Trade Mark License
By : Sami Alawad
Presented by Jordanian lawyer SAMI AlAWAD
What is a Trade Mark:
According to article (2) of Jordan Trade mark law, a trademark is defined as “any visually perceptible sign used or to be used by any person for distinguishing his goods or services from those of others.
A trade mark is a clear symbol used or has the potentiality of being used by any person to distinguish his or her goods, products or service from others, also it is defined as letters, drawings or marks or a combination of them that are used to distinguish someone’s goods from others.
Clear symbol means: it should be capable of being identified easily among similar marks due to an inherent characteristics that derived from the shape of such mark i.e.: being decorated in a certain way or written in distinguished form letters.
The (well – known trademark):
According to article (2) of the law : The mark with a world renown whose repute surpassed the country of origin where it has been registered and acquired a fame in the relevant sector among the consumer public in the Hashemite kingdom of Jordan.
A trade mark are qualified as famous if the mark is repeatedly used by the holder and it is well known to the consumer and they trust the mark and the mark is associated with a high quality product, so if a trade mark become famous it becomes more important than the goods them selves, from this perspective, the legislator prohibits any infringement of famous trade mark even through the infringement was by competitor dealing in different lines of business or even across border if the holder has not registered his famous trade mark abroad
” If a trade mark is well – known and if it is not registered, then its owner may demand the competent court to prevent third parties from using it on identical or unidentical goods or services provided that such use indicates a connection between those goods or service and the well – known mark and provided that there is a likelihood of prejudice to the interests of the trade mark owner because of such use a likelihood of confusion shall be assumed if an identical well-known mark is used on identical goods.
Article “2” state the following:
” The mark used by legal person for certifying origin of goods not manufactured by him or the materials out of which they were made or the manufacturing precision or other characteristic of those goods”.
collective mark belongs to associations, cooperatives or unions that use this trade mark to identify their goods in respect of origin, material, mode of manufacture, accuracy or other characteristics from other goods.
Article (10/1): ” The Registrar may register a collective trademark if it meets requirements in article (7) paragraph (1), the collective mark shall be regarded as a special trade mark for the legal person registered in it’s name.
The registration of collective mark cannot be assigned to third parties (artic 10/2)
Elements of a trademark
Article 7 of Jordanian trade mark law states that in order to be qualified as registered trade mark it should has a distinctive features as to words, letters, numbers, figures, colors of other signs or any combination thereof and visually perceptible .
Distinctive means: being in a special way that secures distinguishing the goods of the proprietor of the trade mark from those of other persons.
Trade mark can be limited in whole or in part to one or more particular colors in such instance it shall be taken into consideration by the registrar or the court when deciding on the distinctiveness character of such trade mark, if a trade mark is registered without limitation to color it shall be considered to be registered for all colors.
The registration of a trade mark should be restricted to particular goods or specified class of goods (article 7/5).
Conditions of a trade mark
According to article 7 of Jordanian trade mark law is stated certain conditions for a trademark that would entitle trade mark legal protection:
Substantial condition of Trade mark:
A mark should be capable of being identified easily among similar marks due to certain characteristics derived from the shape of such mark.
– It must be noted that associating a product with it source or place of origin in non – distinctive way can never be protected i.e.: French cheese ,Egyptian cotton ,unless it had been used for comparatively long time, in this regard, article 7/3 of the trade mark state the following:
” in determining wither a trade mark has a distinctive character the registrar in a case of a trade mark in actual use, take into consideration the extent to which such use has rendered the trade mark in fact distinctive for the goods in respect of which it is registered or intended to be registered.
Presented by Jordanian lawyer SAMI AlAWAD BANI DOMI
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2- Legality :
Trademark should not be in breach of public order or with any valid laws, directives or regulations article 8/6 states:
It may not be registered as a trade mark which are contrary to the public order or morality or which leads to deceiving the public.
Trade mark must be visually perceptible
Trade mark elements must be recognized visually like (Names, signs, letters pictures… etc) which means trade marks can not be registered if it contains un visually elements i.e. musical melodies, sounds or recognized by taste or smell.
* The rights of the owner of a trade mark :
In the Jordanian law, the legal effect of trade mark is a proprietary right that enables the owner different kinds of rights.
1- right of usage :
Article 25 (1) in Jordanian trade mark law states: “The right to use the duly registered trade mark shall be limited to its owner and he shall have the right to prevent third parties from using confusingly identical or similar marks without his prior consent”.
The most important consequent to acquire ownership of a trade mark is the owner can use this (trade mark) for distinguishing his goods and service from those of others.
The right of ownership of the trade mark is a relative right, that it is limited to use the mark on certain type of goods and service therefore others can use the same trade mark to distinguish other types of goods and services without it being considered as infringement on the right of trade mark owner.
2- The right of assignment and pledge of trade mark:
It is allowed for the owner of trade mark to assign or to pledge the (trade mark) without the ownership transfer of the business, also the trade mark may be subject to a security interest independently from the business (Art – 19) the ownership of the trade mark shall be transferred with the ownership transfer of the business concern if it closely relates to it unless otherwise is agreed upon .
If the business concern ownership is transferred without the trade mark, the transferor may continue using the trade mark for the goods registered for.
The assignment or pledge of trademark shall not be invoked against third parties except as of the recording date in the register and be published in the official gazette.
3- right of licensing Trade mark :
The possibility of licensing a trade mark is recognized by Jordanian law, but only with respect to registered trade marks, the right to license a trade mark remain subject to some conditions and limitation for example the license must be made in written contract and filed with the register, in addition, no quality control is required for maintaining the validity of license agreement.
– The trade mark owner may license one or more persons, under a notarized contract to be filed with the registrar, to use the mark for all some of the goods, the trade mark owner shall have the right to use it unless otherwise is agreed upon, the use license must not exceed the protection period of the registered mark (article 26/2).
Who is the owner of the trade Mark
A trademark owner is someone who owns a trademark on a particular name, logo, image, or phrase associated with the identity of or services offered by a business. This is usually a natural or judicial person who owns a business, holds a high position within a company, or has been given power by a company to represent it in terms of trademark ownership. The person identified with ownership of a trademark is usually the one who files for official registration of a trademark or whose name is on the paperwork.
Who has the right to license to other the use of the trade mark?
The owner of the trademark has the right to license for others , also the licensee has this right if his license authorize him to do that.
Presented by Jordanian lawyer SAMI AlAWAD BANI DOMI
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How Trade mark is contractually licensed?
Generally there are 3 license contract and they are binding contract for the parties.
1- Exclusive license
Agreement in which trade mark owner (the licensor) authorizes another person (The licensee) an exclusive right to use and exploit the trade mark.
Generally the licensor usually maintains control over the intellectual property by including restrictions and limitations on the licensee’s use of intellectual property, since in the exclusive license the licensor can’t grant further license on the same intellectual property, the licensor is depending on single licensee for commercial exploitation of the licensed intellectual property which entails great risk for licensor, an exclusive license is often limited to specific provisions and restrictions which provide minimum level of protection for the licensor i.e.:
specifying particular geographical area are within Licensee may operate (i.e. within Hashemite kingdom of Jordan).
Include termination provision in the event the licensee fails to meet the requirement of the license.
Include provision for minimum royalty payment .
Particular period of time.
In addition the licensee under exclusive license is often given the right to sublicense others.
2-Non – exclusive license
Agreement which the trade mark owner (The licensor) authorizes another person (the licensee) to use and exploit the trade mark without restriction on the licensor to grant further license on the same intellectual property for others.
Licensee in non exclusive license is typically not given right to (sub license) others.
3 -Sole – license
Agreement by which trade mark owner (The licensor ) authorizes another person (The licensee) to use the trade mark, but could not give the right of license to others but he can use the trade mark himself inside the agreed territory.
There is no compulsory licensing in trade mark licensing, But any interested party can ask for cancellation of the trade mark if the owner of this trade mark didn’t use his mark for 3 continuously years.
Article 22 of the Jordanian trade mark law stated:
Without prejudice to the provision of article 26 of this law, who ever is interested may apply to the registrar for the cancellation of any trademark registered in the name of a third party if its registrant has not actually used it continuously for a period of 3 years preceding the application unless the registrant proves that non – use has been due to special circumstances in the trade or justifiable reasons which prevented use.
* The conditions of the law for licensing ?
1- License registration: registration is a process to prove ones right in something, if registration doesn’t exist then it means the person loses his right in proving such matter, registration is to protect people involved in such serious matter as licensing because it’s about giving permission to something you don’t have permission to do, and if you don’t have such permission you’ll be an infringer which is a serious crime, also if the license of the trademark is not registered then it can not be an allegation in confrontation third parties, so the registration of a trade mark license derived from trade mark registration it self.
Article 26/1/A: The right to use the duly registered trade mark shall be limited to its owner.
2- license writing :
article 26/2: Trade mark owner may license one or more persons under notarized contract to be filed with the registrar.
What happen if writing condition is not met in the license ?
My opinion concerning writing:
Writing is to prove ones right in something, if writing doesn’t exist then it doesn’t mean its null and void but the person loses his right in proving such matter.
Writing is to protect people involved in such a serious matter as licensing because its about giving permission to something you don’t have permission to do.
What happen if registration condition is not met in the license?
My opinion concerning registration of Trademark License:
The registration only for proof issues
Registration is a mean by which you can use it against third parties but if not registered, only the parties of the license are obliged.
According to article 23/2
“ Except in cases of appeals under this Article, and unless the court otherwise directs, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of the preceding paragraph shall not be admitted as evidence supporting title to a trademark”.
In addition its principal evidence
“Registration is a principal evidence
The registration of a person as the proprietor of a trademark shall in all legal proceedings relating to the registration constitute evidence of the validity of the original registration of such trademark and all subsequent assignments and transfers of the trademark.”
Can a license be implied ?
An implied license is an unwritten license which permits a party (the licensee) to do something that would normally require the express permission of another party (the licensor). Implied licenses may arise by operation of law from actions by the licensor which lead the licensee to believe that it has the necessary permission.
Implied licenses often arise where the licensee has purchased a physical embodiment of some intellectual property belonging to the licensor, or has paid for its creation, but has not obtained permission to use the intellectual property
(2) Conduct of Parties –
(a) licensee’s use of the mark
(b) licensee’s recognition of licensor control by seeking permission to combine marks
Compulsory license in trade mark:
There is no compulsory license in Trademark licensing. But any interested party can ask for cancellation of the trademark if the owner of this trademark didn’t use his mark for three continuously years.
Article 21 of TRIPS agreement stated:
Members may determine conditions on the licensing and assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the trademark belongs.
Article 21 of the Jordanian Trademarks Law stated:1- Without prejudice to the provisions of Article 26 of this law, whoever is interested may apply to the registrar for the cancellation of any trademark registered in the name of a third party if its registrant has not actually used it continuously for a period of three years preceding the application unless the registrant proves that nonuse has been due to special circumstances in the trade or to justifiable reasons which prevented use.
Termination of the license :
The license of trade mark in Jordan trademark law terminate not more than ten years from the date of the trademark registration according to article 25/2 and article 20/1.
Good faith in dealing with unlicensed person
The persons whom deal with the unlicensed person has no penal responsibility because of there good faith.
But the owner of the trademark may make a case against them according to Unjust enrichment suit .
Legal protection of Trade mark in Criminal Law
Jordanian trade mark law deems various acts to constitute trade mark infringement and Registration is necessary to protect trade mark in Jordan, Therefore only officially registered Trade mark in Jordan enjoys protection established in article (34, 38, 39), and article (3) of goods law.
Whoever committed with the intention to cheat any of the following deeds shall be penalized by an imprisonment term of No less than three months and no more than one year, or fine of no less than 100 Jordanian Dinars and no more than 3000 Jordanian Dinars or by those two penalties:
– Who ever counterfeited a trade mark registered under this law, imitated it in any other way that misleads the public, or a fixed a counterfeit or imitation mark on the same goods for which the trade mark has been registered.
We mean by counterfeit: Where by the infringer would insert certain amendments and decorations to the trade mark to be used an identical or similar goods protected by the legal trade mark.
Imitate: Whereby the infringer copy the wholly or to a large extent the trade mark to be used on identical or similar goods, such acts counter fieting or imitation should confuse the public as to the source of the goods and cause unfair competition .
– High court of justice put some guiding principles to decide upon the factuality of the infringement decision No. (65/108):
1- The judge should investigate the similarities rather than the differences between the legal and the infringed trade mark.
Reference should be paid here to the normal third part neutral consumer in assessing the mislead or to the normal third party neutral merchant in assessing unfair competition, overly aware person is irrelevant her.
In deciding upon infringement, the trial judge should assess such infringement by keeping in mind the separation of the legal and infringed trade mark when they are displayed to the public, in other word, an infringed trade mark usually would not be displayed next to legal trade mark in the same store.
There should be an intention to mislead the public as to the source of the infringed trademark, because without such intention (bad faith) there can be no crime, it must be noted here that mere suspicion and not actual materialization of intention to mislead the public would be sufficient unless the infringer establishes other wise which means the proof of good faith is available to the infringer.
B- Who ever illegally used a trade mark owned by another on the same class of goods or services for which that trade mark is registered.
C- Who ever sold or possessed for the purpose of selling or offered for sale goods bearing a trade mark whose use is regarded as an often under paragraphs (A) and (B) of this article if he was cognizant of that before hand.
Not with standing what mentioned in paragraph 1 of this article, whoever sells, or offers for sale, or possesses for the purpose of selling goods bearing a trade mark whose use is regarded as a contravention under the items (a) and (b) of paragraph 1 shall be penalized by a fine of No less than 50 Jordanian Dinars and no more than 500 JD.
No person shall have the right to file a lawsuit to claim damages for any infringement upon (a trade mark) not registered in the kingdom. Article (34).
Confiscation or destruction of goods by court order:
When filling civil or criminal lawsuit, the owner of registered trade mark may while reviewing the case, ask the court for the following :
to stop the infringement .
to make precautionary seizure of the goods in regard of which the infringement has been committed whenever they were.
To preserve the evidence relating to the infringement.
the owner of trade mark before request the court to take any of these measures and without notifying the defendant to prove that :
he is the owner of the trade mark .
his right were infringed or infringement is imminent or it is likely he will sustain irreparable damage.
He fears that the evidence will be hidden or destroyed .
The application is accompanied by bank or monetary guarantee accepted by the court.
If the trade mark owner doesn’t file his lawsuit within eight days of the court decision, all the measures taken in this regard shall be null an devoid.
Who has the right to take an action against the infringer?
Any person can make legal action in the trademark registration stage by make an objection to the registrar ( article 14 JTML .
Any person has a personal legal interest can make an appeal to the High court of justice.
According to article 3 from civil procedure law .
* High court of justice decision 3/2007.
Presented by Jordanian lawyer SAMI AlAWAD