To achieve the desired goals of the study, the
researcher adopted the descriptive analytical method since it suits the nature,
problem and the addressed questions of this study through the use of previous
studies, laws, legislations, world and Jordanian agreements organizing the
topic of the study.
First topic
Legal framework of trademark
Trademark is considered one of the most prominent and
important aspects of intellectual property for pioneering economic and
development projects of national and international fame with strong link that
distinguished it from other competent projects as it has a prominent and
effective impact in bringing foreign investments to Jordan, and tending to
products and services representing those projects, so trademarks are divided
into (individual trademark, collective trademark and famous trademark) [6]. Based on this apparent importance,
Jordanian legislator worked to pay attention to trademark by concluding
legislation regulating it, especially in the Jordanian Trademarks Law No. (33)
Issued in the (1952), along with the Trademarks System of (1952) and the Goods
Law of (1953). The Amended Trademark Law No. 34 of (1999), the Amended
Trademark Law No. 37 of 2000, and the Unfair Competition and Trade Secrets Law
No. 15 of (2000), along with international agreements “Paris Agreement.” issued
in (1883), and the TRIPS Agreement issued in (1994), within the framework of
protecting it from similarity and theft and preventing others from using it on
products and services similar to it [7]. The trademark must be guaranteed in
laws, legislations and agreements organizing them to facilitate attracting
foreign investments, go to make essential amendments related its protection
, follow the methods organizing its
registration, keep pace with the increasing technological development at the
national and international level in light of the increasing competition between
provided products, services and work to impose strict punishments on everyone
who infringes the trademark and protect economic and development projects which
enhances attraction of foreign investment and hard currency.
First requirements
Essence
of legal trademark
A trademark is defined as “Every sign or indication
that a merchant or a maker sets on products he sells or produces, and aims to
facilitate identifying the source of selling productions or main them, as it
should not mix with other similar goods in markets which makes it easy to be
defined by customers or those who deal with it [8]. It is “every apparent,
distinguished and interesting form realized by sight in case it is being used
or to be used in distinguishing goods, products or services whether it refers
to a normal person or a legal one, who possessed this trademark due to its
manufacture, selection, trading or to indicate performing a specific service”,
taking into consideration that the promoted sound is a part of it in case it
accompanied it, in addition to all ( names, words, symbols, signatures,
letters, numbers, drawings, addresses, seals, stamps, inscriptions,
announcements and packaging), and any other signs capable of written embodiment
[9]. While Jordanian legislation defined in Jordanian Trademark Law No. (34) of
(1999) in the Article (2) a trademark as “Every apparent sign that everyone
uses or wants to use to distinguish his goods, products or services from
others’ ones .
First section:
Importance of a legal trademark
Importance of legal trademark appears as follows:
- It defines sources of
products and services, as it is able to distinguish between similar products
and services and the competent ones throughout defining the personal and
regional source, since it is the indicated symbol to products and services.
- It is considered a means
of advertising products, since it one of the most important means followed by
owners of economic and development projects which contributes in reaching minds
of individuals and local and foreign investors through advertising and
promoting trademarks.
- It works to instill an
element of confidence inside the consumers through the quality of the products
and services that carry the trademark, which is a symbol of confidence in those
products and services, which makes owners of economic and development projects
double their production and their keenness to continue the elements of trust
among both consumers and project owners, which drives them to be careful about
products and services, in order not to affect the reputation of their trademark
or shake the consumers’ confidence [10].
- It is considered a legal
competition method through its contribution in success of economic and
development projects, attract foreign investment and hard currency in the field
of competition with other similar projects at the local and international
level.
- It is a guarantee to
protect consumers, as owners of economic and development projects use it as a
means of fraud and cheating in order to promote their products and services,
and enhance their purchasing power through announcing products and services
they provide, which deceives and harms consumers, where a trademark is a base
to protect consumers from fraud and cheating [11].
Second section: Forms of
legal trademarks
Image of a trademark are shown based on the text of
the Article No. (7/1) of Jordanian Trademark Law No. (34) of 1999 which stated
that “To register a trademark, it is required that it have a distinctive
characteristic in terms of names, letters, numbers, shapes, colours, etc., or
any other group of it, and can be recognized by sight.” . It is clear from the
text of the article that the trademark takes characteristics that distinguish
it from others, in order that consumers will not fall into fraud and deception
during the purchasing process of products and services they want to benefit
from. By first looking at the trademark, original products and services can be
distinguished from the counterfeit ones.
Trademarks take the following images and forms:
- Names: They take one specific
name or more as a distinguished trademark, provided that the trademark takes a
form that distinguishes it from others before taking it as a frame, colour,
order or special layout. A merchant’s personal name is taken as a trademark
that it is set on products and services, and in this case the name should have
a distinguished form, and it is not permitted to take a personal name refers to
another person as a trademark unless he agrees if he is alive, and the approval
of the heirs if he is deceased.
- Letters and numbers: It
is possible to use letters and numbers as a trademark to indicate specific
products and services and distinguish it from others’ [12].
- Symbolz, images and
inscriptions: The owners of economic and development projects can use them to
indicate a product or specific service, and it is possible that a symbol could
be a sun, moon etc. provided that an image, symbol and inscription is set in a
specific shape so that there should be differences, as a merchant used an image
like “a falcon” as a trademark, while another competent used a sign of “a
falcon” name, in order that there is no misleading or ambiguity.
- Colours and shapes: It is
possible to use shapes and colours as a trademark in case they are not
requirements of manufacture, taking into account that those shapes and colours
require customers’ attention, so it is possible to consider shapes of mobiles a
trademark if this shape is innovated. Colours could be used as a trademark, and
a trademark may be restricted to one specific colour or more as it is
considered a part of it, and is subject to consideration when deciding on the
distinguishing characteristic of that trademark, as registration of a specific
colour does not prevent others to use it as a another trademark from the same
style or other taking into account that usage does not lead to a similarity in
the two trademarks in a group which may lead to cheating, plagiarism, and
misleading [13].
- Trade names and titles:
It is possible to use a trade name or title as a trademark, since it is used to
distinguish between products and services from each other’s, where a trade name
works to distinguishes one trade name from another trade one. Hence, Jordanian
legislator gave a right to owner of economic and development project to take
the name of owner of a project for him, but he stipulated that the
implementation of this be required for the trade name to belong to the owner of
the trademark. However, if that trade name does not belong to the owner of the
trademark, the legislator requires obtaining approval from the person.
Second requirement
Trademark
registration and its legal consequences
Talking about trademark registration requires and its
legal consequences to competent departments knowledge in this from the owner of
a right, in addition to required conditions beginning the trademark that may be
registered, all the way to the legal effects resulting from registration
process, as there should be subjective conditions and other form ones in order
that a trademark has legal protection which are summarized as follows:
First
section: Subjective conditions to register a trademark
- Legality:
It means that there is no violation to public discipline and morals, or what is
prohibited by Jordanian law, legislations and organized agreements, in other words
the legal texts permit to register it
[14].
- The
trademark must have a distinctive character: It means that it must have its own
personality and special and distinctive characteristics, seeking prcaseion
customers from getting confused between products and services that carry a
similar trademark.
- Modernity:
The trademark must be modern in its general form, and has not been previously
used or registered inside Jordan on the same products or services by another
person.
- Perceivable
by sight: The elements in forming trademarks should be realized an actual and
tangible way such as (names, signatures, drawings, images, inscriptions and
others), and here a trademark cannot be registered in case it is consisted of
unmaterialistic elements such as (musical tones, sound tones, i.e. which can be
distinguished from others throughout smelling and taste), and this due to the
difficulty of keeping this type of models of marks and high expenses [15].
Second
section: Formal conditions to register a trademark
- Request
to register a trademark: Trademarks law obliges
everyone who have a desire to be independence in using a trademark to request
registration of a trademark based on the organized legal provisions, as in
Article(6) of Trademark Law which stated that “Everyone who has the desire to
be independent in using a trademark to distinguish goods he produces, makes
selects or he issued a certificate asking to register this trademark according
to provisions of this law , and Jordanian legislator permits anyone who claims
to be an owner of a trademark he used or he wants to use and desires to
register this trade, he should submit a written application to the trademarks
registrar based on the regulated procedures according to what the Article
No.(11/1) has stated in Trademarks Law.
- Result
of registration applicant: The law gives the
trademarks registrar authority to reject any applicant or accept it without a
presence of conditions or limits, and he has the right to accept the trademark
application in addition to amend the style of usage or its place, as the
authority is limited to legal provisions, so the law legislator permits a
registration applicant appealing the registered decision to the Supreme Court
of Justice according to the text of the Article (11/3).
- Announcement
of acceptance of the trademark registration application and objection to it:
The Jordanian legislator in the trademark law obligated the trademark
registrant in the case that his trademark registration was accepted, whether
his acceptance was in the form stated in the registration application or he
made amendments to it, and the announcement of the acceptance shall be made in
local newspapers at the expense of a registration requester. The purpose of
announcing the registration of a trademark is to tell the registration to
anyone who has an objection, as he must submit it within the period specified
by the law (3) months, as stated in Article No. (11/4) of Jordanian Trademark
Law No. (34) of 1999 , and in the case
that the objection submitted to the registrar is not responded to, in this case
the registration applicant is considered to have left his application. However,
in the case that the statement of response submitted to the submitted
objection, the trademark registrar, in turn, will notify a copy of a list of
responses to the objection to the person objecting to the registration. After
the registrar allows the data of all the opposing parties and their data, if
necessary, he issues a decision to allow or reject the registration of the
trademark. The decision is subject to appeal before the Supreme Court of
Justice within a period of (20) days from the date of its issuance based on
what is stated in Article No. (14/6) of the Jordanian Trademark Law.
- Issuing
a certificate of registration of a trademark:
Throughout following all legal procedures, and based on what is decided by
Jordanian Trademark Law, the registrar of a trademark issues its registration
and in the name of a registration applicant, where a trademark is registered at
the date of an application as it is the date of a trademark registration.
Jordanian legislator has limited a trademark property to (10) years from the
date of its registration, and he permitted registration a trademark from time
to time. In addition, he obliged a registrant, based on the request of the
owner of a trademark, to renew a period of other (10) years, which enables the
owner of a trademark to maintain his trademark for another consecutive period,
up to an indefinite period if he has the desire to do this according to the text
of Article No. (20) In Jordanian Trademark Law No. (34) of 1999 “1. The period of right property of a
trademark is ten years and it can be renewed to a similar period according to
the law provisions. 2. Renewal of registered or renewed trademarks before the
entry into force of the provisions of this law upon the expiry of ten years.”
Second topic
Legal
protection of a trademark
Importance of a legal protection of a trademark is
based on the presence of a number of prominent risks emerging from strict commitment
to requirements of principle of regionalism, as the most important risks are
emergence of imitation of goods and services, and restriction of protection to
geographical borders of states enabled imitators to reproduce copies, works,
products and services without any responsibility. Thus, the negative position
led to obligation of protecting a trademark at the local and international
level. Protection of a trademark lied in abandoning principle of regionalism
and heading towards following legal proper methods to protect a trademark, as
some of them is directed by the world agreements in Paris issued in
(1883), TRIPS Agreement in (1994),
Illegal Competition Law and Trade Secrets No.(15) of (2000) and Jordanian Trade
Currency Law No. (33) of (1952), as these laws came to explain ambiguity about
determining trademark standards, since the reason behind illegal competition is
one of the arguments of protection of a trademark, and focusing on parties that
those legislations and agreements seeking to protect them representing in the
owner of a trademark, and the other party is customers’ protection to products
and services.
First
requirement
International
framework for trademark protection to attract foreign investment
International agreements, as the first of them was
Paris Agreement (20/3/1883), concerning subjects of a trademark, emerged to protect all trademarks, so this
agreement was the start point to reach TRIPS Agreement “Agreement of aspects
related to trade from individual property rights”, which came as a result of
international economic development, as it is a sub-result of the main agreement
WOT, World Organization Treaty, signed on (15/4/1994), and since Jordan joined
it in (2000), it agreed on TRIPS Agreement of (2004).
First
section: Leal protection of a trademark in light of Paris Agreement issued in
(1883)
Paris Agreement for protection of industrial property
is applied to intellectual rights in its broadest sense, as it treated the
subject of a trademark in Article No. (6/2) which stated as follows [16]:
- Member
states that agree on the agreement when its legislation allows this, according
to the request of the concerned party, pledge to impose and invalidate
registration of a trademark which is similar to another popular registered one
whether it is copied, imitated or translated according to the text of Article
No. (6/2), which is observed that the first difference or rather distinguishing
a popular trademark from an ordinary one is its non –registration, which is
contrary to the ordinary trademark as it is possible to register it in another
country other than the one in which it was registered .
- Paris
Agreement prevented using the trademark which forms (transfer, imitation,
copying, and translation) resulted from an ambiguity to customers, especially
when those products originally used by a famous trademark [17], and it reaches
states of prevention (rejection) of registration of the legal text of an
agreement in the Article No. (6/1).
- Giving
a period of (5) years to enter registration of trademarks which were(copied,
imitated or translated) in case their registration was based on good faith, and
if it was based on bad faith, the agreement permitted to apply it at any
time , and what Paris Agreement included
related to the trademark is considered a base where these types of currency
excel, while the agreement does not give a clear and explicit meaning to a
trademark, and it does not give the standard of a trademark [18].
Second
Section: Leal protection of a trademark in light of TRIPS Agreement issued in
(1994)
- This
agreement paid attention to aspects of intellectual property rights related to
trade or what is called TRIPS. The items of this agreement represented in
distinguishing them from Paris agreement in that it “moved in several directions,
where it did not organize a type of intellectual property, and it dealt with
the majority of the intellectual property sections.
- TRIPS
Agreement was referred to Paris agreement related to a trademark, as the
obligations imposed on member states remained in place without derogating from
it.
- Paris
Agreement did not highlight a definition of a trademark, but it restricted
itself to the definition of the trademark (TRIPS) definition of the trademark
as” It is a set of signals or marks which permits distinguishing the normal
TRIPS, and based on TRIPS for goods and services produced by an a specific
organization over another”, and accordingly TRIPS Agreement added a new mark
which is the service one.
- TRIPS
Agreement supposed in Article No. (16/1) an ambiguity in a state of use a
trademark by a person who has not the right to use it, and this will be
throughout (imitation and identification to the original mark), so TRIPS
Agreement linked harm to occurrence of any ambiguity, the rapid development is
for the protection field, as there is a doubt in any product or service that
has a trademark as “unoriginal”, therefore harm will occur and oblige
compensation.
- The
text of Paris Agreement is considered valid through achieving two conditions
“the possibility of harming the interests of the owner of a registered
trademark due to usage, and its usage in illegal method indicates a link
between products and services, and the owner of a trademark in the first place.
- The
agreement expanded in the scope of the decided protection for a trademark. It
prevented the use of a trademark if it was registered on goods and services
that are not similar to the goods or services that use the trademark, and in
based on the text of Article No. (16/2), which is concerned with assessing the
reputation of the trademark from its lack of fame, which worked to create the
extent of the trademark’s fame based on its knowledge of consumers, and the
strength of advertising by addressing the provisions of the Paris Agreement, we
find that the text is still not clear for the trademark statement.
Second requirement
Legal
protection to a trademark according to Jordanian legislation
When
talking about legal protection of a
trademark and its license use contract between the owner of a trademark and the
licensed, we find that legal protection of a trademark falls within the penal
framework and the right to exploit it through civil and penal protection, and
not allow any individual to assault it in order to facilitate trade works,
support Jordanian economy, prevent any assault towards exploitation of legal
protection of TRIPS trademark, and this was included in the agreement of
aspects related to trade to intellectual property rights (TRIPS) to oblige all
member states to amend legislations to go with items and articles of the
agreement to achieve legal protection to trademarks . Since Jordan is a member
of World Trade Organization, it obliges Jordan to adapt the related regulating
legislations (TRIPS), and within the framework of penal protection in legislation
to protect a trademark that goes with
Jordanian agreement, we find that it gives the right to file a penal lawsuit in
case of occurrence of an assault to the licensee of a trademark (owner of a
trademark) alone as well as the licensed, since this right is given to the
registered trademark only (that acquired the status of protection) because it
is legally registered, and according to the regulating instructions in the
Jordanian Trademark Law . Whereas when talking about civil protection of a
trademark, the right to use it and the right of the owner of a trademark to
licensee or the licensed to in not assault to a trademark, the legal principle
of the Jordanian Civil Law confirmed in the text of Article No. (256) on that
“Every harm to another obligates the perpetrator to be liable.” Jordanian
legislator considered assault to a trademark and the right to use it within the
framework of illegal competition, and any harm to it is considered an
application of the provisions of tort liability in not registering it by its
owner and that he has the right to protect his mark from infringement by
resorting to civil lawsuits [19].
First section: legal protection of
a trademark according to unfair competition and trade secrets no. (15) of
(2000)
Unfair
competition case is considered the only way of a trademark in order to avoid
criticisms that Jordanian legislator has encountered in the Jordanian Trademark
Law, so the unfair competitive case, depending on unfair Competition Law which
considered one of the guarantees of a trademark protection regardless whether
it is registered or not, and the law granted stakeholders the request of
compensation for the damage they have suffered resulted from unfair
competition. Referring to Unfair Competition Law and Trade Secrets, we find
that Jordanian legislator defined unfair competition as” Every competition that
contradicts with competition in industrial and trade affairs is considered an
act of a field of unfair competition”. Given the Jordanian legislator’s
definition of unfair competition, we find that he was highly influenced with
world agreements especially Paris Agreement to protect industrial property, and
he exchanged the word habits with prevents, while judiciary defined unfair
competition according to Jordanian Court of Cassation as “Any prevent that may
undermine the reputation of the product, lead to confusion regarding its
external appearance, or mislead the public.
In
order that unfair competition lawsuit has to be filed against a trademark
infringement, the elements of civil liability mentioned in the text of Article
No. (256) of the Jordanian Civil Law No. (43) of (1976) must exists, which are
(the act, the damage, and the causal relationship between them). Whereas the
Jordanian Civil Law requires that the act be harmful, that is, that there be an
act, damage, and a causal relationship, in order that liability has to occur,
in other words, it is a condition for an unfair competition lawsuit to be
created, as it needs the existence of harmful, and unfair competition between
them in commercial affairs, where the goal behind competition is to attract
consumers and foreign investments to a specific type of (products and
services). Competitive competition is “not resorting to misleading methods to
cause trade harm for others”, and by referring to the text of Article No. (2)
of Unfair Competition and Trade Secrets Law No. (15) of 2000, we find that they
show images of assaulting on a trademark throughout illegal methods lie in the
followings :
“A-Every
illegal competition contravenes with noble prevents in industrial and trade
affairs is considered an act of unfair competitions, where these doing these
acts requires punishment:
- Actions,
as by their nature, lead to confusion by one of the competitor’s facility or
his industrial or trade activity.
- Assualts
that contravene reality in preventing trade, where one of competitors, his
products, industrial or trade activity causes loss of confidence to a facility.
- Data
or assaults as their use in trade may cause misleading to public relating to
the nature of products, the way they are manufactured, their characteristics,
amounts or validity to be used.
- Every
prevent which may undermine the reputation of the product, lead to confusion
concerning its external appearance, the way it is shown, mislead public when
announcing it price or how it is calculated.”
B-“If
unfair competition is related to a used trademark whether it is registered or
not which leads to misleading the public.”
When
reading the legal text, it becomes clear that illegal acts have evolved with
temporal and technological development, making it difficult to limit. If the
dispute is presented to the judicial authority, the judge of the matter has the
discretionary authority, in order to consider the act to be an illegal one to
keep pace with what is introduced to him in court. The Court of Cassation’s
oversight does not extend to the discretionary authority of the judge of the
matter, so the Court of Cassation is itself the court of law and does not
consider the origin of the case, while it considers what was found to be a
violation of the main rules of law in a manner of complexity. The text of the
article in item (b) was fair to the trademark owner, as it did not require
registration in order to file an unfair competition lawsuit. It stated that the
trademark whether it is registered or unregistered, misleading the public, is
unfair competition for the trademark.
To
file an unfair competition lawsuit based on the act of infringement (the
harmful act) is not possible, and there must be damage resulting from the
harmful act, which affects the trademark owner, and without there being damage,
the element of interest is not available, and so the lawsuit is dismissed. The
forms of damage are represented in (the damage that affects the owner of the
trademark in his property, the moral damage that affects the owner of the
trademark in his reputation, dignity and honour. It is required compensation
for the damage to be real and estimated, and it is not probable. The causal
relationship between the harmful act and the damage is considered the causal
link between the damage that happens. According to the act of infringement of
the trademark owner, i.e. the damage results from this act, and the lack of a
causal link between the damage and the act of infringement results in the
lawsuit being dismissed because the cause is not found.
Second section: Legal protection of
a trademark according to Jordanian Trademark Law No. (33) of 1952.
Article
No. (26/1/B) of Jordanian Trademarks Law stated that “If a trademark is famous
and unregistered, its owner has the right to ask the competent court to stop
others from using it related to products, similar or different services
provided that the use if this mark indicates a link between those products or services
and the famous trademark, and the possibility of occurrence of confusion when
using an identical famous trademark on similar products. The legal text treats
the supposition of others’ use of a trademark whether it is registered or not,
and in this case the owner of the trademark has the right to submit a request
to the competent court to prevent such this infringement, as “others” means
“everyone uses the trademark without permission from its owner”. In order that
the owner of a trademark is able to prevent others, he must prove that there is
a relation between products, services and trademarks, and in case there is no
relation, the owner is not able to prevent others to use it, and others usage
should lead to harm to the interest of the owners of trademarks [20].
In
addition to Jordanian jurisprudence, it was created before amending the
Trademark Law of 1999 that owner of a trademark registered abroad, used and
known in Jordan, he has the right to object to the registration of any mark
identical to his mark in the Jordan if it would lead to plagiarism, fraud and
Encouraging unfair competition, as it is not required to object to a trademark
by registering it in Jordan.
The
Supreme Court of Justice was previously stated in its ruling: “The user of a trademark
has the right to request that the registered trademark in the name of another
person if it is proven that there is a similarity between the two marks that
may lead to fraud, as the use of the trademark was before registration date of
the trademark wanted to be deleted and does not exceed four years [21-33].