Introduction
Trademarks Law
What constitutes a trademark?
Famous marks
Right to registration
Protection duration
New rights for trademark holders
Penalties for infringement
Comment
Over the past few years, like a number of other countries in the Arab world, Libya has experienced a period of dramatic political change.
The transformations in Libya's political landscape have led to a number of large-scale shifts, including in relation to the operation of government offices and the country's legislation.
In June 2013 the Libyan Trademarks Office (LTMO) officially resumed full operation by issuing its first Official Gazette in two years and taking steps to develop its systems for handling trademark applications. During the preceding two years, the LTMO had been inactive amid the period of civil unrest which ensued after Muammar Gaddafi was removed from power.
Now that the LTMO is once again carrying out trademark searches and filing applications, this update looks at the new Trademarks Law (in effect since 2010) and it examines the ways in which the new law differs from its predecessor.
On August 21 2010 a new Commercial Code came into effect (Law 23/2010). Book 10 of the Commercial Code established a new Trademarks Law, replacing Law 40/1956, which had been in place for over half a century.
In summary, the new Trademarks Law:
- expands the definition of a 'trademark';
- provides that famous marks are afforded protection even if they have not been registered in Libya;
- permits individuals – including non-Libyan nationals who have a "true activity centre" in one of the countries of the World Intellectual Property Organisation or in a country which offers Libya reciprocity – to register trademarks;
- extends the grace period for filing renewals;
- grants trademark holders (and those with a right to use and dispose of a mark) the right to initiate actions – both civil and criminal – against infringing parties at any time; and
- updates and increases the penalties for trademark infringement.
The new Trademarks Law defines a 'trademark' as "anything characterising a product or a service from another" and it sets out a non-exhaustive list of what may be considered a trademark.
This list specifically includes trade names, colour marks and sound marks. Holders of these categories of mark may now potentially secure protection in Libya, by obtaining registrations in accordance with the procedures outlined in the new Trademarks Law.
Further, in defining a 'trademark' as anything that distinguishes the products or services of one trader from those of other traders, the new Trademarks Law arguably covers all forms of non-traditional trademarks. On the face of it, if something distinguishes the products or services from those of others, it can be registered in Libya.
However, it remains to be seen whether the LTMO will, in practice, be prepared to apply such a broad interpretation to the new Trademarks Law. In particular, it will be interesting to see whether issues that have restricted the registration of non-traditional trademarks in other countries (eg, the ability to define the mark clearly and to register it in a form that can be searched) will limit the application of the new Trademarks Law's broad definition of a 'trademark'.
The holders of 'famous' marks (defined as "marks that remind the public of the product or service they represent, even if those members of the public are not its clients") are afforded protection under the new Trademarks Law, regardless of whether the trademarks in question have been registered in Libya.
Accordingly, any attempt to register a trademark that corresponds to a famous mark (other than by its legitimate owner) should be automatically rejected by the LTMO.
This is potentially good news for holders of famous marks. With Libya having largely been closed to international brands for so long, many are now encountering problems with unauthorised versions of their marks being present in the Libyan market.
However, while a definition of 'famous' marks is provided, it is unclear what level of proof will be required to meet this definition. Of particular importance is the extent to which the LTMO will consider 'the public' to be members of the public internationally, or whether it will require holders of international famous marks to provide evidence of a reputation in Libya.
Any individual or company is permitted to register trademarks under the new Trademarks Law. This extends the option of registration to all brand owners. Previously, under the old Trademarks Law, registrations were restricted to:
- 'industrialists, producers or merchants' of Libyan nationality; and
- individuals and businesses that resided in or had an actual place of business in Libya.
This is an important development, as it opens the door for businesses that wish to protect their trademarks in Libya before entering the Libyan market.
Although the duration of protection granted to registered trademarks remains 10 years (renewable for further 10-year periods), the new Trademarks Law extends the grace period for filing renewals from three months to six months. With many brand owners facing difficulties in verifying that the records of their Libyan registrations are accurate, this provision is potentially important in that it provides more time to confirm the status of a mark before submitting an application to renew.
New rights for trademark holders
Registered trademark holders – as well as those individuals with a right to a registered mark's disposal or use – may seek (even before initiating civil or criminal proceedings) at any time an order from the first-instance court for the seizure of infringing goods. This was not provided for under the old Trademarks Law.
This development affords registered trademark holders a potentially swifter and less costly means for taking action against infringements.
Under the new Trademarks Law, any individual found guilty of trademark infringement – by either falsification of a mark already registered in accordance with the law or imitation of a mark in bad faith – will be liable on conviction to imprisonment for a period up to two years and fines of up to LD10,000 (approximately $8,000).
While the term of imprisonment remains the same as in the old Trademarks Law, the monetary penalty for infringement is more likely to act as a deterrent than the previous amount of LD300 (approximately $240).
The introduction of the new Trademarks Law is a welcome (and long overdue) step in the right direction for trademark holders seeking to protect their rights in Libya. With Libya becoming an important emerging market within the region, brand owners (both local and international) are in a better position to secure protection for their marks and enforce their rights thanks to the changes introduced by the new Trademarks Law.
This – combined with the steps taken by the LTMO to process new trademark applications (and to clear the backlog of old filings) – means that Libya is back on the map for brand owners seeking protection in the Middle East and North Africa region.
For further information on this topic please contact Rob Deans or Saba Al Sultani at Clyde & Co by telephone (+971 4384 4000), fax (+971 4384 4004) or email ([email protected] or [email protected]). The Clyde & Co website can be accessed at www.clydeco.com.
