Judgment of the Federal Supreme Court of Cassation

Before it was recently amended, article no. 4 of the aforementioned law stated that trademarks with an international reputation and fame that extends beyond the borders of the country of origin could not be registered...

MARCH 20, 2021

No.3 of 2009: about the Registration of International Trademarks and the Principle of non-retroactivity of the law

Trademark law No. 37, enacted in 1992, has undergone numerous legislative revisions. The amendment of Article 4 of this federal law in particular.

Legal principles:

Before it was recently amended, article no. 4 of the aforementioned law stated that trademarks with an international reputation and fame that extends beyond the borders of the country of origin could not be registered unless the owner or his official attorney approved it. However, following a recent amendment, the provisions of Article 4 now read as follows:

  1. Trademarks of worldwide renown that extend beyond the borders of their country of origin to other countries may not be registered unless the original owner applies/requests it or an official power of attorney is issued.
  2. The extent of the concerned public's understanding of the mark as a result of its promotion should be taken into account when determining whether it has gained fame.
  3. Renowned trademarks may not be registered to differentiate products or services that are not identical to or conform to those distinguished by the trademark in the following circumstances:
  1. The use of a trademark implies a connection between the distinguishable goods or services and the goods or services of the original mark's owner.
  2. The use resulted in a potential loss of reputation for the original trademark owner. The principle of non-applicable retroactivity of the law.

Facts of the case:

  • The claimant is a company that has been incorporated in the United States since February 1990. The company makes adhesive tapes, and its trademark has a global reputation that extends beyond the borders of its home country. The defendant used the claimant's trademark on products used as thermal insulation panels in heating and cooling systems, but not on other products.
  • The claimant brought the case to the court of first instance in order to have a trademark registered by the defendant in violation of Trademarks Law annulled, claiming that the defendant's trademark is identical to the claimant's trademark, which has a worldwide reputation and fame. However, the court of first instance released a final decision, stating that the lawsuit is dismissed due to a lack of legal basis.
  • The claimant appealed the first-instance court's decision to the Appellate Court, which upheld the same decision.
  • The claimant appealed the appellate decision to the Supreme Court of the United States, claiming that the defendant had used its trademark, which has an international reputation in violation of article no. 4 of the Trademarks Law; requesting from the court to annul and strike off the trademark registered by the defendant which has an international reputation, in violation of Article 4 of the Trademarks Law; requesting that the court annul and strike off the defendant's trademark registration.

The supreme federal court released its final decision after deliberation, dismissing the case for the following reasons:

  1. The case was filed prior to the Trademarks Law's most recent amendment. As a result, the old provisions of the article that were in effect prior to the new amendments, rather than the most recent amendments, will be applied in this case.
  2. Because the defendant's trademark serves a different purpose than the claimant's trademark, each of the two products varies from the other in terms of general appearance, indications, and consumer types. As a result, the claimant's argument is based on shaky legal grounds and should be dismissed.


Finally,
one of the most important legal principles relating to Public Order is the principle of non-retroactivity of the law.

Reference:

https://www.eastlaws.com/data/ahkam/details/325236/461458/0

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