Cabinet Djelliout & fils

1) Mark: all symbols that can be subject to a graphical representation, mainly the words, including the names of persons, the letters, the numbers, the plans or images, the characteristic forms of goods or their packaging, the colors, alone or combined, that are meant to and capable of distinguishing the goods or the services of a person or a corporate body from those of another one ;

2) Collective mark: any mark meant to guarantee the origin, the composition, the manufacturing or other common characteristic of the goods or the services arising from different bodies using the mark under the control of its holder ;

3) The mark of a product or service is mandatory for each product or service provided, sold or put on sale in the Algerian territory.

4) Each mark of goods or services can not be used in the Algerian territory without having been subject of a registration or an application for a registration filed before the INAPI.

ACQUISITION AND DURATION OF PROTECTION

The right to the mark is acquired by its registration within the INAPI.

Without prejudice to the right of priority acquired by the application of the international agreements applicable to Algeria, the registration of a mark has a duration of ten (10) years with a retroactive to the date of filing of the application.

FILING FORMALITIES

The application for a registration includes:

1) A request of registration presented in the official application form and carrying the names and full address of the applicant.

2) A label of the mark of which the dimensions do not exceed the borders intended for it in the application form. In case of a demand for a color, the applicant must include reproductions of the mark in colors.

3) A clear list of the goods and services.

4) The receipt for payment of the registration tax.

5) A power of Algerian attorney responsible for the registration. The presentation by attorney is optional for the Algerian applicants.

TRADEMARK RENEWAL

A mark can be renewed for consecutive periods of ten (10) years.

The renewal takes effect the day following the expiry date of the registration.

The renewal of the registration of the mark should include neither essential change of the mark nor extension of the list of the related goods or services.

Any change to the model of the mark or extension of the list of related goods or services must be subject to a new filing; the priority of the previous registration remains acquired even if the said registration is struck off.

RENEWAL PERIOD

The renewal application is presented during the six (6) months prior to the expiry date of the registration or at the latest during the grace period of six (6) months after expiry of the registration. In this latter case, a delay penalty charge is required.

PROOF OF USAGE

The renewal application must be accompanied by all the correct means to establish, or to make plausible, that there has been a usage of the mark in Agleria, during the year prior to the expiry of the registration.

BELONGING OF A MARK

Other than the case of right infringement, the mark belongs to the person who has first filled the conditions required for the filing or who has first validly claimed the oldest priority for their filing according to the Convention of Paris.

Whoever has presented, under the deposited mark, the goods or the services in an official or officially recognized international exposition, can claim, during a period of three (3) months starting from the closure of the exposition, the registration of the mark by asserting the right of priority starting from the date when the goods or services covered by the said mark have been exposed.

REASONS FOR REFUSAL OF A MARK REGISTRATION

The following are excluded from the registration:

1) The symbols that do not represent the mark defined by the law (DEFINITION) ;

2) The symbols related to the public property or not distinguished ;

3) The symbols that represent the form or cover of goods if its nature, function or packaging require thereof ;

4) The symbols in contrary to public order or morals as well as those the use of which is prohibited under the national law, or bilateral or multilateral agreements in which Algeria is a party ;

5) The symbols comprising a simulation or imitation of official logos, flags, other logos, abbreviated names, symbols, signs or official hallmarks used for the purposes of control and guarantee by a country or an intergovernmental organisation established under an international agreement, unless the competent authority has licensed such state or organization to do so ;

6) The symbols which would mislead the public or commercial society with regard to the nature, quality or source of goods and services and other related characteristics ;

7) The symbols which exclusively or partially constitute an indication that would involve a confusion regarding the geographical origin of certain goods or services. In case such symbols have been illegally registered as a mark, the use of that geographical indication would be hindered by third parties entitled thereof ;

8) The symbols similar or identical to a mark or a trade name well-known in Algeria and have been used for similar or identical goods belonging to another institution to the extent that causes confusion between both of them, or symbols which are a translation of another mark or trade name.

The provisions of this Paragraph shall be applicable, as necessarily amended, to the goods or services not identical or similar to those for which the mark is required to be registered, provided that the use of such mark for identical goods and services indicates a link between these goods and services and the owner of the registered trademark, and that such use would be detrimental to the interests of the registered trademark owner ;

9) The symbols identical or similar to a mark that has been the subject matter of a registration application or a registration including goods or services identical or similar to those for which the manufacturing mark or trademark has been registered if such use would result in confusion.

RIGHTS GRANTED BY REGISTRATION

The registration of a mark shall entitle its owner to the property thereof on goods and services he determines thereto.

The right of a mark property shall entitle its owner to the right of assignment, granting utilization licenses and preventing others from commercially using his mark on goods or services similar or identical to those for which the mark has been registered without a prior permission.

It shall be permissible to use the right granted under the mark registration towards the third party who commercially uses a mark, symbol or trade name that is confusingly similar for identical or similar goods and services without the permission of the owner.

The owner of a well-known mark in Algeria shall have the right to prevent others from using his mark without permission.

OBLIGATION TO USE THE MARK

The practice of the right granted by a mark registration shall involve the serious use of the mark on goods or the packages thereof, or related to the services identified by such mark.

Non-use of the mark shall entail its cancellation except in the following cases:

1) If non-use has not continued for more three (3) consecutive years without interruption.

2) If the mark owner has not submitted, prior to the expiration of this period, an evidence on that difficult circumstances precluded the use thereof. In this case, it shall be permissible to extend the period for no longer than two (2) years.

3) The use of the mark by the the licensee shall be considered as a use by the applicant or the owner of such mark.

TRANSFER OF RIGHTS BY DISSOLUTION OR MERGER

The transfer must, subject to nullification, be concluded in writing and signed by the parties therein, according to the law regulating thereof.

The transfer of rights of a mark is added to the Trademarks Register which is managed by the INAPI, upon request from one of the two parties therein.

The transfer is binding to the third parties only after its registration in the Trademarks Registry.

The transfer by institutions merger or any other form of institution succession shall be confirmed by a document proving thereof in accordance with the legislation governing such transfer.

TRANSFER OF RIGHTS BY GRANT OF LICENSE

The rights associated with the mark may be the subject matter of a utilisation license, exclusive or non exclusive, for all or part of the goods or services for which the mark has been filed or registered.

The license contract as well as its renewal or change is registered in the Trademarks special Registry providing payment of the taxes thereof.

The license registration application is accompanied with the license contract or an adequate copy of such contract.

The license is binding to the third parties only after its registration in the Trademarks Registry.

The license contract concluded in accordance with the law regulating thereof shall include, subject to nullification, the mark, license term, goods and services for which the license has been granted, and the territory in which the mark may be used or the quality of manufactured goods or services rendered by the licensee.

The license must be registered in the special Trademarks Registry managed by the INAPI.

RIGHTS FORFEITURE BY RETRACTION

A mark registration may be retracted for all or part of goods or services for which such mark has been registered.

The retraction application is drawn up by an attorney with power, dated and signed, mentioning their names and address.

The retraction is registered in the Trademarks Registry. It has effect with regard to the third parties only after such registration.

When a license contract has been registered, the retraction accepted only upon providing a declaration of consent signed by the licensee.

RIGHTS FORFEITURE BY NULLIFICATION OF THE MARK

A mark registration can be nullified by the competent judicial party with retroactive effect to the filing date, upon the request of the competent authority or a third party in case it is perceived that the mark should have not been registered for one of the following reasons:

1) The symbols that do not represent the marks according to article 2, paragraph 1 ;

2) The symbols related to the public property or not distinguished ;

3) The symbols that represent the form or cover of goods if its nature, function or packaging require thereof ;

4) The symbols in contrary to public order or morals as well as those the use of which is prohibited under the national law, or bilateral or multilateral agreements in which Algeria is a party ;

5) The symbols comprising a simulation or imitation of official logos, flags, other logos, abbreviated names, symbols, signs or official hallmarks used for the purposes of control and guarantee by a country or an intergovernmental organization established under an international agreement, unless the competent authority has licensed such state or organization to do so ;

6) The symbols which would mislead the public or commercial society with regard to the nature, quality or source of goods and services and other related characteristics ;

If the possibilities of nullification are only gathered for part of the goods and services for which the mark is not registered, the nullification would only apply to this part of such goods and services.

A nullification lawsuit may not be filed if the mark becomes distinguished by registration, and shall prescribe within five (5) years as of the date of mark registration. The registration application filed in bad faith shall be excluded from this procedure.

RIGHTS FORFEITURE BY CANCELLATION OF THE MARK

The competent judicial party shall cancel the registration of a mark:

1) Upon request by the competent authority or relevant parties if one of the following reasons arises after registering the mark and continues after the cancellation decision:

- The symbols that represent the form or cover of goods if its nature, function or packaging require thereof ;

- The symbols comprising a simulation or imitation of official logos, flags, other logos, abbreviated names, symbols, signs or official hallmarks used for the purposes of control and guarantee by a country or an intergovernmental organization established under an international agreement, unless the competent authority has licensed such state or organization to do so ;

- The symbols which exclusively or partially constitute an indication that would involve a confusion regarding the geographical origin of certain goods or services. In case such symbols have been illegally registered as a mark, the use of that geographical indication would be hindered by third parties entitled thereof ;

- The symbols which would mislead the public or commercial society with regard to the nature, quality or source of goods and services and other related characteristics ;

However, if the reason for cancellation is that symbols are related to the public property or not distinguished, the registration shall not be cancelled if the mark has become distinguished after being registered ;

2) Upon request by the relevant parties in case the mark has not been used.

PRIORITY

Anyone who wants to invoke the priority of a prior filing must produce a declaration thereof at the same time as the registration application and must attach to it, within three (3) months at the latest starting from the filing of the registration application, an official copy of the filing thereof.

FORM EXAMINATION OF THE FILING

The INAPI examines whether the filing meets the required conditions. If the filing does not meet these conditions, the competent service invites the applicant to adjust the application within two (2) months which can be extended, if necessary, by the same duration upon a justified request from the applicant.

Failing to regularize and past this period, the competent service declines the registration application.

In case of rejection of the application, the paid taxes are not refunded.

EXAMINATION OF THE FILING CONTENT

When the examination of the filing meets the required conditions, the INAPI examines if the trademark is not excluded from the registration for one of the 9 reasons for refusal aforementioned.

APPEAL AGAINST PROVISIONAL REFUSAL OF A MARK REGISTRATION

If following the content examination it is found that the trademark is excluded from the registration because of one or more reasons for refusal, the INAPI will notify the applicant and invites them to present their observations within a period of two months starting from the date of notification. This period can be extended by the same period if necessary upon justified request from the applicant.

To assess the likeness, the competent authority will take account of a written consent from the holder of the prior right.

When the competent authority certifies that the content examination only fulfils part of the goods and services listed in the application, it does proceed to the mark registration only for these goods or services.

EXAMINATION OF INTERNATIONAL MARKS

The international mark registrations that are extended to Algeria, as part of the MADRID agreement are automatically subject to examination to check that they are not excluded from the registration.

In case of pronunciation of a provisional refusal, a period of two (2) months is granted to the holder of the international registration in order to present their observations.

This period can be extended by the same duration if necessary upon justified request from the applicant. To assess the likeness, the competent authority will take account of the written consent of the holder of prior right.

The appeal by a possible period extension request must be presented by an authorized attorney.

CLASSIFICATION OF GOODS AND SERVICES

Algeria implements the 9th edition of the NICE classification for goods and services.

The services of class 42 must be dispatched between this class 42 and classes 43 to 45 of the NICE classification during the renewal of the marks reaching their expiry dates after the 1st January 2002.

OPPOSITION

The Order of 19 July 2003 related to the marks does not anticipate an administrative opposition procedure against the filing of a mark.