Trademark’s Violating of Registration
Cases of Expunging Trademark for Violating Registration Procedures
After stating the required procedures for registering a trademark, beginning with the entity authorized to receive applications for registration, passing through the documents required to be attached with the registration application, until registering the mark in the register, and then the issuance of the registration certificate in the name of the applicant. The question arisen is: What are the cases in which the registered trademark is expunged for violating the routinic registration procedures? The registration procedures are represented by the normal conditions that must be met in the trademark, which are the procedures for registering the trademark with the competent authority from the person concerned or his representative with a special power of attorney (Khashroom, 2009). There are conditions related to the formality of the trademark registration, which means the possibility of requesting to expunge the mark from the trademark register in the case that any of the formal conditions are missed, because it is the registration mechanism specified by the law. Any error related to these steps leads to expunging it.
First: Expunging the Trademark if the Application was accepted by Mistake
The Jordanian legislator affirmed that “everyone affected by the failure to take down a note in the register, or because of deleting an item, or by the writing any item without a sufficient reason to justify, or because any item in the registry, may submit an application duly to the trademark registrar or to the Supreme court according to one’s will. If the application is submitted to the registrar, the latter would have the right to refer it to the competent court, or to judge it after hearing the persons concerned. If the application is decided upon, the decision is subject to appeal before the Supreme Court. Zain-Addin (2009) The Jordanian legislator has granted the trademark registrar the right to correct the error in the register without restriction or condition as specified by law, provided that the correction does not harm others. This is in terms of the name, address, or any change that occurred to the person registered for the trademark. According to the text of article (15) of the Jordanian law, trademarks can be “deleted” or “expunged” if they were registered in error, or if the trademark registration was accepted, but it was registered other than what the court indicated, or in a manner different from what it judged. In this regard, the Jordanian Supreme court of Justice judged that “The registration which is legally considered is the one that fulfills its legal requirements in accordance with the provisions of articles (11, 13 and 15) of the trademarks law and articles (47 and 49) of the trademarks system and its amendments. Registering the trademark (Eternity) which was duly registered in the name of Ab-Diet Garment Company on 6/1/2008, which is a date later than the date of the appellant’s submission to the trademarks registrar to re-register his expunged trademark is a legal violation. The legislator has devised a way to register the trademark and another way to re-register it. Thus, what the trademarks registrar has reached with his appealed decision becomes contradictive to the law and real by rescinding.”
One of the opinions states that expunging the trademark in this case is based on the text of Article (6) of the Jordanian law, which indicates the following: Whoever wishes to be independent in using a trademark to distinguish the goods that are of his production, manufacture, selection, or of which he issued a certificate, or the goods he trades, or intends to trade in, can request the registration of that mark in accordance with the provisions of this law” (Bouchoux, 2009).
This opinion considered that the aforementioned article was referred to by Article (24/5) of the Trademarks Law, which states: “Every application submitted to expunge a trademark from the register because there is no justification for its registration under the provisions of articles (6, 7 and 8) of this law, or because the registration of that mark creates unfair competition for the applicant’s rights in Jordan, must be submitted within five years of the mark registration. According to this opinion, the trademark shall be expunged if the application was accepted in error, or was accepted contradictive to what the court indicated in accordance with the provisions of article (15) of the trademarks law. In Egyptian law, it is possible to rely on the text of article (94) of the law which is of benefit that the authority and any interested one may resort to the competent court with a request to add any statement to the registry that was neglected to record, or to delete or amend any statement that was unlawfully entered or was not in conformity with the truth. This is done by requesting to expunge the registration of the trademark that was registered as a result of a mistake from the registrar, or in a manner other than what the court indicated. The Iraqi legislator allowed the owner of a mark that has been duly registered, to submit a request to the mark registrar for amendments and additions to correct his mark at any time. It stipulated that these amendments do not affect the trademark (Assaf, 2011). The application stipulates that “the owner of a mark that has been previously registered may submit a request to the registrar, at any time, to introduce any additions or modifications to his mark, provided that this application does not affect the mark. The registrar’s decision to accept this is issued in principle in accordance with the conditions set for the decisions related to the original registration applications. This decision must be notified, provided that it is subject to objection in accordance with the mentioned above. It is noted on the text of the articles referred to in the Egyptian and Iraqi law that they did not specify a period after which the request for deletion is prohibited. The researcher supports that as long as it is related to a trademark that was unduly registered, or was not in conformity with the truth, in order for the record to be a clear mirror of what is recorded in.
Second: Cancelling the Application for Forgery in Registering the Trademark
If forgery is found during or after the registration of the trademark, the court may request the amendment of the register by expunging the registered trademark. paragraph (4) of article (24) of the Jordanian Law stipulates the following: “The registrar may, in the case of forgery when registering any trademark, or transferring it, to submit an application to the Supreme Court of Justice in accordance with the provisions of this article. According to this article, it is permissible to expunge a trademark indicating forgery when registered (Assaf: 2011). This shall be made by a request from the registrar and under a judgment of the Supreme Court of Justice. Article (94) of the Egyptian law also stipulates the following: “The authority and any concerned part, in cases other than those stipulated in article (85) of this law, may resort to the competent court with a request to add any statement to the registry that was neglected to record, or to delete or amend any statement that was unlawfully entered or was inconsistent to the truth.”
Any change in the mark register such as modification, correction or expunging may not be made by the registrar, but based on a decision issued by the court. From the context of the articles, the registrar has the right to request an amendment to the register by requesting to expunge the trademark that was found. It was forged during its registration, because it was registered by fraud or false information or based on providing data contrary to the truth. In the Iraqi law, Article (21/2/T) stipulates that “…a request to expunge the registration of the mark may be submitted … D- that the registration of the mark was done by fraud or in violation of the provisions of registration.” The researcher notes that, in the case of forgery when registering a trademark, the Jordanian legislator just asked the court to amend the register or expunge the mark, but the question here is “Does what stated in the legal text allow suing a prosecution against those in who obtained a registered trademark for the crime of forgery in a registered trademark? What is the role of the registrar before referring the application to the court to amend or delete the mark? What is the role of the Supreme Court of Justice after referring the request to? In the Iraqi trademark system, paragraph (b) of article (37) states, “The registrar shall request that legal measures be taken against any person who committed a crime in accordance with the provisions of the law,” as the legislator gave the registrar the absolute right more than what was stated in article (35) of the trademarks law and commercial data.
Talking about the provisions related to trademarks in general and those related to expunging trademarks for violating the registration conditions in particular was not a coincidence nor a research or academic luxury as much as it was closely related to the extent of the importance of these fields. It affects all societies on their economic effects and those based on the emergence of modern phenomena as a result of economic, social and even political openness, the integration of societies and the intertwining of interests. This called for more attention to be paid in the field of trademark branding and expunging it. However, the current research dealt with expunging the trademark for violating the conditions of registration through a study in Iraqi law, whether related to registration, or the any addition to the provisions related to removing the mark or the role of the registrar in what is presented. It is necessary and useful to review the overall conclusion of this research, a summary of the results and recommendations as follows:
- The Iraqi legislator did not issue a new system for trademarks; the system remained the same since issuance in 1957.
- The researcher believes that the Iraqi legislator was wrong when suspended the resolution for amending law No. (9) of 2010, because the amendment in order (80) of 2004 has given the legal cover to suspend the above resolution. The law has been effective in all its articles since 2004. Amending that law and suspending the resolution of Revolutionary Command Council in 2010 was a mistake and acknowledgement of a legal contradiction for (6) years. This was not existed, where the trademarks registry in Ministry of Industry and Minerals initiated working on since the issuance of the amendment by order (80) for 2004. Expunging this order is implicit because the new law deals with the same issue and therefore the resolution of the dissolved Revolutionary Command Council is considered null and void.
- An Iraqi lawyer cannot carry out trademark registration procedures or plead before the trademark courts unless he obtains an official power of attorney from the trademark owner. Moreover, he holds the registration license, which is issued by the Companies Registry under the Registration Agency Act No. (4) of 1999.
- The Iraqi legislator did not oblige the trademarks registrar’s department to notify the applicant for a specific period, but rather kept silent.
- The Iraqi legislator gave the right to (a department, association or institution) to submit an application for the registration of a trademark. Those persons are non-profitable and it is not possible to register a trademark with a commercial and profitable character
- We recommend the Iraqi legislator to add a legal article to the law aforementioned, which states “the trademarks registrar is obliged to respond to applications submitted for registration within 30 days from the date of submitting the registration application; otherwise the application for registration is considered rejected, and the applicant may object according to article (10) of this law”.
- We recommend the Iraqi legislator to issue a new trademark system that is in line and consistent with the amendments included in the amended Iraqi trademarks and data law No. 21 of 1957.
- We recommend the Iraqi legislator to amend article (7) of the Iraqi trademark system and make it restricted to ordinary persons and to persons practicing commercial activities, but not departments, associations and institutions of a non-profit governmental character.