02-Jul-2017
Written by: Philippine De Croutte:
Trademark protection is obtained by registration which grants its owner the exclusive right to use it to identify and distinguish its goods and services from others. The owner has the right to prevent third parties from using his trademark or any trademark that may deceive the public with regards to the goods or services for which the trademark has been registered or similar goods or services. The protection of trademarks is covered in the State of Qatar by the Law no.9 of 2002 (the “Trademarks Law”).
Trademark Protection
Marks that may be registered include without limitation names, signatures, words, designs, a smell and a sound. However, under the Trademarks Law, some exceptions apply and shall not be registered, such as: signs that lack distinctive character or are merely a description of characteristics of the goods or services, any expressions contract to public order, marks identical or similar to religious symbols, as well as signs which are similar or identical to a previously registered mark. Despite not being a member of it, Qatar uses the “Nice Classification” – 11th Edition, which concerns the International classification of goods and services for the purposes of the registration of marks. Further, with regards to the Nice Classification, restrictions that are in compliance with the local law apply, as class 32 and class 33 cover alcoholic goods and some aspects of class 29 covers pork meat, they cannot be registered and therefore, inadmissible in Qatar.
The Trademarks law applies to Qatari nationals as well as foreigners provided they are residents or nationals of states that grant the nationals or residents of Qatar an equal treatment. However, applicants who are not domiciled in Qatar are required to file applications for registration through an agent who is domiciled in Qatar, provided that such application is accompanied by a legalized power of attorney provided from the foreign applicant to an agent in Qatar.
The registration process of a trademark is made at the Intellectual Property Department – Trademark Office at the Ministry of Economy and Commerce, in Doha, through the submission of an application. Upon submission of an application for the registration of a trademark must be the payment of the prescribed fee of 1,000 Qatari Riyals. Importantly, the application procedure entails a formal and substantive investigation, an investigation of distinctiveness and a search for prior trademarks. If the Industrial Property Protection Office finds that the application for registration does not comply with the requirements of the Trademarks Law, it shall refuse or impose restrictions it sees fit for the mark to be registered and shall notify the applicant, by a recorded delivery mail, of its justified decision within 30 days from the date of filing the application. To this regard, the applicant must satisfy restrictions or modifications within 6 months from the date of the notification otherwise the application shall be deemed as if it never existed. The applicant has the possibility of appealing against the Trademark Office’s decision within a period of 60 days.
If registration of the mark is accepted, the Intellectual Property Department – Trademark Office shall publish the mark in the official gazette. Once the mark has been published in the official gazette, any concerned person may, within 4 months, will have the ability to state his grounds for disapproval in writing. However, such must be done within a period of 4 months from the announcement in the official gazette. The applicant shall be required to reply to such opposition within 2 months from receiving the notification, as a no-reply will be considered as the applicant abandoning his application. Upon the issuance of the final judgement the mark will consequently be registered and entered into the Register. Similarly, the registration will have effect as from the date of filing the application. The processing time from the date of the filing of the application to the registration is approximately 8 to 12 months.
Term and Renewal
The term of protection is valid for a period of 10 years from the date of filing the application; such term may be renewed for another 10 years by a renewal of the registration. The renewal must be in compliance with the Trademarks Law which states the following:
- Paying the renewal fees.
- Amendments of additions shall not be allowed.
- Renewal fees must be paid throughout the last year of the protection period, or a 6 months grace period will be granted and the owner will be required to pay a surcharge.
Once the fees have been paid, the renewal shall be published in the official gazette. Moreover, if the trademark has not been used during 5 consecutive years, without a reasonable excuse, from the registration or if the owner of the mark causes it to be used by a third party in Qatar, it may be subject to cancellation. A cancellation shall be made by way of a concerned person making a request to the court to cancel the mark. Nonetheless, it must be noted that, if a mark is not renewed, a period of three (3) years must elapse before a third party may re-register the mark in respect of identical or similar goods or services, according to the Trademarks law.
Penalties
Non-compliance with the Trademarks Law shall amount to imprisonment for a term not exceeding two (2) years and a fine not exceeding 20,000 Qatari Riyals, or either of those penalties. Persons committing the following acts shall face the aforementioned penalty:
- Counterfeiting or imitating a registered trademark or name, in a manner that is likely to deceive or confuse the public. Maliciously making use of a counterfeit or imitated mark, trade name.
- Fraudulently affixing or using in connection to the registered goods or services, a mark or trade name belonging to another person.
- Knowingly selling or offering for sale or distribution a good bearing a counterfeit, imitated or wrongfully affixed or used trademark or trade name.
- Knowingly and unlawfully offering services under a registered trademark or tradename.
Additional infringements are considered in Article 48 of the Trademarks Law relating to violations for: (1) using an unregistered mark in the cases prescribed under clauses 2 to 8 of Article 8 of the Trademarks Law; (2) any person violating Article 30 and 31 of the Trademarks Law; and (3) any person who falsely indicates on his goods, services, business papers or other materials any information that might lead others to believe that the mark, or trademark has been registered. Infringement under Article 48 will amount to a fine not exceeding 10,000 Qatari Riyals and imprisonment for a term not exceeding one (1) year.
In all cases, the court will demand the publication of the judgement in one or more newspapers at the expense of the defaulting party, as well as the closing of the enterprise for a period not less than fifteen days and not exceeding six months. Additionally, the equipment and material used throughout the counterfeiting and imitation shall be confiscated. Further, the court shall order the destruction of the counterfeited or imitated marks, trade names or the products bearing the aforementioned or which unlawfully bear false or illegal indicates.
If the defaulting party re-commits such infringements, the above stated penalties shall be doubled and both penalties of imprisonment and fine shall become unavoidable. Additionally, the fees payable upon commencement of the proceedings related to the execution of the provisions of the Trademarks Law shall be fixed by a Cabinet decision based on the Minister’s proposal.
References
For the purpose of this legal research, the following law has been perused:
- Law no. 9 of 2002 Regulating Trademarks, Trade Names and Models (the “Trademarks Law”);
- Nice Classification established by the Nice Agreement 1957, 11th Edition (the “Nice Classification); and
- A non-name basis source.