Q&A: Trade marks in Morocco

How to file and protect your marks in Morocco, by Spoor & Fisher

1 Who may apply for a trade mark?

Any person claiming to be the proprietor.

2 What is the scope of a normal trade mark?

A trade mark registration provides the proprietor with a monopoly to use the trade mark in relation to the specific goods or services covered by the trade mark. The proprietor can also prevent others from using identical or similar trade marks in relation to the goods or services covered by the trade mark, or that are similar.

3 What time constraints are there on registering a trade mark?

There are no time constraints in relation to the registration of a trade mark. However, in terms of the Paris Convention it is possible to claim priority based on the first application filed in a convention country. Such an application must, however, be filed within six months from the filing date of the trade mark in the convention country.

4 How long does registration take and what are the standard costs?

Time: If no problems are experienced during the examination period, it can take approximately 12 months from the date of application to the date of registration. Cost:The official fee for applying for a trade mark in up to three classes is $114 per trade mark. These fees, however, do not include the professional fees of the respective firms in Morocco. Further costs may arise on examination of the trade mark, and such costs would depend on the requirements raised by the Registrar.

5 How are trade marks classified?

Morocco is currently using the 10th edition of the Nice Classification.

6 Is there anything particular about the examination process that applicants should be aware of?

Applications are examined covering absolute grounds and, if it is found defective, the office will issue a requisition for rectifying the application within three months, extendible by another two months. If the requisition is obeyed, the original filing date is retained.

7 What constitutes use of the trade mark? When must this be demonstrated?

Bona fide commercial use constitutes use of a trade mark. An owner who has not put his trade mark to genuine use in connection with the goods or services covered by the registration during an uninterrupted period of five years, without good reason, shall be liable to revocation of his rights. Revocation shall take effect as of the date of expiry of the above five-year period. It shall have absolute effect. Use of the trade mark that began or resumed after the above five-year period will not be a defence if it has been undertaken during the three months prior to the request for revocation and after the owner had gained knowledge of the possibility of a request for revocation. The burden of proving use shall rest with the owner of the trade mark and may be furnished by any means.

8 When is a trade mark considered descriptive?

Signs or names which may serve to designate a feature of the product or service, particularly the type, quality, quantity, purpose, value, geographical origin or time of production of the goods or furnishing of the service are considered descriptive and, consequently, are not registrable.

9 When is it considered generic?

There is no specific reference to generic trade marks in the Act, but generic trade marks would not be considered distinctive as they would not be considered capable of distinguishing the goods or services of the proprietor concerned from the goods and services of others.

10 What aspects of a trade mark can be considered objectionable or immoral?

Any aspect of a trade mark that is likely to give offence to any class or person or be contrary to the morals of the public.

11 Are there grounds for registering as a geographical indication?

A geographical indication cannot be registered as a trade mark.

12 Can three-dimensional or other unconventional trade marks be registered?

Yes, it is possible to register three dimensional trade marks as well as devices, labels, reliefs, logos, holograms and synthesised images.

13 What constitutes a well-known trade mark?

Signs may not be adopted as trade marks where they infringe earlier rights, particularly an earlier trade mark that is well-known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property. It should be noted that, while there is no commonly agreed detailed definition of what constitutes a well-known trade mark, it is likely that the WIPO Joint Recommendations on the Protection of Well-Known Marks would be persuasive.

14 Can you trade mark a personal name?

Yes, trade marks may include words or combinations of words, and surnames and geographical names. However, trade marks which infringe earlier rights, particularly a surname, pseudonym or likeness, may not be adopted without consent of the authorities concerned.

15 How can a trade mark be amended?

The registered proprietor of a trade mark may apply in the prescribed manner to the registrar to amend a registered trade mark as long as that amendment does not substantially affect the identity of the trade mark.

16 How do you appeal against a denied application?

In the event that the registrar refuses the application, the applicant may present to the office, within two months from communication of a refusal, arguments against the refusal and a request to reconsider.

17 How do you oppose another’s application?

Within the opposition term of two months from publication, an opposition may be filed by the owner or exclusive licensee of a prior trade mark registration. This applies whether it is a national registration or an international (Madrid) registration which is effective in Morocco; a trade mark which is already well-known in Morocco within the meaning of Art. 6bis of the Paris Convention; or, a protected geographical indication or appellation of origin. The opposition will be served by the office on the applicant. The parties may exchange representations via the office and the office will serve a draft decision on the parties for their final objections, if any, before making it final. The final decision will be entered on the register and published in the gazette. The opposition proceedings should be finalised within a term of six months, subject to extension or suspension in certain circumstances. An appeal is available from the OMPIC decision to the Commercial Appeal Court of Casablanca.

18 When is a trade mark considered to be used in bad faith?

When an applicant files a trade mark application in the knowledge that he is not the true owner of the trade mark.

19 When must registration be renewed and at what cost? How is a trade mark lost?

A trade mark must be renewed ten years after the date of application, at a cost of $137. These fees, however, do not include the professional fees of the respective firms in Morocco. Application for renewal must be made within the six months preceding expiry of the current term. A grace period is allowed of six months from expiry of that term, on payment of late fees. Non-payment of the requisite fees within this time will result in the lapse of the registration.

20 How are trade marks jointly owned, transferred or assigned?

Jointly owned: In Morocco it is possible for two or more persons to jointly own a registered trade mark.

Transfer/Assignment: The rights under a registered trade mark may be transferred in whole or in part. Any such assignment must be recorded at the Office. Until recorded, the assigned rights will not be available against other parties who do not have actual notice of the assignment. The rights under a pending trade mark application are not assignable.

21 What are the different avenues for infringement? What is the procedural format and timing for each?

Infringement proceedings may be brought for any breach of the rights conferred by ownership; however, under Art. 207, proceedings may not be instituted in respect of acts before completion of the registration. Proceedings must generally be brought by the owner. An exclusive licensee may commence proceedings if the owner fails to do so and any licensee may take part in proceedings instituted by the owner in order to secure damages. Civil and criminal remedies may be pursued and damages or fines may be ordered. Criminal, civil and customs actions are available to trade mark owners in Morocco. Civil action is generally preferable to criminal action. The procedure is to submit a petition to the president of the Tribunal de Commerce for the appointment of a huissier (bailiff) to proceed tosaisie descriptive by purchasing a sample of the counterfeit product for comparison with the genuine and providing an inventory of the suspected counterfeit products. The president will then make a ruling based on the bailiff’s report, whereafter the substantive law suit must be filed within 30 days.

22 How is a counterfeit contested?

As described above in question 21.

23 What rules cover passing off or unfair competition?

Any act of competition contrary to honest practise in industrial or commercial matters shall constitute an act of unfair competition. Actions based on unfair competition must be instituted by way of civil proceedings.

24 Is parody considered a valid defence?

It is unlikely that parody would be considered to be a valid defence in infringement proceedings in Morocco.

25 Is descriptive use, fair use or use in good faith a defence in infringement proceedings?

No.

26 When is it worth conducting a survey to provide evidence of reputation?

Survey evidence is permissible as evidence of reputation, for example, when establishing that a trade mark is well-known.

27 How do you appeal an enforcement decision? What other remedies are available?

In civil proceedings appeals are heard by the Commerce Court (Tribunal de Commerce) and appeals are heard by the Court of Appeal (Cour d’Appel Commerce). Criminal proceedings are heard by the criminal courts and appeals are heard by The Court of First Instance (general law).

28 What arrangements are there for trade marks in bankruptcy?

Trade marks are treated in the same way as any other asset in bankruptcy proceedings.

29 How does this jurisdiction interact with international treaties?

Morocco is party to, and recognises the obligations of, the following international agreements: