Trademark

Law: Decree 2385 of 17 January 1924. A new law is under study.

Trademark definition: any sign which serves to identify the origin of goods or services can be considered a trademark.

Registrability: the inherent character of a trademark is not examined and all trademarks are practically accepted for registration, providing they are not contrary to public order or morality.

What is registrable (the list is not exhaustive)
• Words, letters, numerals, slogans etc.
• Devices, designs
• Tridimentional trademarks, shapes
• Colours
• Sounds (musical notation)
• Collective trademarks
• Not accepted : smells

PRE AND POST REGISTRATION PROCEDURE
FILING REQUIREMENTS
SEARCHING
ENFORCEMENT OF RIGHTS

PRE AND POST REGISTRATION PROCEDURE
Conduct of the filing proceedings
• The date of receipt of the application in the Patent Office is not considered as the filing date and it takes about two weeks thereafter, to secure an effective filing date. The reason is that the filing taxes are not paid upon lodging the application but deferred until after examination.
• Examination takes about two weeks to be carried out. If no citation is made, the Registrar issues the order to pay taxes (vide “Examination”)
• The date the taxes are paid is considered the filing date and registration is immediately granted in the absence of the opposition procedure.
• The filing formality is not conclusive unless the publication fee is paid and it takes an additional week to obtain the authorization to proceed with payment. When publication is secured , the filing date is ratified and the filing proceedings deemed closed.

Hence, between the day we receive filing instructions and the day we are able to issue a filing report, more than three weeks will have elapsed. Considering these delays beyond control, we recommend to our Associates and Clients to send us their instructions reasonably in advance to allow us prosecute filing within legal delays, if any.

Classification: The latest edition of the Nice Classification of goods and services is adopted. Items can be classified by title head. The expression « all items belonging in class X » is not accepted.

Transliteration: Arabic transliteration is not required and a trademark protected in Latin characters extends protection to its Arabic equivalent. A trademark in Latin characters and its Arabic equivalent can be filed in a single application.

Multiple class application: a single application can cover multiple classes but each class is submitted to a fee.

Examination: is not provisioned by the Law but in compliance with a recent administrative measure, the Protection Office examines applications on relative grounds. It is carried out prior to securing a filing date and takes about two weeks to be completed.

If no citation is made the applicant is authorized to proceed with tax payment (and obtain an effective filing date). In case a conflicting trademark is detected, the application is put on hold. The applicant may still file his application providing he (or his local representative) signs a declaration acknowledging the anteriority. Further which, the formality is resumed and a filing date obtained.

Opposition: the administrative opposition procedure is not available. Disputes are brought before regular Courts.

Registration: in the absence of the opposition procedure, registration is obtained upon filing date.

Protection term for registration and renewal : 15 years from filing date.

Publication: is carried out by the applicant after the filing fee is paid and it takes another week to obtain the Registrar’s approval to handle publication proceedings. 6 to 8 months later, the registration notice is published in the Official Gazette .

Renewal: amounts to a re-registration and is subject to the same requirements as for a new application. It is due at anniversary date of basic filing. A three month grace period is allowed without surcharge.

Recordal: Transfer of property must be recorded to be opposable to third parties. Late recordal is liable to a penalty. Transfer of goodwill is not compulsory.

A 3 per mil stamp duty is payable in respect of consideration paid for transfer. A symbolic consideration can be stated. Despite a specific provision therefor, the same applies to licenses, in compliance with the general principles of law.

Use: use is not compulsory to maintain the validity of registered trademarks .

FILING REQUIREMENTS:
Power of attorney: To expedite the inception of proceedings, the Patent Office accepts faxed powers pending receipt of original which must immediately follow. The power must be simply signed and indicate the name and capacity of signatory. A general power serves for continuous applications. A suitable bilingual form is available on this site.

List of goods/services: must be translated into Arabic.When the list is long, translation thereof delays the inception of the filing proceedings since it must be filed together with the application. We recommend that your instructions be sent to us reasonably in advance to enable us carry out the translation work especially when close time limits must be respected

Supporting documents: Originals are required and must be filed together with the application , except for powers (vide power). They are translated locally into Arabic by a sworn translator.

For Lebanese applicants, the following is requested in addition to the indicated requirements:
• Notarization of the power of attorney
• Copy of the circular letter
• Extract from the Registry of Companies

Registration/Renewal:
• Simply signed power of attorney (vide under power)
• 8 specimens of the trademark if it is a logo or in colour.
• A typographic film (prepared locally)
• True copy of Home registration when claiming priority. Must be filed within three months from Lebanese filing date.

Assignment/Merger:
• Simply signed power of attorney (vide under power)
• Evidencing document mentioning effective date of transfer, legalized. A bilingual specimen of assignment deed can be obtained upon request
• 3 per mil stamp duty is due in respect of consideration paid. A nominal consideration can be stated.
• Late recordal is subject to a penalty after three months from effective date for foreign applicants and after one month for locals.

License:
• Simply signed power of attorney (vide under power)
• License contract signed by both parties or preferably an extract thereof stating the main terms, legalized.
• 3 per mil stamp duty is due on sums stated in the document. A nominal sum can be mentioned.

Change of name:
• Simply signed power of attorney (vide under power)
• Evidencing document indicating old and new name, legalized .

Change of address:
• No document is required, only the old and new address.

Cancellation of registration/Limitation of list of goods/services:
• Special power of attorney, notarized and legalized .

SEARCHING
Availability search
• Only word marks can be searched
• The Patent Office records cannot be searched and search providers seize their database from the Official Gazette. As a consequence, registrations which have not been published cannot be searched (it takes them 6 months to get published.)
• For technical reasons pertaining to the Official Gazette, it is impossible to spot registrations obtained before 1970 for 30, 45 and 60 years and which are still valid.

In-use trademark search: trademarks in use cannot be checked because appropriate database is not available. Generally it is left to the investigating party’s local distributor, to furnish the information or conduct a market survey.

ENFORCEMENT OF RIGHTS
Registered and unregistered rights
• Trademark rights are conferred by use and registration is a mere presumption of property.
• Use is not required to maintain the validity of a registration and trademarks cannot be cancelled for non-use.
• Trademarks which are not registered by the time the infringement occurs cannot seek remedy before criminal courts. Unregistered trademarks can be defended before civil Courts, on the basis of priority of use.
• There is no time-limit for the owner of a registered trademark to defend his infringed rights before civil and criminal courts.
• A prior user can contest a registered trademark on basis of priority of use within a period of 5 years from the contested registration.
Past the 5 years, the prior user can attack a registration providing he brings proof that the registrant was aware of his use at the time of registration.
In that event, the prior user will be allowed to coexist with the registered trademark for the remaining duration of the registration.
• In addition to counterfeit and imitation, unfair competition is provisioned in the law and is defined as being any act contrary to the fair practice of trade.

Remedies
• Legal actions are brought before Courts of First Instance civil or penal and can be appealed before Courts of Appeal and subsequently Supreme Courts.
• The Lebanese trademark law is a copy of the French trademark law of 1857 and as a consequence local courts generally take into consideration French court precedents and doctrine.
• To assess likelihood of confusion, Courts use the internationally admitted criteria taking into consideration the overall aspect of conflicting trademarks.
• Before a final decision is reached, Courts or its Presidents can order with or without financial guarantee, temporary prohibition of the infringing goods and impoundment thereof, until a court decision on the merits is issued. To obtain such measure, the existence of blatant similarity and prejudice must be evidenced.
• Plaintiffs generally seek remedy before civil courts because criminal courts apply the law in a restrictive way and require to bring forth evidence of bad faith. Besides, imprisonment which is the main penalty sentenced by Penal Courts, is rarely ruled.
• Trade name is conferred the same protection as a trademark and is entitled the same remedies and reliefs.

Interim measures
• Prior to filing a legal action, interim orders involving temporary measures such as prohibition to use the infringing goods and impoundment can be obtained ex parte from the Judge of urgent matters, with or without financial guarantee. However, to obtain such injunctions the infringement and prejudice must be flagrant.

• The Public Prosecutor or the Head of the Patent Office can order inventory and sampling of the infringing goods. Under penalty of annulment of these operations, a legal action must be filed before Civil or Criminal Courts within 15 days from the date the order is carried out.

• In certain cases and prior to filing a legal action, it may prove useful to request the appointment of a court expert whose mission would be to establish the facts and scope of the infringement. The appointment of the expert is ordered ex parte by the Judge of urgent matters and his report can be significant in supporting the legal action to come.

Penalties
The law provides for imprisonment and/or fines against persons who knowingly counterfeit or fraudulently imitate or use a registered trademark.

Time frame for obtaining judgments: It takes between 18 to 24 months at best, to obtain a judgment in each degree of jurisdiction, First Instance, Appeal and Supreme Court. Judgments are notified to the Patent Office.

Parallel imports: the principle of national or international exhaustion of rights is not applied. Parties revert to the general law and to the contractual provisions in as much as they include or not restrictions to export outside the licensed territory. In addition, the exclusive distributor may attack parallel imports in compliance with a special law on exclusive commercial representation.