Trade Mark Licensing in Jordan
What is a Trademark?
According to article (2) of Jordan Trademark 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 trademark 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 characteristic 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 themselves, 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
article 26/1/B:
” 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.
Collective Mark:
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 trademark 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 trademark for the legal person registered in its name.
The registration of collective mark cannot be assigned to third parties (artic 10/2)
Elements of a trademark
Article 7 of Jordanian trademark law states that to be qualified as registered trademark it should has a distinctive feature as to words, letters, numbers, figures, colors of other signs or any combination thereof and visually perceptible .
Distinctive means: being in a distinct way that secures distinguishing the goods of the proprietor of the trademark from those of other persons.
Trademark can be limited in whole or in part to one or more colors in such instance it shall be taken into consideration by the registrar or the court when deciding on the distinctiveness character of such trademark, if a trademark is registered without limitation to color it shall be registered for all colors.
The registration of a trademark should be restricted to goods or specified class of goods (article 7/5).
Conditions of a trademark
According to article 7 of Jordanian trademark law is stated certain conditions for a trademark that would entitle trademark legal protection:
Substantial condition of Trademark:
Distinctiveness :
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 trademark state the following:
” In determining wither, a trademark has a distinctive character the registrar in a case of a trademark in actual use, take into consideration the extent to which such use has rendered the trademark in fact distinctive for the goods in respect of which it is registered or intended to be registered.
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 trademark which are contrary to the public order or morality, or which leads to deceiving the public.
Trademark must be visually perceptible
Trademark elements must be recognized visually like (Names, signs, letters pictures… etc.) which means trademarks cannot 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 trademark :
In the Jordanian law, the legal effect of trademark is a proprietary right that enables the owner various kinds of rights.
1- right of usage :
Article 25 (1) in Jordanian trademark law states: “The right to use the duly registered trademark 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 trademark is the owner can use this (trademark) for distinguishing his goods and service from those of others.
The right of ownership of the trademark 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 trademark to distinguish other types of goods and services without it being considered as infringement on the right of trademark owner.
2- The right of assignment and pledge of trademark:
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 trademark, the transferor may continue using the trademark 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 Trademark :
The possibility of licensing a trademark is recognized by Jordanian law, but only with respect to registered trademarks, the right to license a trademark 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 trademark 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 trademark 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 trademark?
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 an elevated 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 trademark?
The owner of the trademark has the right to license for others , also the licensee has this right if his license authorizes him to do that.
How Trademark is contractually licensed?
There are 3 license contracts, and they are binding contract for the parties.
1- Exclusive license
Agreement in which trademark owner (the licensor) authorizes another person (The licensee) an exclusive right to use and exploit the trademark.
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 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 .
Period.
In addition, the licensee under exclusive license is often given the right to sublicense others.
2-Non – exclusive license
Agreement which the trademark owner (The licensor) authorizes another person (the licensee) to use and exploit the trademark without restriction on the licensor to grant further license on the same intellectual property for others.
Licensee in nonexclusive license is typically not given right to (sub license) others.
3 -Sole – license
Agreement by which trademark owner (The licensor ) authorizes another person (The licensee) to use the trademark but could not give the right of license to others but he can use the trademark himself inside the agreed territory.
Compulsory license:
There is no compulsory licensing in trademark licensing, but any interested party can ask for cancellation of the trademark if the owner of this trademark did not use his mark for 3 continuously years.
Article 22 of the Jordanian trademark law stated:
Without prejudice to the provision 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 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 cannot be an allegation in confrontation third parties, so the registration of a trade mark license derived from trade mark registration itself.
Article 26/1/A: The right to use the duly registered trademark shall be limited to its owner.
2- license writing :
article 26/2: Trademark 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 does not exist then it does not mean its invalid, but the person loses his right in proving such matter.
Writing is to protect people involved in such a serious matter as licensing because it is about giving permission to something you do not 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
Article29
“Registration is 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 trademark:
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 did not 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 trademark in Jordan trademark law terminates 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 who deal with the unlicensed person has no penal responsibility because of their good faith.
But the owner of the trademark may make a case against them according to Unjust enrichment suit .
Legal protection of Trademark in Criminal Law
Jordanian trademark law deems various acts to constitute trademark infringement and Registration is necessary to protect trademark in Jordan, therefore only officially registered Trademark in Jordan enjoys protection established in article (34, 38, 39), and article (3) of goods law.
Article (38)
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 trademark 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 trademark has been registered.
We mean by counterfeit: Whereby the infringer would insert certain amendments and decorations to the trademark to be used an identical or similar goods protected by the legal trademark.
Imitate: Whereby the infringer copies the wholly or to a considerable extent the trademark to be used on identical or similar goods, such acts counter fileting 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 trademark.
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 trademark when they are displayed to the public, in other word, an infringed trademark usually would not be displayed next to legal trademark 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 otherwise which means the proof of good faith is available to the infringer.
B- Who ever illegally used a trademark owned by another on the same class of goods or services for which that trademark is registered.
C- Who ever sold or possessed for the purpose of selling or offered for sale goods bearing a trademark whose use is regarded as an often under paragraphs (A) and (B) of this article if he was cognizant of that beforehand.
Notwithstanding what mentioned in paragraph 1 of this article, whoever sells, or offers for sale, or possesses for the purpose of selling goods bearing a trademark 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.
Civil Protection
No person shall have the right to file a lawsuit to claim damages for any infringement upon (a trademark) 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 trademark 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 trademark before request the court to take any of these measures and without notifying the defendant to prove that :
he is the owner of the trademark .
his right was infringed, or infringement is imminent, or it is 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 trademark owner does not file his lawsuit within eight days of the court decision, all the measures taken in this regard shall be null and 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.
SAMI Alawad
