are only available in few countries, namely Jordan, Bahrain and Oman. In the remaining countries, cancellation actions must be brought before the local Courts. This can be timely, costly and the predictability of such proceedings can be skewed. Another issue to take note of with regards to the cancellation of trademarks due to non-use in our region is the burden of proof. In most of the countries in our region, the burden of proof in a cancellation proceeding will usually be on the plaintiff in order to prove that the registered trademark should not, in fact, be registered. This renders non-use cancellation actions expensive since a negative must be proven, namely, that a mark is not in use.
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