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Alert 365 - Lebanon - Lebanese Draft Trade Mark Law
The Lebanese Ministry of Economy has recently sent a draft Law on the Protection of Industrial, Trade and Service Marks to the Lebanese Parliament.
The draft law introduces fundamental changes in terms of the definition of marks, registration, cancellation and enforcement.
This draft law will replace all the principles of the old Lebanese Trade Mark Law, number 2385 of 1924, which will be repealed insofar as it contradicts with the new draft. All rights obtained under the 1924 law will be preserved. However, the renewal of all registered trade marks will be subject to the new law.
Definition of marks
The draft law widens the definition of marks to include sound marks, colour marks, combination of colours, taste marks, smell marks, product shape marks, and three-dimensional features.
Even though the draft law prohibits the registration of non-distinctive marks, it recognises that marks may acquire distinctiveness through use. The draft law also prohibits the registration of marks that infringe the copyright of third parties, protected geographical indications and/or trade names.
Registration
The registration system currently in place is a deposit system. At present, trade marks are registered almost immediately, following a basic formalities check and the relevant fees being paid.
The draft law proposes to change from a deposit system to a more substantive examination system, which also introduces opposition procedures for the first time. Currently, rights holders wishing to take action against third party filings in Lebanon have to bring cancellation actions before the Courts.
The draft law proposes to establish an administrative panel within the trade mark office headed by a judge. The members of the panel will include the head of the trade mark section and a trade mark expert.
The panel will look into appeals against any trade mark office decisions such as the rejection of trade marks, and will also look into oppositions filed by third parties. Provision will be made for any decision from this Panel to be appealed to the relevant court.
The draft law does not specify which court has jurisdiction. However, in a conference in Lebanon at the end of April 2010 on ‘Effects of Trade Mark Protection on Economic Development under the Madrid System’, the Ministry of Economy representative stated that the Administrative Courts would have exclusive jurisdiction as the panel’s decision is regarded as an enforceable administrative decision.
As the Lebanese Administrative Law states that the Administrative Courts play the role of the Court of Appeal and Cassation in relation to all decisions issued by all quasi-judicial panels within the administrative body, it may be argued that the Administrative courts have exclusive jurisdiction in any event.
The positive impact of having the Administrative Courts look into appeals against the panel’s decisions is that the decisions of these Courts are final and cannot be appealed further. This will save time and costs.
However one down-side is that the parties will have only one judicial level, they will therefore lose the chance to appeal if they do not agree with the court’s decision. Another disadvantage is that the administrative judges have more knowledge about administrative laws and less practical knowledge of commercial laws and practices.
Cancellation
The draft law looks to introduce the concept of ‘opposing’ a trade mark registration if it is registered in bad faith.
The draft law uses the word ‘oppose’ and the phrase ‘against a registered trade mark’. Therefore, even though the draft law calls it an opposition it is in effect a cancellation, which if successful will lead to the cancellation of the registered mark. This action can be brought before the TM office, which is possibly why the law calls it an opposition, rather than a cancellation which has to be brought before the Courts.
If this law is passed, it will potentially offer rights holders a quicker and cheaper option to take action against registrations filed in bad faith, rather than have to launch Court proceedings.
Enforcement
The draft law introduces more deterrent penalties. The penalties are in general:
- imprisonment from three months to three years; and/or
- a fine from US$3300 to US$33,000.
These options are only for the act of counterfeiting, placing fake marks on products in bad faith, importing or exporting counterfeit products or using a registered mark, even if the mark is accompanied with phrases such as ‘a type of’, ‘kind of’, ‘similar to’ or a ‘copy of’.
The sale or possession of infringing products bearing marks which are confusingly similar, but not identical, to the registered mark will only be subject to the above fines. There will be no imprisonment.
A more unusual penalty in the draft law is a secondary penalty that will be included in all court convictions. This is the suspension of the offender’s capacity to vote, or run for any membership on the boards of directors of the Chambers of Commerce, Social Groups, Bar Associations, Cooperation Associations, Labour Arbitration Counsels, the Parliament, the Municipality Counsels, and the Mayors, for not more than five years. This is an unusual penalty, but one that could have far-reaching implications for convicted offenders.
The new draft law is yet to be approved by the Parliament. There is a possibility that the Parliament may amend, modify or refuse the draft in its current form. As Lebanon has one of the oldest IP regimes, it is a development that brand owners should monitor with interest.
The draft law introduces fundamental changes in terms of the definition of marks, registration, cancellation and enforcement.
This draft law will replace all the principles of the old Lebanese Trade Mark Law, number 2385 of 1924, which will be repealed insofar as it contradicts with the new draft. All rights obtained under the 1924 law will be preserved. However, the renewal of all registered trade marks will be subject to the new law.
Definition of marks
The draft law widens the definition of marks to include sound marks, colour marks, combination of colours, taste marks, smell marks, product shape marks, and three-dimensional features.
Even though the draft law prohibits the registration of non-distinctive marks, it recognises that marks may acquire distinctiveness through use. The draft law also prohibits the registration of marks that infringe the copyright of third parties, protected geographical indications and/or trade names.
Registration
The registration system currently in place is a deposit system. At present, trade marks are registered almost immediately, following a basic formalities check and the relevant fees being paid.
The draft law proposes to change from a deposit system to a more substantive examination system, which also introduces opposition procedures for the first time. Currently, rights holders wishing to take action against third party filings in Lebanon have to bring cancellation actions before the Courts.
The draft law proposes to establish an administrative panel within the trade mark office headed by a judge. The members of the panel will include the head of the trade mark section and a trade mark expert.
The panel will look into appeals against any trade mark office decisions such as the rejection of trade marks, and will also look into oppositions filed by third parties. Provision will be made for any decision from this Panel to be appealed to the relevant court.
The draft law does not specify which court has jurisdiction. However, in a conference in Lebanon at the end of April 2010 on ‘Effects of Trade Mark Protection on Economic Development under the Madrid System’, the Ministry of Economy representative stated that the Administrative Courts would have exclusive jurisdiction as the panel’s decision is regarded as an enforceable administrative decision.
As the Lebanese Administrative Law states that the Administrative Courts play the role of the Court of Appeal and Cassation in relation to all decisions issued by all quasi-judicial panels within the administrative body, it may be argued that the Administrative courts have exclusive jurisdiction in any event.
The positive impact of having the Administrative Courts look into appeals against the panel’s decisions is that the decisions of these Courts are final and cannot be appealed further. This will save time and costs.
However one down-side is that the parties will have only one judicial level, they will therefore lose the chance to appeal if they do not agree with the court’s decision. Another disadvantage is that the administrative judges have more knowledge about administrative laws and less practical knowledge of commercial laws and practices.
Cancellation
The draft law looks to introduce the concept of ‘opposing’ a trade mark registration if it is registered in bad faith.
The draft law uses the word ‘oppose’ and the phrase ‘against a registered trade mark’. Therefore, even though the draft law calls it an opposition it is in effect a cancellation, which if successful will lead to the cancellation of the registered mark. This action can be brought before the TM office, which is possibly why the law calls it an opposition, rather than a cancellation which has to be brought before the Courts.
If this law is passed, it will potentially offer rights holders a quicker and cheaper option to take action against registrations filed in bad faith, rather than have to launch Court proceedings.
Enforcement
The draft law introduces more deterrent penalties. The penalties are in general:
- imprisonment from three months to three years; and/or
- a fine from US$3300 to US$33,000.
These options are only for the act of counterfeiting, placing fake marks on products in bad faith, importing or exporting counterfeit products or using a registered mark, even if the mark is accompanied with phrases such as ‘a type of’, ‘kind of’, ‘similar to’ or a ‘copy of’.
The sale or possession of infringing products bearing marks which are confusingly similar, but not identical, to the registered mark will only be subject to the above fines. There will be no imprisonment.
A more unusual penalty in the draft law is a secondary penalty that will be included in all court convictions. This is the suspension of the offender’s capacity to vote, or run for any membership on the boards of directors of the Chambers of Commerce, Social Groups, Bar Associations, Cooperation Associations, Labour Arbitration Counsels, the Parliament, the Municipality Counsels, and the Mayors, for not more than five years. This is an unusual penalty, but one that could have far-reaching implications for convicted offenders.
The new draft law is yet to be approved by the Parliament. There is a possibility that the Parliament may amend, modify or refuse the draft in its current form. As Lebanon has one of the oldest IP regimes, it is a development that brand owners should monitor with interest.
