Cancellation and nullification of trademark registration

Cancellation and nullification of trademark registration

Trademark definition in Egyptian law: a trademark encompasses any distinctive sign that distinguishes a product, whether goods or services, from others. This includes distinctively shaped names, signatures, words, letters, numbers, drawings, symbols, business addresses, stamps, seals, portraits, embossed designs, and specific color combinations. These elements, either alone or in combination, serve to identify products from industrial, agricultural, forestry, or other natural sources, or to indicate the origin, type, quality, or method of production, or even the provision of a service. In all cases, the trademark must be visible.

1. Trademark in Qatari law: a trademark is any visible sign capable of distinguishing the products of a particular business for a merchant, manufacturer, or service provider.
2. Trademark definition under Saudi system: the Saudi authority for intellectual property defines a trademark as creations such as names, words, signatures, letters, symbols, numbers, titles, seals, designs, drawings, images, distinctive engravings, or unique packaging elements, additionally, shapes, color combinations, or any combination of these elements, used to distinguish goods or services of a particular establishment, fall under the definition of a trademark.

A trademark can be canceled similarly as its registration if it violates the conditions and requirements for registration or for reasons associated with the rights holder, as intellectual property rights.

Below, we present cases of cancellation and nullification of trademark registration according to Egyptian, Qatari laws and Saudi system.

1. Cancellation of trademark registration in Egyptian law:
2. Non-renewal: if ten years pass from the date of trademark registration without submitting a renewal request within six months of the ten-years expiry.
3. Non-use: failure to use the trademark for five consecutive years, unless the owner provides valid reasons acceptable to the court.
4. Registration of a trademark in bad faith.

The governing law in Egypt is the intellectual property rights protection law No. 82 of 2002, with the economic courts handling trademark-related disputes, including criminal offenses related to trademark infringement, except for cases under the jurisdiction of the state council regarding appeals against trademark registration rejections. Arbitration may also be used for franchise disputes, provided it is agreed upon in the contract.

 

Article 6 of law No. 120 of 2008, as amended by law No. 156 of 2024, assigns jurisdiction to economic courts as following:

Except for disputes and claims within the jurisdiction of the State Council, the preliminary chambers of economic courts shall have exclusive jurisdiction over disputes and claims not exceeding fifteen million Egyptian pounds, arising from the application of the following laws:”

1. The Law on Companies Operating in the Field of Receiving Funds for Investment, issued under Law No. 146 of 1988.
2. The Capital Market Law, issued under Law No. 95 of 1992.
3. The Law on Regulating Financial Leasing and Factoring Activities, issued under Law No. 176 of 2018.
4. Law No. 161 of 1998 on Protecting the National Economy from the effects of Harmful Practices in International Trade.
5. The Commercial Code, issued under Law No. 17 of 1999, specifically regarding technology transfer, commercial agency, and banking transactions, as well as other disputes and claims arising from the application of this law if their value exceeds ten million pounds.
6. The Real Estate Finance Law, issued under Law No. 148 of 2001.
7. The Intellectual Property Rights Protection Law, issued under Law No. 82 of 2002 (…).”

Furthermore, a trademark registration may be canceled if it creates confusion due to its similarity with another mark, thus potentially misleading the average consumer, in this Cairo economic court ruled as follows:

“The expert report submitted in the case is based on sound reasoning with a basis in the documents, and the court is assured by it. The purpose of a trademark is to distinguish goods and products, achieved by differentiating between marks to avoid consumer confusion.” (judgment No. 695 of the 5th judicial year – on 11-12-2014)

The essence of the above judgment is that a trademark serves as a means of distinguishing products and goods. This distinction is achieved by ensuring a clear difference between trademarks for a particular product, minimizing the resemblance between them and thus preventing consumer deception. For this reason, a trademark must be distinctive when viewed as a whole.”

1. Cancellation of trademark registration in Qatari Law:

law No. 9 of 2002 governs trademark registration, including renewal, transfer, and licensing, along with nullification and cancellation procedures, the law also outlines protection measures against trademark infringement and penalties for violations.

Cases for cancellation in Qatari law:

1. Non-use: if the owner or authorized person fails to use the trademark for five consecutive years without reasonable cause, any interested party may request cancellation.
2. Non-renewal: if the trademark’s legal protection expires without a renewal request.
3. Invalid registration: any interested party may seek nullification of a trademark that was registered without due right.

Article 24 of law No. 9 of 2002 specifies that a trademark may be canceled after a five-year period of non-use if the owner lacks valid justification. Article 18 provides a ten-year protection period, with automatic cancellation if no renewal request is submitted.

III. Cancellation of trademark registration under Saudi system:

The Saudi authority for intellectual property oversees trademark registrations, renewals, and cancellations, as well as disputes over trademarks, the governing law is the royal decree No. م/21 بتاريخ 28 / 5 / 1423هــ.

 

Cases for cancellation in Saudi system:

1. Non-use: for five consecutive years without valid reason.
2. Violation if the trademark contravenes public order or morals.
3. Deception or false information: if registration based on fraudulent or misleading information.

According to article 25, the competent authority or any interested party may request the cancellation of a trademark registration in the above cases. the board of grievances has jurisdiction over such requests.

Automatic cancellation by force:

1. Non-renewed trademarks upon expiration of the ten-year protection period if not renewed.
2. Prohibited ownership when the trademark owner is prohibited from trading.

Article 26 specifies that registration will be canceled in such cases by force of law.

Conclusion

In conclusion, trademark registration is a crucial mechanism for distinguishing goods and services, ensuring that consumers can identify the source and quality of products. However, this protection is not absolute, and various legal systems, including those in Egypt, Qatar, and Saudi Arabia, have established specific grounds under which trademark registrations can be canceled or invalidated.

Under Egyptian law, grounds for cancellation include non-use, non-renewal, and bad faith registration, with the economic courts handling such cases. Similarly, Qatar’s Trademark Law provides for cancellation in cases of non-use or non-renewal, as well as when a trademark was registered without proper rights. In Saudi Arabia, trademark cancellations may occur due to non-use, violation of public order, or deceptive practices, with automatic cancellations in certain circumstances such as the expiration of the protection period without renewal.

These legal frameworks ensure that trademarks fulfill their primary function: to prevent consumer deception and safeguard the integrity of the market. By maintaining strict standards for trademark registration, use, and renewal, these jurisdictions contribute to fostering fair competition and protecting intellectual property rights, ultimately benefiting both businesses and consumers alike.