Marks - Tradenames - Geographical Indications - Industrial Designs
Part I | Marks - Tradenames - Geographical Indications
A trademark is any sign distinguishing goods, whether products or services, and include in particular names represented in a distinctive manner, signatures, words, letters, numerals, designs, symbols, signposts, stamps, seals, drawings, engravings, a combination of distinctly formed colors and any other combination of these elements if used, or meant to be used, to distinguish the products of a particular industry, agricultural, forest or mining venture or any goods, or to indicate the origin of products or goods, or their quality, category, guarantee, preparation process, or to indicate the provision of any service.
In all cases, a trademark shall be a sign that is recognizable by sight.
The Department of Trade Registry shall be competent to register the trademarks in the special register of such marks, in accordance with the provisions of this Law and its Regulations, without prejudice to the provisions of Articles 3 and 4 of Law No. 115 of 1958 on correspondence and signposts imposing the use of Arabic.
The person who has registered a trademark and who has made use of it for a period of five years as of the date of its registration, shall be deemed the owner of such a trademark, unless precedence of use by a third party is proven.
A prior user of the mark may, within the said period of five years, challenge the validity of its registration .
The registration of a mark may, however, be challenged at any time, where the registration is made in bad faith.
Without prejudice to the provisions of international conventions in force in Egypt, any natural person or legal entity, Egyptian or foreign, belonging to or having the center of his or its effective activity in a country or entity member in the World Trade Organization or who applies reciprocity to Egypt, shall have the right to apply for the registration of a trademark with the Department of Trade Registry in Egypt, with all attendant rights in conformity with the provisions of this Law.
Nationals of all member countries of the World Trade Organization shall benefit from any advantage, preference, privilege or immunity granted by any other law to nationals of any state in connection with the rights provided for in this Chapter, unless such advantage, preference or immunity derives from:
(One) agreements on judicial assistance or agreements on law enforcement of general nature;
(Two) agreements in connection with the protection of intellectual property rights which came into force prior to 1st January 1995.
The following shall not be registered as trademarks or components thereof:
1. Marks devoid of any distinctive character, or composed of signs or statements which only usage grants to the products, or which are the normal picture or image thereof.
2. Any mark which is contrary to public order or morality.
3. Public armorial bearings, flags and other emblems pertaining to the State or any other state, regional or international organizations, as well as any imitations thereof.
4. Marks which are identical with, or similar to, symbols of religious character.
5. Symbols of the Red Cross or Red Crescent, or any other emblem of the same character, as well as any imitations thereof.
6. The portrait of an individual or his armorial bearings, except with his consent.
7. Designations of honorary degrees which the applicant is unable to prove his right thereto.
8. Marks and geographical indications which are likely to mislead or confuse the public or which contain false descriptions as to the origin of products, whether goods or services, or their other qualities, as well as the signs that contain an indication of a fictitious, imitated or forged trade name.
The owner of a well-known trademark, worldwide and in Egypt, shall have the right to enjoy the protection conferred by this Law even if such a mark is not registered in Egypt.
The Trade Registry Department shall, ex officio, reject any application to register any mark which is identical with a well-known mark and is intended for products which are identical with those of the well-known mark, unless the application is submitted by the owner of the well-known mark.
The preceding provision shall apply to applications intended for products which are not identical with those of the well-known mark, where the well-known mark is registered in a country member of the World Trade Organization and in Egypt, and where the use of the mark in relation to those non-identical products is meant to lead people to believe that a connection exists between the owner of the well-known mark and those products, and that such a use may be prejudicial to the interests of the owner of the well-known mark.
A collective trademark is used to distinguish a product of a group of persons who belong to a specific entity, even where such entity has no industrial or commercial enterprise of its own.
The application for registration of a collective mark shall be submitted by a representative of such an entity.
The competent minister may – in the interest of the public – authorize natural persons or legal entities involved in the control or examination of products in respect of their origin, components, method of manufacture, quality, authenticity or any other distinctive characteristic, to register a mark which shall serve to certify that such control or examination of such products is underway.
Such a mark shall not be disposed of without a special authorization from the competent minister.
The right of the mark owner to prevent third parties from the import, use, sale or distribution of products distinguished by such a mark shall lapse when the owner undertakes the marketing of those products in any country, or authorizes a third party to do so.
Temporary protection is granted to marks on products displayed at national or international exhibitions. Such protection shall not benefit from the extension provided for in Article 75.
The competent minister shall issue a decision designating such exhibitions and the Regulations shall prescribe the terms, conditions and procedure for the grant of such a protection.
The application for registration of a mark shall be filed with the Trade Registry Department in the manner and form laid down in the Regulations. The Regulations shall prescribe the fees due for the application and all procedures related to the mark. Such fees shall not exceed a total of 5,000 pounds.
A mark shall be registered in respect of one or more of the categories of goods produced, or intended to be produced, by the applicant in accordance with the rules and conditions prescribed by the Regulations.
Its use shall be limited to the category, categories or the kinds of products for which it has been registered.
Provisions of Article 91 shall apply to the categories for which the mark has not been seriously used.
Where an application for registration of a mark is filed in a country or an entity member in the World Trade Organization, or a country which extends reciprocity to Egypt, the applicant, or his rightful successor, may, within six months from the date of filing the application, file with the Department in Egypt a similar application for the same mark, covering the same products included in the previous application, in accordance with the terms and conditions prescribed by this Law and its Regulations.
In such a case, the priority date shall be that of the first application in the foreign country.
Where two or more persons apply simultaneously for registration of the same mark, or similar marks for the same category of products, registration shall be suspended until such time when one of these persons shall have produced a renunciation by the other claimants or until a binding judgment has been issued in his favor.
The Trade Registry Department may, in a motivated decision, require the applicant to undertake the necessary modifications on the subject mark in order to define and clarify the mark so as to avoid its confusion with a mark already registered, or a mark for which a registration application has already been filed.
Such decision shall, within 30 days of its issue, be communicated to the applicant in writing, by registered mail with acknowledgement of receipt.
The Department may reject the application should the applicant fail, within six months of the notification, to introduce the amendments required.
The applicant may appeal the decision of the Department mentioned in Article 77, within 30 days from the communication of such a decision. Appeals are considered by a committee, or committees, which shall be appointed by the competent minister and be composed of three members, one of whom shall be a member of the Council of State.
The Regulations of this Law shall prescribe the rules of establishing such a committee, as well as the procedures for the submission and consideration of such appeals and the decision thereon.
Without prejudice to the right of the applicant to appeal in conformity with the law, in case the committee referred to in the preceding article endorsed the decision to refuse the registration of the mark on the grounds that the it is similar to a mark already registered for the same goods, or for one category thereof, the registration of such a mark may not be made in favor of the applicant except on the basis of an enforceable court decision.
The Department shall have the decision of accepting the application for registration of the mark published in the Gazette of Trademarks and Industrial Designs, in the manner prescribed by the Regulations.
Any interested party may submit, in writing to the Department, within 60 days from the date of publication, and according to the conditions prescribed by the Regulations, a motivated opposition to the registration of the mark.
The Department shall then send a copy of the opposition to the applicant, within 30 days from the receipt of such a notification.
The applicant shall, within 30 days from the receipt of notification, provide the Department with his motivated written reply to the opposition, failing which he would be considered to have withdrawn his application.
The Regulations shall prescribe the rules and procedures in this regard.
The Department shall, after hearing both parties, motivate its decision on the opposition, to accept or reject the registration. In its decision of acceptance, it may require the applicant to fulfill any requirements it may deem necessary to register the mark.
The decision of the Department referred to in Article 81 may be appealed before the competent Administrative Court, in accordance with the procedures and time limits provided for in the law governing the Council of State.
The registration of a mark is approved by a decision of the Department and shall be published, in the manner prescribed by the Regulations, in the Trademarks and Industrial Designs Gazette.
Registration will take effect from the date of filing the application.
The Department shall deliver to the owner of the registered mark a certificate containing the information published in the aforementioned Gazette.
The owner of a registered mark may request the Department, in writing, to introduce any modifications that do not essentially affect the substance of the mark. He may also request a modification by deletion without any concomitant addition to the statement of products covered by the mark.
The decision to accept or reject the request for modification shall be subject to the same conditions prescribed for the acceptance of the original application for registration.
The prescribed provisions for opposition, appeal and publication shall apply to such decisions.
Any person may apply to consult the registered marks or obtain extracts or copies of entries in the register, according to the rules and procedures prescribed in the Regulations and against payment of a fee prescribed therein not exceeding 100 pounds.
The transfer of the mark’s ownership, its mortgage or attachment can be made independently from the commercial enterprise or exploitation project, in accordance with the rules and procedures prescribed in the Regulations.
The transfer of the ownership of the commercial enterprise or exploitation project shall include, unless otherwise agreed, the marks registered in the name of the owner, if such marks were inherently related to the said commercial enterprise or exploitation project.
Should the commercial enterprise or exploitation project be transferred without the trademark, the owner of the mark may, unless otherwise agreed, continue to use the mark for the same kind of goods, category or categories for which such mark was registered.
The transfer of ownership, the right of disposal or the mortgage of a mark shall not be valid towards a third party, unless such has been duly recorded in the register and published in the Official Gazette in the manner prescribed in the Regulations.
The period of protection conferred by the registration of the mark is 10 years, renewable for an identical period or periods upon request of its owner and every time within the last year of the protection period, against payment of the fees due for the initial registration application.
The owner of the mark may request the renewal of the protection period within six months after the date of its expiry against payment of the prescribed fees and a supplement prescribed by the Regulations not exceeding 500 pounds, failing which the Department shall proceed to cancel the said mark from the register.
The competent court may, upon request by any interested party, issue an enforceable decision to cancel the registration if it appears to the court that the mark has not been seriously used for a period of five consecutive years.
A cancelled mark may be re-registered — in favor of its owner exclusively — within three years from the date of the cancellation, according to the prescribed conditions and same procedure of registration and against payment of a fee prescribed by the Regulations not exceeding 1,000 pounds.
After the lapse of the said period, a mark may be re-registered for the benefit of its owner or a third party, in connection with the same products, under the same conditions, procedures and fees of the initial application for registration.
However, where the cancellation is in response to an enforceable court order invalidating the registration of a mark, such a mark may be registered in favor of a third party soon after the cancellation.
Extension, renewal, cancellation or reinstatement of the registration shall be published in the Trademark and Industrial Designs Gazette in the manner prescribed by the Regulations.
The Department, or any interested party, may, in cases other than provided for in Article 85, submit to the competent court a request for the addition of any entry which would have been omitted, or to delete or modify any entry incorrectly inscribed therein or contrary to the truth.
The owner of a mark may license one or more natural persons or legal entities to use his mark on all or some of the products for which the mark was registered. Such license to a third party shall not prevent the owner from using his mark, unless otherwise agreed.
The owner of a mark may not cancel or refuse the renewal of the license contract without valid reasons.
To be recorded in the Trademarks Register, a license agreement for the use of a mark shall be certified, or the signatures thereon endorsed. It shall not be valid with respect to a third party unless recorded and published in the manner prescribed in the Regulations.
A licensee may not, unless otherwise agreed, assign the license contract to a third party except in connection with the assignment of the commercial enterprise or exploitation project in which the mark is utilized to distinguish the products thereof.
The mortgage of or the right of disposal of a mark shall not be valid with respect to a third party, unless such has been duly recorded in the register and published in the manner prescribed in the Regulations.
The license contract may not include any conditions which may unnecessarily restrict the licensee in order to maintain the rights conferred by the registration of the mark.
The license contract may, however, include the following:
1. Limit of the license period for use of the mark.
2. Reasonable conditions which provide for the effective control by the owner of the mark of the quality of the products identified by the licensed mark; without restricting the licensee’s freedom of management and production.
3. Commitment of the licensee to refrain from any act that might undermine the status of the products identified by the mark.
The owner of the mark or the licensee may request the cancellation of a license contract. The Department shall notify the other party of such a request.
Such cancellation shall be in accordance with the conditions and procedures prescribed in the Regulations.
In the application of the provisions of this Law, “trade indication” means any clarification connected directly or indirectly with the following:
1. Number, quantity, dimension, measure, capacity or weight of any products.
2. Place or country in which the products were manufactured or produced.
3. Method of manufacturing or producing the products.
4. Elements and components of which the products are composed.
5. Name or capacity of the producer or manufacturer.
6. Patents or any other industrial property rights, or any commercial or industrial concessions, awards or distinctions.
7. The name or form under which certain goods are usually known.
Trade indications shall be factual in all aspects, whether placed on the products, packaging, invoices, correspondence, advertisements or other means used for offering the products to the public, or whether on signboards, inside the shops or in warehouses.
No mention may be made of medals, diplomas, awards or honorary distinctions, except in relation to the products in respect of which such distinctions apply, or in relation to the persons who, or commercial names which, acquired those distinctions, or their successors. Such mention should include correct indications of the date, nature of the awards, the authority and the occasion on which they were granted.
A person who participates with others in exhibiting products may not use for his own products the distinctions granted jointly to the exhibited products, unless he indicates in a clear manner the source and nature of such distinctions.
Where the quantity, dimension, measure, capacity, weight, origin or ingredients of a product constitute a factor in assessing its value, the competent minister may decide to prohibit the sale, marketing or importation of such products, unless they bear these indications.
The competent minister shall determine the manner in which such indications should be placed on the product in Arabic, and any alternative procedures where necessary.
Where a geographical origin has become descriptive of the quality, reputation or other characteristics of a certain product so as to be largely instrumental in its marketing, such geographical indications shall be used to indicate the place of origin of such goods in a district or part in a country member in the World Trade Organization or a country according Egypt reciprocity.
The protection in the country of origin is required to protect such indications.
A person residing in a place especially reputed for the production of a given product, may not affix on the products of his trade geographical indications in such a manner as to lead the public to believe that the products were produced in that place of special reputation.
No means may be used to designate or present any products, in such a manner as to lead the public to believe that such products were produced in a geographical area other than its real place of origin.
A person producing any products in a place especially reputed for the production of such products, may not affix the geographical indication of that place on similar products he produces in other places in such a way as to suggest that such products were produced in the reputed place.
Where a geographical name has become descriptive, to indicate in a commercial sense the nature of any products and not their geographical place of origin, such geographical name may be used in connection with such products.
The registration of a trademark including a geographical indication, requires the continuous production, by the applicant, of the products in the reputed geographical area.
A trademark including a geographical indication may not be registered, where such an indication is likely to mislead the public as to the real origin of the goods.
A trademark including a geographical indication may be registered if the right conferred by the mark was acquired in good faith before the entry into force of this Law, or before the geographical indication has been granted in the country of origin.
Any interested party may institute normal proceedings before the competent court of first instance to order prohibiting the use of any geographical indication not included in a registered trademark, where such use is likely to mislead the public as to the real origin of the products.
The competent court of first instance shall be the court having jurisdiction at the place where the geographical indication is used.
Without prejudice to any more severe punishment under any other law, shall be punishable by imprisonment for a period of not less than two months and by a fine of not less than 5,000 pounds and not more than 20,000 pounds, or by either punishment, any person who:
1. counterfeits a trademark registered in accordance with the law or imitates it in a manner which is likely to mislead the public;
2. fraudulently uses counterfeit or imitated trademarks;
3. fraudulently affixes to his products a trademark belonging to a third party;
4. knowingly sells, offers for sale or distributes, or acquires for the purpose of sale, products bearing a counterfeit or imitated mark, or on which the mark was unlawfully affixed.
In case of repetition, the offense shall be punishable by imprisonment for a term of not less than two months and by a fine of not less than 10,000 pounds and not more than 50,000 pounds.
In all cases, the court shall order the confiscation of the infringing products, the revenue and the returns of such products as well as the implements used in the infringement.
The court may, when issuing a condemnation, order the closure of the enterprise used to commit his infringement, for a period not exceeding six months. In the event of repetition the enterprise shall imperatively be closed down.
Without prejudice to any more severe punishment under any other law, shall be punishable by imprisonment for a period of not less than one month and by a fine of not less than 2,0000 pounds and not more than 10,000 pounds or by either punishment, any person who:
1. affixes a false trade indication to his products, on or inside his shops or warehouses, on signboards, packaging, invoices, correspondence, advertisements or any other means used for offering the products to the public;
2. fraudulently places on his marks or commercial documents an indication that leads to believe that such mark has been registered;
3. uses a mark that has not been registered, in the cases provided for in paragraphs 2, 3, 5, 7 and 8 of Article 67;
4. mentions medals, diplomas, awards or other honorary distinctions of any kind whatsoever, in relation to the products in respect of which such distinctions do not apply, or in relation to the persons or commercial names who did not acquire them;
5. participates with others in exhibiting products and uses for his own private products the distinctions granted to the jointly exhibited products, unless he indicates in a clear manner the source and nature of such distinctions;
6. affixes on the products of his own trade, in a place especially reputed for the production of a certain product, geographical indications in such a manner as to mislead the public to believe that those products were produced in that place;
7. uses any means for the designation or exhibition of products in a manner that may mislead the public as to the production of those goods in a geographical place especially reputed rather than the real place of origin of such products;
8. manufactures a product in a place especially reputed for its production and who affixes a geographical indication on similar products he produces in other places in such a way as to suggest that such goods were produced in the said place.
In case of repetition, such an offense shall be punishable by imprisonment for a period of not less than one month and by a fine of not less than 4,000 pounds and not more than 20,000 pounds.
The president of the competent court considering the merits of the case may, upon a request by an interested party, and on petition, order one or more appropriate conservatory measures, and in particular:
1. Establish the infringement of a protected right.
2. Draw up an exhaustive inventory and detailed description of all the machines and implements used or may have been used in the infringement, as well as the products, goods, signboards of shops, packaging, invoices, correspondence, advertisements or the like, on which the mark or the geographical indication, subject of the offense, might have been affixed, as well as the products imported, on their arrival.
3. Order the seizure of the articles stated in item (2).
In all cases, the President of the court may order the assignment of one or more experts to assist the bailiff in charge of the execution. He may order the requesting party to provide an appropriate security.
The requesting party shall submit the merits of the case to the competent court, within 15 days of issuing the order, failing which such order shall cease to have effect.
The convicted person may, within 30 days from the date of the issue or notification, appeal such an order to the president of the court. The president may confirm or revoke the order, totally or partly.
The court may, in any civil or penal action, order the sale of the articles distrained, or to be distrained, and deduct their value from the amounts of the compensation or fines, or dispose of them by any other means the court may deem appropriate.
The court may also order the destruction of the illegal marks and, where necessary, the destruction of the products, goods, signboards, packaging, invoices, correspondence, advertisements or other items bearing these marks or bearing illegal description or geographical indications, infringing the provisions of this Book. It may also order the destruction of the machines and implements used specifically in the act of infringement.
The court may further order that its judgment be published in one or more newspapers at the expense of the convicted party.
The court may order some or all of the above measures, even in the event of acquittal.
The Minister of Justice shall, in agreement with the competent minister, appoint persons with judiciary powers for the implementation of the provisions of this Part.