Trademarks and Industrial Designs according to Egyptian law

Intellectual Property

Trademarks and Industrial Designs according to Egyptian law

No. 82 of 2002 on Protection of intellectual property

rights and its Executive Regulation

Regulatory Laws:

Law No. 82 of 2002 had been issued promulgating law of protection of intellectual property rights and its executive regulation issued by the prime Minister decree No. 1366 of 2003, issuing Executive Regulation of Books One, Two and Four and decree No. 2202 of 2006 amending some Provisions of the executive Regulation of the third book of law of protection of intellectual property rights, which abolished the Law No. 57 of 1939 on Trademarks , Law No. 132 of 1949 on Patents and Industrial Designs as well as Law No. 354 of 1954 on copyright protection.

Firstly: Trademarks

Nature of Trademarks:

A trademark is any sign distinguishing goods, whether products or services, and include in particular names represented in a distinctive manner, signatures, words, letters, numerals, designs, symbols, signposts, stamps, seals, drawings, engravings, a combination of distinctly formed colors and any other combination of these elements if used, or meant to be used, to distinguish the products of a particular industry, agricultural, forest or mining venture or any goods, or to indicate the origin of products or goods, or their quality, category, guarantee, preparation process, or to indicate the provision of any service.

In all cases, a trademark shall be a sign that is recognizable by sight.

Importance of Trademark registration:

Name of Brand or Trademark inspires confidence and safety of the consumer, with its good characteristics and specifications.
Preventing Competitors from simulating the company's products or services or imitating it accurately.
Raising the Market value of the company which own the Trademark.
Aiming to distinguish Products in order to attract customers and public consumers.

Cases of refusal of the Application of Trademark registration, according to Egyptian law:

Marks devoid of any distinctive character, or composed of signs or statements which only usage grants to the products, or which are the normal picture or image thereof.
Any mark which is contrary to public order or morality.
Public armorial bearings, flags and other emblems pertaining to the State or any other state, regional or international organizations, as well as any imitations thereof.
Marks, which are identical with, or similar to, symbols of religious character.
Symbols of the Red Cross or Red Crescent, or any other emblem of the same character, as well as any imitations thereof.
The portrait of an individual or his armorial bearings, except with his consent.
Designations of honorary degrees which the applicant is unable to prove his right thereto.
Marks and geographical indications which are likely to mislead or confuse the public or which contain false descriptions as to the origin of products, whether goods or services, or their other qualities, as well as the signs that contain an indication of a fictitious, imitated or forged trade name.

International conventions that Egypt acceded for the protection of intellectual property rights:

Paris Convention for the Protection of Industrial Property 1883 (acceded to Egypt on July 1, 1951).
Madrid Agreement Concerning the International Registration of Marks 1891 (acceded to Egypt on July 1, 1952).
Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods 1981 (acceded to Egypt on July 1, 1952).
Hague Agreement Concerning the International Registration of Industrial Designs - London 1925 (acceded to Egypt on July 1, 1952).
Trademark Law Treaty - Geneva 1994 (acceded to Egypt on October 7, 1999).
Nairobi Treaty on the Protection of the Olympic Symbol 1981 (acceded to Egypt on October 1, 1982).
Convention Establishing the World Intellectual Property Organization 1967 (acceded to Egypt on April 21, 1975).
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) 1994 (acceded to Egypt on June 30, 1995).

Conditions for trademark registration:

A trademark shall have a distinctive character,
A trademark shall be new and is not previously used.
A trademark shall not be Contrary to public morals or public order.

Required documents for registration of Trademarks within the Arab Republic of Egypt:

A clear print of the trademark subject to registration as used in markets.
An official extract of the Commercial Register (For Egyptian companies), or an official extract of the constitution act (for foreign companies) legalized up to the Egyptian Consulate.
Document of precedence in case of being required.
Full Information about products or services that shall be conferred with protection.
Notarized power of attorney (for Egyptian companies) or a power of attorney legalized up to the Egyptian Consulate (for foreign companies)

Procedures of Trademark registration:

Inquiry about the possibility of a trademark registration or not
filing an application for registration of a trademark on the prescribed form, accompanied by original picture and four copies of it
- During eight Months from the filing date of the application for registration, a formal decision shall be issued to accept or reject the application for Registration then our firm takes the necessary procedures towards publicity in case of acceptance or filing a petition in case of rejection.
- Final registration will be completed after the end of the legal term given for oppositions (60 days from the date of issuance of the official Gazette, then our firm shall proceed with paying the registration fees and extracting the certificate of registration
- The firm notifies you about the official deadlines for renewal of the registration within prescribed time limits (ten years from the date of submission of application for registration) in order to protect the trademark from Deletion.
- The firm notifies you in case of publicity of any trademark that imitates your trademark in order to proceed with the required necessary procedures for opposition to any counterfeit trademark as required by law.
- The firm proceeds with all necessary procedures in order to renew the period of protection.
- The Office goes through procedures of transfer of the ownership of a mark, authentication of the usufruct licenses and modification of any information related to the owner of a trademark
Necessary time to finalise the Registration procedures of a trademark Within the Republic of Egypt Arabic is ranging from 12 to 16 months.
The protection period According to the Egyptian law is 10 years which extends for a period or similar periods upon the request of the trademark owner during the last year of the period of protection and subject to payment of the due fees.

Protection of a trademark:

Protection of a trademark in accordance with Egyptian law is divided into two sections:

First, civil protection:

Civil protection which is based on conferred civil protection upon a trademark according to the civil law, which entitles the owner of a trademark the right to claim compensation if there is any violation of his trademark, through filing a lawsuit of unfair competition.

Second, Criminal protection:

Criminal protection conferred to a trademark is based on Article (113) of Law number 82 of 2002 for Protection of Intellectual Property Rights.

This criminal lawsuit is to be filed only by the owner of the trademark or the one who has acquired the ownership; however a trademark shall be registered in order to accept filing such lawsuit.

Penalties stipulated by the Egyptian law in case of violation of any registered trademark:

Article (113) of Law number 82 / 2002 of the Protection of Intellectual Property Rights stipulates the following:

Without prejudice to any more severe punishment under any other law, shall be punishable by imprisonment for a period of not less than two months and by a fine of not less than 5,000 pounds and not more than 20,000 pounds, or by either punishment, any person who:
- Counterfeits a trademark registered in accordance with the law or imitates it in a manner which is likely to mislead the public;
- Fraudulently uses counterfeit or imitated trademarks;
- Fraudulently affixes to his products a trademark belonging to a third party;
- Knowingly sells, offers for sale or distributes, or acquires for the purpose of sale, products bearing a counterfeit or imitated mark, or on which the mark was unlawfully affixed.
In case of repetition, the offense shall be punishable by imprisonment for a term of not less than two months and by a fine of not less than 10,000 pounds and not more than 50,000 pounds.
In all cases, the court shall order the confiscation of the infringing products, the revenue and the returns of such products as well as the implements used in the infringement.
The court may, when issuing a condemnation, order the closure of the enterprise used to commit his infringement, for a period not exceeding six months. In the event of repetition, the enterprise shall imperatively be closed down.

Secondly, industrial designs and models:

Nature of industrial designs:

An industrial design is any composition of lines or any three-dimensional form whether or not associated with colors provided that such composition or form gives a special appearance of novelty and is industrially applicable.

Cases in which industrial design loses its novelty according to Egyptian law:

If it was disclosed to the public by means of a description or by use, prior to the filing of the registration application.

Nonetheless, disclosure or description of an industrial design shall not affect its novelty if it was carried out after the application for registration in a country member in the World Trade Organization, or a country which applies reciprocity to Egypt, or if the disclosure occurred in a national or an international exhibition, or a publication about the industrial design in a conference or a scientific periodical, provided that all this has occurred within six months prior to the date on which the registration application was filed in Egypt.

If it was not essentially different from a prior industrial design, or if it was intended for another kind of products different from those of the previously registered industrial design.

Cases of refusal of registration of the industrial design according to Egyptian law:

Designs whose shape is basically due to the technical or functional requirements of the product.
Designs that include emblems, religious symbols, stamps or flags of Egypt or other states, or the use of which may undermine public order or offend public morality.
Designs, which are identical, similar or closely resemble a registered trademark or a well-known mark.

The necessary documents for registration of Industrial Designs within the Arab Republic of Egypt:

A clear Dimensional print of the industrial design with a white background, as used in markets.
Four photographs or graphic copies of the industrial design subject to be registered.
Document of precedence in case of being required.
An official extract of the Commercial Register (For Egyptian companies), or an official extract of the constitution act (for foreign companies) legalized up to the Egyptian Consulate.
Notarized power of attorney (for Egyptian companies) or a power of attorney legalized up to the Egyptian Consulate (for foreign companies)

Procedures of Registration for Industrial designs:

Filing an application for registration of an industrial design ‘conditioned with novelty and innovation of design’ before the Department of Trade Registry - General Authority for Trademarks and Industrial Designs.
The application of registration for an industrial design may be filed with numbers of industrial designs that does not exceed 50, conditional to be compatible.
After eight Months from the filing date of the application for registration, a formal decision shall be issued to accept or reject the application for Registration

In case of rejection:

Our firm shall file a petition against the decision of the General Authority for Trademarks and Industrial Designs within thirty days from the date of notification of the rejection decision.

In case of acceptance:

Our firm shall pay the Publication fees of the industrial design in order to be published at the trademark official gazette within 3 months from the date of acceptance, and then our firm shall provide you with a copy of that publication.

During period of declaration and period of Publicity, any third party who may be concerned in objection of acceptance of the industrial design or its registration has the right to oppose such decision of acceptance using the model established to that effect or Contents thereof and our firm shall take all necessary procedures to protect our client’s right to register the industrial design.

Final registration will be completed after the end of the legal term given for opposition (60 days from the date of issuance of the official Gazette, then our office shall proceed with paying the registration fees and extracting the certificate of registration
The firm notifies you about the official deadlines for renewal of the registration within prescribed time limits (ten years from the date of submission of application for registration) in order to protect the trademark from Deletion and the industrial design renewal period is only five years.
The firm proceeds with all necessary procedures in order to renew the period of protection of the industrial design.
The firm goes through procedures of transfer of the ownership of the industrial design, authentication of the usufruct licenses and modification of any information related to the owner of the industrial design
The Office notifies you in case of publicity for any trademark that imitates your industrial design in order to proceed with the required procedures Necessary for the opposition to any counterfeit industrial design in order to preserve our client’s rights.

The legal period of time to protect industrial designs:

The protection conferred by the registration of an industrial design shall be for a period of ten years as from the date of filing the registration application in Egypt.
The protection shall be extended for a further period of five years, when the owner of the industrial design applies for renewal within the last year of the protection period, and in the manner prescribed by the Regulations.
The owner may, however, apply for renewal of the registration, within three months after the expiry of the protection period, failing which the Department shall automatically revoke the registration.

Filing of an application for precedence of an industrial design:

Any person desiring to take advantage of an earlier filing of an industrial design, under Article 4 of the Paris Convention for the Protection of Industrial Property, shall file, in Egypt, within a period not exceeding six months from the date of the first earlier filing in a country that is member of the World Trade Organization or applies reciprocity to Egypt, an application for the registration of the same industrial design.

Penalties stipulated by the Egyptian law in case of violation of any registered industrial design:

Article (134) of Law number 82 / 2002 of the Protection of intellectual Property Rights stipulates the following:

Without prejudice to any more severe punishment stipulated under any other law, shall be punishable by a fine of not less than 4,000 pounds and not more than 10,000 pounds any person who:
imitates a protected industrial design registered according to the provisions of this Law;
Knowingly, manufactures, sells, offers for sale, acquires for trade or circulation, products bearing imitated industrial designs;
Unlawfully affixes on products, advertisements, trademarks, certain implements or the like, indications that may lead to believe that such a person has registered an industrial design.
In case of repetition, the punishment shall be imprisonment for a period of not less than one month and a fine of not less than 8,000 pounds and not more than 20,000 pounds.
In all cases, the court shall order the confiscation of the incriminated industrial design, the infringed products and the implements used in the infringement. The convicting order shall be published in one or more newspapers at the expense of the convicted party.