New Amendment to the Trademarks Law

01 Dec 1999

After months of anticipation, the new amendment of the trademark law was ratified on September 22nd, 1999 and published in the Official Gazette on Nov. 1st, 1999. Accordingly, the new amendments will be enforced by Dec. 1st, 1999, upon the issuance of the implementing regulations. The said law was revised to meet the international standards of the Trade Related Aspects of Intellectual Property (TRIPs) Agreement.

Service marks can be registered:
The most substantial ratification is the addition of international service marks to the classification of goods of the previous trademark law. This addition will contribute to providing protection to the trade and service industry in Jordan. With the addition of service marks it is no longer necessary to file service marks under class 16 for publication and printed material as was the common practice. Currently it is recommended that applications in class 16 be submitted under the service marks. For more information please contact our Jordan Office.

Protection for Famous Marks:
Another important addition to the revised law is the concept of a "Famous mark", which is defined by the legislators "as a mark whose reputation has crossed over the boundaries of the country of its origin, where it was originally registered, and whose known as a famous mark has reached the Jordanian consumer in that sector"

Article 8 paragraph 12 clearly prohibited the registration of marks "whether identical or similar to, or constitutes a translation of, a famous trademark" and thereby affording protection to the famous mark.

In cases of infringement the famous marks could be a basis for an infringement action even if the subject marks are not registered. Further, the new legislation no longer restricts the "Fragmentation of Goods" in a class in connection with the famous trademark. Thereby once a link is established between the goods, in which the famous trademark is registered for and the goods for which the trademark intended to be registered, then this would be a good basis for infringement. Furthermore, the revised law granted the owner of the famous trademark its right to defend it, against all possible kinds of infringements, even if its not registered in Jordan. Article (26.b)

The Collective Marks:
Collective marks can be registered and protected in the new revised law, which defines the marks as :
"The mark used by a corporate entity to certify the origin of the goods, or services or to verify the quality, manufacture or any other specifications."

Furthermore, if a collective mark meets the requirements specified in the original law, it may be registered and regarded, in all aspects, as a special mark in the name of a corporate entity.

Assigning, canceling or re-registration of a mark after its cancellation is only possible if the transfer is to a corporate entity or a legal predecessor.

Assignment without Business Concern:
The revised version of the law allowed for the assignment of marks without business concern, which was not available in the previous law.

It is now possible, according to Article (19.1), to transfer, assign, or mortgage a mark without having to implement the same action on the business. Furthermore, it is possible to seize the mark separately from the business. This aspect conforms with the TRIPS.

The law stipulates that if a close association exists between the business and the mark then the transfer, assignment or mortgage should be with the business concern.

In the advent that the transfer or assignment of the business is made without the transfer or assignment of the mark, then both parties may use the trademark, until an assignment is recorded.

Any assignment, transfer or mortgage will not be regarded as effective except after filing the transfer and publishing it in the official gazette.

Registration:
In order to conform with the TRIPs agreement, the new revised law has amended the duration of registration of marks from 7 & 14 years to 10 years, renewable for further periods of 10 years. All trademarks currently on the register will be renewed after 10 years.

If the owner of the mark fails to apply for renewal within 1 year following the expiration of the protection period, the Registrar shall of his own accord strike the mark from the register.

The revised law restricted the filing of the mark by a third party, only after one year has lapsed from the cancellation of the non-renewed mark. .

Cancellation:
According to the revised law the period of non use that could be used as a basis for a cancellation action has been increased from two to three years preceding the date of filing the cancellation action.

In this case, use by a third party that is associated with the owner through agreement is regarded as effective use.

Licensing:
The process of licensing previously not specified in the trademark law, receives a specific focus in article 26 paragraph 2 & 3, whereby the owner of a trademark can license all the class of goods or only license selected goods. The duration of the license should not exceed the protection period afforded by the registration.

Infringement action:
In the definition of infringement actions the revised law entitled compensation to registered marks only. The owners of unregistered marks in Jordan can cancel any mark registered in Jordan if it leads to the misconception of the consumers. The action maybe filed based on Article 8 paragraphs 6, 7, 10 and 12.

The registrar's decision maybe appealed at the High Court of Justice for any such action. The deadline for appealing has been extended from 20 days to 60 days from the date of notification.

With regards to sanctions on the infringing party, the periods of imprisonment period has been increased from a maximum of three months to one year, while the fines have been amended from a maximum of JD 100 (equal to US$ 70.00) to JD 3000 (equal to US$ 2,130.00).

The revised law explains the proceedings of infringement before civil or criminal courts, in detail and the procedures to be adopted with regard to infringement cases.

Claiming Priority:
The revised law reiterated the possibility to claim priority according to international agreements or conventions.

Temporary protection:
The new regulations allows for the protection of goods or services not previously filed due to the existence of a convention or exhibition as a temporary protection for the period of the convention or exhibition. These will be registered according to regulations that will be issued by the ministry.
For more information please contact our Jordan Office.



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