Summary
A new Law No. 23 of 2010 related to Trademarks and Geographical Indications has been issued in Yemen along with its Implementing Regulations. The new law has included the following points:
- The opposition period has been decreased to 90 days calculated from the publication date.
- The 8th Edition of the Nice Classification has been adopted without the local sub-classification, noting that Class 33 and alcoholic beverages in Class 32 cannot be registered in Yemen.
- The official fees for filing a trademark in black & white and in color are now the same.
- The Trademark Office will not issue any certificates for renewal, change of name, change of address, merger or assignment, as it will only be issuing simple notices for each action.
- The grace period for the renewal of a mark registration has been increased to 12 months, noting this would be subjected to the payment of lateness fine.
- Any mark cancelled by the request of its owner can not be registered by any other interested party for the same or similar goods or services unless after three years from the date of cancellation.
- The filing fees and registration fees have been merged
- As indicated in article 06, well-known marks are now recognized as per the following:
1- Any mark application filed for goods or services identical or similar to a well-known mark would be rejected by the Registrar if the well-known mark is not registered in Yemen.
2- If the well-known mark is registered in Yemen, then any mark application in any class would be rejected for being similar or identical to a well-known mark.
- The new law indicates clear provisions for recording of license agreements and recording of assignments, such as the following:
1- The possibility to record the license agreement for some or all the products covered by a mark registration.
2- It is now compulsory to record the license agreement, as the license will not be affected unless it is recorded with the Trademark Office.
- A request for cancellation of a license agreement can now be submitted with the Trademark Office.
- The new law has indicated the protection of geographical indications, and also clarifies the relation between trademarks bearing a geographical indication and geographical indications.
- The new law has clearly indicated the possibility of claiming priority within six months calculated from the filing date in any member country of Paris Convention, in this case the filing date in Yemen will be the same as the filing date in the original application.
- The new law has also indicated the penalties against infringement of marks through legal action with the relative court.
Trademark Registration Procedures:
Once a trademark application is filed at the Trademark Office, it is examined as to its registrability. Accepted trademark applications are to be published in the Official Trade Gazette (Al-Tijarah). There is a 90 days period starting from the publication date open for filing an opposition to the registration of a trademark by any interested party. The notice of opposition should be submitted to the Registrar within the legal term. The opposition case is referred to the court, if not settled before the Registrar, or if either party appeals the Registrar's decision. However, in the absence of opposition, or if the opposition is rejected, the mark is processed to registration and the registration certificate will be issued.
The validity of a trademark registration is for 10 years as of the date of filing the application renewable for similar periods of 10 years each. The renewal application should be submitted within the last year of the current validity term. The trademark law provides for a one year period for late renewal of a trademark, but such renewal application is subjected to the payment of a lateness fine.
The assignment of a trademark can be recorded once the trademark is registered. In fact, unless an assignment has been entered against the trademark in the register and published in the Official Gazette, it shall not be effective vis-à-vis third parties. Changes in the name or address of a registrant, and limitation of the list of goods covered by a registration can be recorded as well.
Use of trademarks in the Republic of Yemen is not compulsory for filing applications or for maintaining trademark registrations in force. However, a trademark is vulnerable to cancellation upon the request of any interested party who can establish that the trademark had not actually been used during the 5 years immediately preceding the application for cancellation or that there was no bona fide use of the trademark on the goods in respect of which the trademark was registered. It is noteworthy that trademark rights are acquired in Yemen through registration and that a trademark becomes invincible, if the registered proprietor has used it in the country for 5 years continuously.
Unauthorized use of a trademark registered under the law, an imitation of such trademark applied on goods of the same class, sale, storing for the purpose of sale, exhibiting for sale of goods bearing a counterfeit mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods of the same class are offenses punishable under the law in Yemen.