May 23, 2016
A trademark is a sign that identifies the services and/or goods of a certain enterprise and distinguishes them from the services or goods of the competitors of such enterprise. According to the international treaties and the Egyptian laws, trademarks must be distinctive and not be deceptive in order to be registerable.
There are a number of international treaties that mainly govern (i) the general standards of trademarks protection to be provided by the contracting states thereof (the “General Standards”); (ii) the international registration systems for obtaining protection of trademarks (the “International Registration Systems”); (iii) the international classification systems of trademarks (the “Classification Systems”); and (iv) the trade-related aspects of intellectual property rights.
The General Standards are governed by (i) Paris Convention; (ii) Trademark Law Treaty (“TLT”); (iii) Singapore Treaty; and (iv) Nairobi Treaty. In this regard, Egypt is a contracting state to Paris Convention, TLT and Nairobi Treaty, noting that Egypt made no declarations and/or reservation on TLT or Nairobi Treaty. However, Egypt declared itself as being not bound by the provisions of Article 28 (1) of Paris Convention concerning the competence of the International Court of Justice over any dispute between two or more contracting states concerning the interpretation or application of Paris Convention.
– The International Registration Systems are governed by Madrid Agreement, which was entered into by Egypt on July 1, 1951, and the Madrid Protocol related thereto, which was entered into by Egypt on September 3, 2009.
– The Classification Systems are governed by (i) Nice Agreement concerning the international classification services and goods for the purpose of the registration of marks (the “Nice Agreement”); and (ii) Vienna Agreement establishing an international classification of the figurative elements of marks (the “Vienna Agreement”). In this regard, Egypt is only bound by the provisions of the Nice Agreement. However, Egypt has not acceded to the Vienna Agreement yet.
– The trade-related aspects of intellectual property rights are mainly governed by the TRIPS Agreement, which is a part of the Marrakesh Agreement establishing the World Trade Organization. The TRIPS Agreement defines the types of signs that are eligible for protection as a trademark or service mark and the minimum rights to be acquired by their owners. Marks that have become well-known in a particular country shall attach additional protection. In addition, the TRIPS Agreement lays down a number of obligations with regard to the use of trademarks and service marks, their term of protection, and their licensing or assignment. Egypt is a contracting state to the TRIPS Agreement and is not exempted from the application of any of the provisions thereof.
Registration of Trademarks in Egypt:
In order for a trademark to be registered in Egypt, a number of specific documents shall be submitted to the Trademarks Office to prove the ownership of the trademark, and then the he said documents shall be examined through the following examination phases:
1) Legal examination, involving the review of all documents and data from a legal points of view to make sure that such documents and data are in compliance with the Egyptian laws including, inter alia, the public policy; and
2) Technical examination, involving examining from a technical point of view to ensure that the trademark is distinctive and not be deceptive.
Once the examination phases above are completed, the Trademark Office shall issue a decision confirming whether the application is accepted or rejected.
If the application is rejected, then this rejection may be challenged before the Grievances Committee at the Trademarks Office. If the said challenge is accepted, then the application can be taken a step forward towards the registration of the trademark. However, if the challenge is rejected again, then the only way to challenge the decision of the Trademark Office is to fill a lawsuit before the competent Administrative Court.
If the application is accepted, then the application can be taken a step forward to the payment of the required governmental fees and publishing the approval in the Trademarks Gazette.
In some cases, the Trademark Office may request some modifications to the trademark in order to be accepted.
The Trademarks Office’s approval shall be published in the Trademarks Gazette to allow third parties to challenge the said approval. However, following the lapse of thirty (30) days from the publication date without challenging the approval by any third party, then the applicant will be entitled to obtain a certificate confirming the registration of the trademark that is subject of the approval.
It is worth noting that the trademark can be registered at more than one class depending on the business activities that are being used for the said trademark as per the Ministerial Decree No. 243 of 2003 governing all calcifications of trademarks.