Well-known marks in Jordan: protection and enforcement

02-Comm. Law 12(4)-ppp 30/8/07 13:21 Page 118 Well-known marks in Jordan: protection and enforcement Bashar H Malkawi 1. Introduction The prope...
0 downloads 0 Views NAN Size
02-Comm. Law 12(4)-ppp

30/8/07

13:21

Page 118

Well-known marks in Jordan: protection and enforcement Bashar H Malkawi

1.

Introduction

The proper protection of well-known trademarks is a significant issue in international trade relations, as a trademark is often a company’s most valuable asset. The brand name Nike is estimated to be worth $7 billion and is considered a well-known mark.1 International trademark doctrine has developed to protect these marks in the global marketplace. Protection of intellectual property is an integral part of Jordan’s economic reform policy. With the development of Jordan’s economy, culminating in its entry into the World Trade Organization (WTO), and the pressure put to bear from multinational corporations and the governments of developed countries, the Jordanian Government has become aware that protection of wellknown marks pursuant to the standards of the Agreement on Trade-Related Aspects of Intellectual Property Rights of the WTO (TRIPS) must be an integral part of Jordan’s trademarks law. It was not until 1999, however, that the protection of well-known marks was integrated into Jordan’s Trademarks Law. The central concern of this article is to examine the rise of well-known marks in the Jordanian legal system from initial judicial recognition of marks to the amendment of the Jordanian trademarks law. The article is divided into three parts: regulation of well-known marks in Jordan prior to its WTO accession; the current protection granted to well-known marks as of the recent amendments to the Trademarks Law; and Jordan’s enforcement efforts to protect these marks.

2.

Protection of well-known trademarks: a historical look

Prior to Jordan becoming a WTO member, protection of well-known trademarks was vague and unsystematic. Due to the lack of explicit provisions preventing the registration of well-known marks, many local Jordanian companies filed applications to register these marks under their own names. The simplistic approach to register trademarks in Jordan also contributed to the registration of well-known marks.2 Moreover, Jordan’s trademarks system was first-to-file system whereby trademark rights were granted to the first person to register the mark in Jordan. This approach allowed third parties to acquire rights to internationally well-known marks by registering them in Jordan as their own. While no clear reference was made to well-known marks in the Trademarks Law of 1952, proprietors of

118

well-known marks benefited from article 8.10 thereof. Article 8.10 prohibited the registration of marks that might confuse the public or cause unfair competition in trade. This provision proved useful for owners of well-known marks because registration of a mark similar or identical to their marks might have caused consumer confusion and constituted unfair competition. Although this provision afforded some relief to proprietors of well-known marks, the lack of a black letter provision for protecting wellknown marks was evident. Generally, well-known trademarks were given protection through ad hoc or informal determinations. The Trademarks Registration Office, under the Ministry of Industry and Trade, granted well-known status determination on an ad hoc basis through oppositions and cancellations. Furthermore, a court in a particular case could grant well-known status for trademarks on an ad hoc basis. The following case is an example of an ad hoc wellknown status determination granted by the Trademarks Registration Office. Farid Khalaf Company, a Jordanian company, filed to register the mark ‘MILLER’ in Jordan for beers. Miller Brewing Company, owner of the famous mark MILLER, filed an opposition and contended that it was the owner of the famous MILLER trademark that is registered and used in several countries worldwide. Miller Brewing Company further contended that the fact that its MILLER trademark was not registered in Jordan should not adversely affect the opposition. The Jordanian Trademarks Registrar ruled in favor of Miller Brewing Company and rejected Khalaf’s Company application.3 The Registrar reasoned that Khalaf’s Company registration would cause consumer deception and constitute unfair competition and false indication of origin of the goods bearing the trademark. It appears that in MILLER case deception of the consuming public was a controlling factor. In another example, Hani Al-Qudsi & Partners, a Jordanian company, filed a trademark application to register the mark ‘7ELEVEN.’ The Southland Corporation, a US corporation, filed an opposition claiming that the Jordanian applicant was not entitled to such registration since it uses and owns the registration of the mark ‘7ELEVEN’ in various countries worldwide.4 The Southland Corporation prevailed in its opposition not so much on merits but rather on points of procedures. The Jordanian company did not submit its response to the opposition on time; thus the Registrar dismissed its application. In other cases, foreign owners of well-known trademarks had to litigate in Jordan because of the trademark

Communications Law, Vol. 12, No. 4, 2007

02-Comm. Law 12(4)-ppp

30/8/07

13:21

Page 119

registrations by Jordanian persons. For example, Dar Al Dawa Development and Investment Co, a Jordanian pharmaceutical company, attempted to register the mark ‘Tagadar’ so it could be used to distinguish certain medications. SmithKline and French, a British-based pharmaceutical company, registered several marks using the name ‘Taga’ alone or by attaching another syllable such as Tagamay or Tagadiane. SmithKline and French objected to the registration. After investigating the issue, the application of the Jordanian pharmaceutical company was rejected. On appeal, the High Court of Justice confirmed the decision of the Registrar by concluding that the Jordanian pharmaceutical company intended to free ride on the goodwill and fame of the British company by taking the term ‘Taga’ and adding ‘dar’ so that it became ‘Tagadar.’5 The High Court of Justice stated that SmithKline and French was a famous entity. In 1982, the total sales of SmithKline and French worldwide were $825 million and its total sales in Jordan were £53,000. In other cases, foreign owners of well-known marks were unable to prevent registration of similar marks by Jordanians. Jordan refused to acknowledge the dilution doctrine, despite the fact that countries like the US and EU already applied this doctrine.6 There could be no infringement where the marks did not cover goods of the same description. For example, Jordanian Trico & Yarn Factory Co filed a trademark application for the ‘AL TIMSAH’ mark (which means crocodile in Arabic) similar to that filed by the French company La Chemise Lacoste. The Jordanian Trademarks Registrar rejected Lacoste’s opposition for the registration of ‘AL TIMSAH’ mark on the basis that the two marks, AL TIMSAH and LACOSTE, were in different classes and there was no likelihood of confusion.7 In another case, Sobhi Jabri & Sons Co filed an application to register TOTO which was intended to cover goods (food) in class 30. Time Warner Entertainment Company filed an opposition against the registration of the trademark TOTO, a depiction of the famous cartoon character Tweety, in Jordan. In its opposition, Time Warner contended that it owned the rights over its famous ‘Tweety’ character and its opposition should be accepted.8 However, the Trademarks Registrar rejected the opposition because no convincing evidence was submitted to prove that Time Warner was using the Tweety character with respect to goods (food) in class 30.9 In the pre-WTO period, the standard applied by Jordanian courts to determine the status of foreign brands or marks required usage of the mark in Jordan.10 In addition, a mark could not be considered as well-known unless it is widely recognized in Jordan.11 For instance, if the trademark had not been used in ads and there were no outlets that could sell goods bearing the trademark, the trademark may not qualify as well-known. The standard followed by Jordanian courts was clearly in conflict with the World Intellectual Property Organization (WIPO) Joint Resolution Concerning Provisions on the Protection of Well-known Marks.12 The Joint Resolution states that a member state shall not require, as a condition for determining whether a mark is well-known, that the mark has been used in that member state.13 Since the 1980s, Jordanian courts have emphasized the deception of the consuming public as the controlling

Communications Law, Vol. 12, No. 4, 2007

factor in cases involving well-known marks.14 Courts have ignored other elements and their respective weight. Thus, a mark would not be well-known if it was still new and consumers did not yet associate it with a certain producer. In sum, well-known trademarks in Jordan had a reputation of being under protected. This impression has largely been caused by the decisions of the Registrar and judicial cases. These decisions and cases have a foreign corporation as the primary victim and a Jordanian company. Additionally, jurisprudence in Jordan seems to approve a local standard whereby a well-known mark would be protected if it is used and is well-known in Jordan.

3.

The current treatment of wellknown trademarks in Jordan

It is important to consider the international agreements that justified passage of the amendments to the Trademarks Law of 1999 and how these agreements have been incorporated in the Jordanian law. There are two basic legal documents that regulate well-known trademarks internationally: the Paris Convention for the Protection of Industrial Property (Paris Convention) and TRIPS.15 These agreements aim to create a minimum level of trademark protection. Article 6bis of the Paris Convention is considered the cradle for protection of wellknown trademarks. Countries of the Paris Convention undertake to refuse the registration, and to prohibit the use, of a trademark which constitutes a reproduction of a wellknown mark.16 Article 6bis also does not require that a well-known mark be used in a specific country. The TRIPS Agreement was formulated in 1993 as a result of the Uruguay Round of multilateral trade negotiations under the auspices of the General Agreement on Tariffs and Trade (GATT).17 TRIPS provides stronger protection than other international agreements such as the Paris Convention. TRIPS introduced two significant innovations regarding well-known marks. First, it granted protection for well-known marks covering dissimilar goods under certain circumstances. Second, it made article 6bis of the Paris Convention applicable to services.18 Article 16 of TRIPS stated that a court must consider reputation in the relevant sector of the public when evaluating whether a mark is well-known.19 An owner may establish reputation among a substantial segment of the public, rather than the general public. The TRIPS Agreement emphasizes enforcement both internally and at the borders, taking into account the widespread nature of infringement of intellectual property rights.20 TRIPS further provided that enforcement procedures should be meaningful.21 The enforcement procedures must be fair and equitable, and not unnecessarily complicated or costly. They should not entail unreasonable time limits or unwarranted delays. In so doing, the enforcement mechanisms in TRIPS may be more effective than those found in the Paris Convention. Jordan joined TRIPS in 2000. The joining of TRIPS marked an important beginning for Jordan’s protection of well-known marks. Compliance with the TRIPS Agreement and the un-listing from the US watch list of Special 301 helped Jordan accede to the WTO.22 In 1999,

119

02-Comm. Law 12(4)-ppp

30/8/07

13:21

Page 120

Jordan enacted an amendment the Trademarks Law to comply with the TRIPS Agreement.

(i)

Well-known marks under the current Trademarks Law

Well-known marks are expressly protected in Jordanian Trademarks Law of 1999. The amended Trademarks Law sets out special provisions to protect well-known marks. A key issue in the well-known trademarks area is how to define the term ‘well-known’ and what criteria to use in doing so. The amended Trademarks Law of 1999 defines well-known trademarks as marks that are widely known to the relevant public in Jordan and enjoy a high international reputation.23 In contrast with article 16(2) of TRIPS, the amendment to Trademarks Law of 1999 did not provide that a court could determine whether a mark is well-known by considering the extent of its reputation as a result of marketing efforts. While the Trademarks Law of 1999 defined wellknown marks, this definition is fundamentally vague. The term ‘relevant public’ used in the Trademarks Law remains unclear as to whether it refers to an urban population in a specific income class or a wider audience such as those persons involved in channels of distribution of the type of goods to which the mark applies. The definition of well-known marks used in the Jordanian Trademarks Law should be complemented by taking into consideration other, more concrete, economic factors such as production and sales volume of the goods, sales area and time, market share, duration for the use of the trademark, advertisements, customer surveys, and product quality. The determination of the well-known status is more of a totality of factors. For example, in some cases, all of the factors may be relevant; while in others, only some may be relevant. The factors listed above should be integrated in the Jordanian Trademarks Law, as the case in other countries.24 Until the Trademarks Law of 1999 is further amended to provide clarification of the factors used by examiners to verify that the mark is wellknown, the High Court of Justice could issue guidelines on the admissible evidence of the well-known status of a mark.25 The Trademarks Registration Office and lowerlevel courts then could follow these guidelines in making their decisions or determinations. Well-known marks are those known to the relevant public because they are associated with particular goods or services. What then is the difference between a wellknown mark and a famous one? The difference between these two types of marks is only one of degree. A famous trademark is that which has been able to achieve a secondary function distinct from its first and natural function (ie, that of distinguishing the products which it distinguishes by means of their origin). This second function involves the exercise of a power of attraction, resulting from the famous status of the mark itself, totally independent of the products or their origin.26 The amended Trademarks Law of 1999 appears to assimilate between well-known and famous marks. Furthermore, Jordanian courts have not sufficiently distinguished between wellknown and famous marks. In fact, courts have used the

120

terms interchangeably and with no distinction. Case law in Jordan has used terms ranging from the words ‘ famous’ to ‘international prominence’, ‘highly reputed’ , ‘widely known’ and ‘well-known’, among other definitions. To make sense of these definitions is virtually impossible, since judges are apt to make up a new term as soon as a new decision is rendered on the subject. The Trademarks Law of 1999 entitles the proprietor to prevent all third parties from the registration of a trademark which constitutes a reproduction or translation, liable to create confusion, of a well-known mark on identical or similar goods.27 Courts have interpreted the term ‘reproduction’ to mean exact copying of a well-known mark in terms of identical features, appearance, form, type of goods, and consumers.28 Infringement could also occur through use of transliteration of well-known marks.29 It is important for a mark owner to look at the Arabic translation of its mark in guarding against potential infringers. In the case of using an identical sign for identical goods, a likelihood of confusion is presumed. The Trademarks Law of 1999 does not provide a period of time within which the proprietor can request the cancellation or the prohibition of the use of such a mark that infringes upon his well-known mark. Additionally, the Trademarks Law imposes limitations on the types of well-known marks that are protected – only well-known trademarks as opposed to service marks. Therefore, McDonald’s restaurants would not be able to protest copying of the world famous mark in relation to other types of commercial ventures, for instance, insurance services. The Jordanian Trademarks Law should go a step further than the existing language by extending equal protection to well-known service marks and trademarks. Article 26 of the Trademarks Law of 1999 prohibits the use of a well-known, but unregistered, mark on nonsimilar goods provided that the use of that trademark in relation to those goods would indicate a connection between those goods and the owner of the trademark, and provided that the interests of the owner of the well-known trademark are damaged by such use.30 This article is intended to provide an exception to the principle of specialty, which stipulates that trademarks are only protected in relation to the same or similar goods that the mark has been registered for. In the case of using an identical sign for non-similar goods, a likelihood of confusion is not presumed. Substantiating a likelihood of confusion adds a hurdle that owners of well-known marks must overcome. It is also interesting to note that article 26 of the Trademarks Law suggests that the economic damage to the owner of a well-known mark by a junior user is a prerequisite to relief. The Trademarks Law of 1999 infused several remedies available against trademark infringers. The Trademarks Law strengthened enforcement of trademarks by raising the fine for violations to the equivalent of $4235 instead of the $141 fine applied in the past.31 It also imposed a one-year prison sentence. However, remedies available to the owner of an unregistered well-known mark are limited to injunctions.32 The owner of a wellknown mark that is registered in Jordan is entitled to additional remedies. Additional remedies include damages, compensation, destruction of infringing goods and receipt

Communications Law, Vol. 12, No. 4, 2007

02-Comm. Law 12(4)-ppp

30/8/07

13:21

Page 121

of infringing goods.33 The legislature may have intended to encourage owners to register well-known marks in Jordan by providing additional protection. However, registration should not be a decisive factor in determining the extent of protection granted to well-known marks. In general, Jordan is a country where the prerequisite for protection is registration. Jordan does not have a national well-known mark registry. Perhaps such a registry is not a bad idea, considering how many famous marks are generated and how much effort went into spreading the fame of these marks around the world. Thus, a registry of well-known marks is advisable to evade any problems. It remains unclear, however, how Jordanian courts will interpret the amendments concerning well-known marks. Moreover, it is unclear how stringently courts will enforce well-known mark protection pursuant to the amendments. It is hoped that Jordanian courts will begin to provide an increased level of protection to internationally well-known marks. Strong implementation and enforcement of well-known marks would be a positive sign that courts are diligently applying the standards laid out in the TRIPS Agreement and the Jordanian Trademarks Law.

4.

Enforcement

Compliance with the TRIPS provisions requires strong enforcement of Jordan’s Trademarks Law. Enforcement of Trademarks Law in Jordan is an area where many factors inform policy enforcement which reflects the current state of affairs.

(i)

Administrative and cultural factors undermine enforcement efforts

Despite the latest efforts in Jordan to enforce well-known marks, there are several problems hindering proper enforcement of trademark regulations. Enforcement of intellectual property rights is not cheap, and requires the appropriation of millions of dollars that would capture a good portion of the annual budget of Jordan. Therefore, any action plan such as raids, seizures, arrests, or education campaigns to reduce trademarks infringement is constrained by limited financial resources. Jordan also experiences lack of sufficient human resources. For example, the Industrial Property Protection Directorate at the Ministry of Industry and Trade has 35 professional, trademark and patent examiners, and support staff.34 Until recently, these examiners were not required to be lawyers with intellectual property knowledge and expertise, having a background in science and technology, or taking a bar-like exam. The new trademarks law cannot be effective if it is not enforced, and enforcement demands a fully functioning legal system with judges and attorneys competent to enforce the law. More courts are now equipped to handle intellectual property disputes and each court has been assigned professional judges. The enforceability of intellectual property in Jordan may often be determined by political and cultural sentiments that a religiously-based law is a necessary bulwark

Communications Law, Vol. 12, No. 4, 2007

against Westernization and the domination of Western culture.35 Therefore, violating intellectual property rights are a means of revenge for the West’s colonization of Jordan. Jordanians believe that few benefits would occur to the national interest as a result of granting trademarks protection as most trademark applications are submitted by foreigners.36

(ii)

Well-known trademarks enforcement record

Jordan has witnessed an increase in enforcement activities. For example, in 2000, raids were conducted in Jordan against traders selling chisels and screwdrivers bearing the well-known STANLEY mark owned by the US company of Stanley Works.37 These raids yielded a substantial quantity of counterfeit products, and those traders’ products were confiscated and later destroyed. Owners of well-known marks have a new tool to stop the importation and exportation of goods in and out of Jordan. In 2005, the Jordanian customs authority required trademark owners to provide it with copies of their respective trademarks and basic owner information.38 These procedures are designed to implement stronger customs protection by assisting the customs service in identifying counterfeit products before they enter the country. Through these procedures, well-known mark owners can move to detain suspected goods at entry and exit points. The enforcement record in Jordan should be commended. In only a few years, Jordan has changed its norms and standards in trademarks.39 Moreover, Jordan has created a workable system for trademarks protection.

5.

Conclusion

Until 1999, there was no coherent framework to speak of regarding the status of well-known marks in Jordan. The area of well-known marks was a hodgepodge of legal and administrative systems with no coherent standards thus allowing for an unhealthy amount of subjective analysis by the courts and Trademarks Registration Office. Now, the system for well-known marks is on par with international standards. While one could argue that the current framework of well-known marks is satisfactory, it is evident that there is room for improvement in standards and enforcement to truly become satisfactory. For instance, there is no definition of the term ‘relevant public’ and, therefore, there is plenty of room for subjectivity regarding what constitutes ‘relevant public.’ Moreover, the amendments to the Trademarks Law of 1999 overlook the important distinction between well-known and famous marks. The amendments also fail to fully address the ways in which a mark may achieve well-known status. In Jordan, trademark protection begins with registration. Registration in Jordan offers far broader protection for well-known marks as compared with unregistered marks. All these shortcomings could be rectified via judicial applications. A separate register for well-known marks is needed. A special register would assist owners in defending their well-known marks by proving notoriety. It could also

121

02-Comm. Law 12(4)-ppp

30/8/07

13:21

Page 122

assist a well-known mark owner in any legal proceeding by indicating prior use. The well-known register could be optional and co-exist with the current trademarks register. The Registrar would review the register over certain periods so as to add or omit a mark based on changes in the mark’s status. The battle against well-known marks violations in Jordan cannot be resolved by legislative enactments and regulatory measures alone. The enforcement of these enactments and measures is the mean to accomplish effective protection of well-known marks. Close examination of wellknown marks enforcement record reveals a good start. In

addition, time is needed for the development of a sufficient level of awareness of intellectual property protection. Although improvements are still needed, the protection of well-known marks in Jordan has come a long way. Bashar H Malkawi Assistant Professor of Commercial Law, Hashemite University, Jordan. LL.B 1999, Yarmouk University; LL. M 2001, University of Arizona; S.J.D 2005, American University, Washington College of Law. The author thanks his colleague Professor Daniel Bradlow for reading numerous drafts and providing invaluable insight

NOTES

1 2

3 4 5 6

7 8 9 10 11 12

13 14

15

16

17

See James Gleick, ‘Get Out of My Namespace’, NY Times Magazine, March 21, 2004, at 44. The Jordanian law was rather lax regarding documentation. All that is required for registration of trademarks is a general or specific power of attorney. See Trademarks Law No 33 of 1952, Official Gazette No. 1110 (June 1, 1952). See Miller Brewing Company v Fareed Khalaf Company, Trademarks Registrar’s Decision No TM/35571/1142, (April 6, 1997). See Southland Corporation v Hani Al-Qudsi & Partners, Trademarks Registrar’s Decision No TM/40918/1410 (April 27, 1997). See High Court of Justice, Case No. 164/88, Journal of the Jordanian Bar Association, 924 (1989). Dilution is a doctrine under which the first trader may remedy the dilution of distinctiveness caused by the second trader’s use of its mark for different goods. A mark is likely to be strongest if used by one trader only. Should another trader use the same mark for different goods or services, then the attractive power of the mark may become diminished. See Keola R Whittaker, ‘Trademark Dilution in a Global Age’, 27 University of Pennsylvania Journal of International Economic Law 907, 927–33 (2006). See La Chemise Lacoste v Jordan Trico Yarn Factory Co, Trademarks Registrar’s Decision No 34310/77 (January 6, 1998). See Turner Warner Entertainment Company v Sobhi Jabri & Sons Co, Trademark Registrar Decision No TM/29626/78 (January 6, 1998). The Trademarks Registrar also reasoned that the cartoon character is only protected by copyright law, but not trademarks law. Id. See High Court of Justice, Case No 4/53, Journal of the Jordanian Bar Association, 151 (1953). See also High Court of Justice, Case No 32/87, Journal of the Jordanian Bar Association, 1207 (1988). See High Court of Justice, Case No 171/88, Journal of the Jordanian Bar Association, 933 (1989). See Gen Rep of the Assemblies of the Member States of World Intellectual Property Organization, Joint Resolution Concerning Provisions on the Protection of Well-known Marks, WIPO Doc. A/34/13, (1999), available at http://www.wipo.org/news/en/ index.html?wipo content frame=/News/en/conferences.html. Id, article 2.3. See Miller Brewing Company v Fareed Khalaf Company, supra note 3. See also High Court of Justice, Case No 120/97, Volume 6 Judicial Journal 351 (1997) (the court determined that deception of consumers occurred as they could not distinguish between products). While a substantial number of other regional and bilateral agreements deal with trademark matters, their effects on Jordanian law are limited. For example, see North American Free Trade Agreement, December 17, 1992, Can-Mex-US, 32 International Legal Materials 289 (containing provisions setting forth minimum standards of protection for trademarks). Countries of the Paris Union undertake to refuse the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered to be well-known in that country. See Paris Convention for the Protection of Industrial Property, March 20, 1883, article 6bis(1), 828 United Nations Treaty Series 305, 325. See Agreement on Trade-Related Aspects of Intellectual Property Rights, April 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments – Results of the Uruguay Round, volume 31, 33 International Legal Materials 1125.

122

18 19

20 21

22

23 24

25

26 27 28 29

30 31 32

Id, article 16(2), 33 International Legal Materials at 1203-04 (providing that article 6bis of the Paris Convention shall apply to services). Id, (emphasizing that in determining whether a trademark is wellknown, WTO members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark). Id, article 51, 33 International Legal Materials at 1217 (providing that a right holder may petition customs authorities for suspension of the release of infringing goods into free circulation). Id, article 41, 33 International Legal Materials at 1213–14 (specifying that members shall ensure that enforcement procedures are available so as to permit effective action against any act of infringement of intellectual property rights including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements). Jordan had been on the US watch list for quite sometime, where the US has closely watched Jordan’s intellectual property regime. The situation worsened when there was discussion in 1998 on whether Jordan would be targeted with trade sanctions under Special 301 of the 1988 Omnibus Trade and Competitiveness Act for failing to adequately protect US copyrights, patents, and trademarks. See Gary Yerkey, ‘US removes Jordan from ‘watch list’ of special 301 nations failing to protect IP’, 16 International Trade Reporter (BNA) 2047 (December 1999). See Trademarks Law No 34 of 1999, article 2, Official Gazette No 4389 (November 1, 1999). Various countries have attempted in their legislations to define the required criteria for a mark to be considered well-known. These countries include the US (in the Lanham Act), Brazil (in the Industrial Property Code of Brazil), and Canada (in the Canadian Trade-marks Act). See Lanham Act, 15 United States Code 1125(c) (2002). See also Canadian Trademarks Act, RSC, ch. T-13, 5 (1995). Setting aside formal laws and regulations, any other guidelines or opinions are non-binding and can be compared to the notion of ‘persuasive authority’ in a common-law system. See Mary Garvey Algero, ‘The sources of law and the value of precedent: a comparative and empirical study of a civil law state in a Common Law Nation,’ 65 Lousiana Law Review 775, 784–92 (2005) (discussing sources of law and the role of precedents in England and the U.S.). See Frederick W Mostert, Famous and Well-Known Marks, 276 (1997). See Trademarks Law N. 34 of 1999, supra note 23, article 8.12. See High Court of Justice, Case No 27/1995, Journal of the Jordanian Bar Association 622 (January 1, 1996). In 2005, a manufacturer used the transliteration of the well-known mark ‘OASIS’ in the Arabic words ‘WAHA.’ The owner of ‘OASIS’ brought an action and stopped the manufacturer from using the Arabic transliteration of ‘OASIS’ as a mark for their products because it would mislead consumers to associate the unauthorized products with the company who owns the mark ‘OASIS.’ See High Court of Justice, Case No 436/2005 (December 28, 2005). See Trademarks Law No. 34 of 1999, supra note 23, article 26.1.b. The language of the Jordanian Trademarks Law mirrors article 16.3 of TRIPS. Id, article 38.1. Id, article 34.1.

Communications Law, Vol. 12, No. 4, 2007

02-Comm. Law 12(4)-ppp

33 34

35 36

30/8/07

13:21

Page 123

Id, article 39. See Report of the Industrial Property Protection Directorate of Ministry of Industry and Trade, 3 (2007) (on file with the author). The number of trademark and patent examiners at the Ministry of Industry and Trade in Jordan constitutes a fraction of the some 7000 employees at the USPTO. See John Carroll, ‘Intellectual property rights in the Middle East: a cultural perspective, 11 Fordham Intellectual Property Media and Entertainment Law Journal 555, 574 (2001). On average, the Industrial Property Protection Directorate in Jordan receives 5000 trademark applications a year. Foreign countries account for the biggest filings. See Report of the Industrial Property Protection Directorate of Ministry of Industry and Trade, supra note 34, at 12.

Communications Law, Vol. 12, No. 4, 2007

37

38

39

See NJQ & Associates, ‘STANLEY’ – Police Raid on Counterfeit Products in Jordan’, available at http://www.qumsieh.com/ Newsletters/Newsletter_%20August_2000/Newsletter_August_2000. html See NJQ & Associates, Jordan, ‘The Role of Customs Department in Intellectual Property Protection,’ available at http://www.qumsieh.com/ Newsletters/Newsletter_December_2005/Newsletter_December_2005 .html Developed countries took decades to improve their norms, standards, and enforcement. These developed countries did not protect intellectual property while they were in the stage of developing their economies. See Margaret Chon, ‘Intellectual property and the development divide’, 27 Cardozo Law Review 2821, 2856 (2006).

123

Suggest Documents