Summary
Morocco is a member of the Paris Convention for the Protection of Industrial Property. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (10th edition) is followed in Morocco and the revision of class 42 with the creation of classes 43 to 45 has been adopted since January 1, 2002.
The Moroccan Parliament approved on December 14, 2005, a new Industrial Property Law which was published in the Official Gazette No. 5397 on February 20, 2006.
The new Law No. 31-05 amends and supplements Law No. 17-97 on the Protection of Industrial Property which took effect on December 18, 2004.
The new law comprises provisions related to the following procedures:
1. Electronic (online) Filing of Trademarks
The online filing of trademark applications allows national economic operators as well as trademark associates to proceed with the filing of their trademark applications without the need to displace to the Trademark Office or to one of its delegations.
2. Opposition System of Trademarks
As per the newly introduced opposition system, the Moroccan Trademark Office publishes all filed trademark applications on a half-month basis (each 15 days) to enable holders of the protected trademarks in Morocco to submit written oppositions with the Trademark Office to enforce full Intellectual Property Rights (IPRs) related to their trademarks.
The said opposition should be submitted to the Trademark Registrar within 2 months as of the publication of the list of the filed trademarks.
The contradictory procedure can extend over 6 months at the end of which the Trademark Office, after having considered the demands (claims) of every party concerned, will take a decision regarding the opposition. In case one of the concerned parties objects to the decision of the Registrar, the decision will be liable to appeal before the Appeal Commercial Court of Casablanca.
During the period of the contradictory procedure, the opposition system offers the possibility of suspension and extension of the procedure of opposition. This will allow the concerned parties to reach out-of-court settlement in order to put an end to the dispute in question.
The opposition procedure is summarized as follows:
• 2.a. Opposition procedures and forms.
• 2.b. All trademarks filed on and after February 20, 2006, will be published each 15 days by the Trademark Office on CDs (electronic version).
• 2.c. A two-month period is allowed as of the publication date to file an opposition with the Trademark Office.
• The Registrar will inform the owner of the mark via a registered delivery letter of the opposition in question and provide him with a date to respond accordingly.
• A first decision should be issued within 6 months unless one of the parties asks for an extension or suspension where another 6 months will be permitted.
3. Extension of the 2-month Period in the Late Filing of Documents
The law 31-05 foresees an adequate procedure to permit the users of the Moroccan national system of industrial property whether the owners or their representatives, in case of oversight of deadlines prescribed by the national law, to present a petition to pursue the filing procedures.
The said petition must be submitted to the Trademark Office within 2 months as of the expiry date of the initial prescribed deadline of 3 months to complete the filing procedures. The said petition should be presented one time containing all original missing documents with the tax payment thereof.
If the aforesaid petition is not presented by the owner or his representative, the definitive rejection of the filed application will be pronounced and registered with the Trademark Office records accordingly.
4. Filing Measurements at the Borders
The law 31-05 stipulates provisions dealing with the possibility of seizure on the borders by the Customs and Duties Administration. The owner of a mark protected in Morocco or a beneficiary of an exclusive right of exploitation can present a written demand at the Customs and Duties Administration to seize goods suspected of being imitated which constitute an infringement to his IP rights.
By virtue of the said provisions, the owner has a period of 10 days to prove to the Customs and Duties Administration, by means of conservation measures or having instituted an action in justice, his right to suspend their procedures on the products bearing the mark in question.
In addition, the aforementioned provisions offer to the Customs and Duties Administration, when they determine or suspect that the goods imported, exported or in transit are imitated, the possibility of suspending the procedures to put into free circulation these goods and immediately informing the right holder, the entity in charge of declaring the goods or the holder of the said goods of the measure of suspension.
The public ministry (prosecutor) is also given the possibility of ordering pursuits automatically against any act carrying infringement of rights against a protected mark in Morocco, without the necessity of a complaint by the owner of the mark in question.
5. National Register of Geographical Indications and Appellations of Origin
The new law also recognizes the implementation of a national register for geographical indications and appellations of origin in conformity with the provisions of the agreement of free exchange signed with the USA. The introduced amendment concerns the registration into the said national register of all geographical indications and appellations of origin protected by virtue of the texts recovered by competent departments (agriculture, craft industry, fishing,...).
Additionally, a new procedure enables the owner of a protected trademark or a protected geographical indication and appellation of origin to oppose all applications recorded with the National Register.
Further to the above amendments made by the law, pharmaceutical products manufactured in the framework of compulsory licenses may be exported as of 2008 to the countries whose capacity of manufacturing is insufficient.
The newly amended law also brought the registerability of sound and smell marks.