Africa Update 2020 – Morocco

OMPIC and WIPO sign Memorandum

On the 4th of October 2019, the Moroccan Office of Industrial and Commercial Property (OMPIC) entered into a Memorandum of Understanding (MoU) with the World Intellectual Property Organisation (WIPO) concerning the promotion of alternative dispute resolution mechanisms in the field of industrial property. The objective of the MoU will see OMPIC and WIPO pool their resources to promote the use of alternative dispute resolution mechanisms to resolve industrial property disputes. Alternative dispute resolution mechanisms have the benefits of being faster and more cost-effective. Such mechanisms would greatly assist small to medium-sized enterprises (SMEs) in resolving industrial property disputes. OMPIC’s strategic vision is to promote the use of these alternative dispute resolution mechanisms by 2025.

Trade Mark Squatting in Morocco

In recent years, there has been a significant increase in trade mark squatters filing for the registration of well-known international trade marks in Morocco. In particular, one Harchi Khalid, has, in his name, or in the name of the entity named Plakton, filed several trade mark applications for various world-renowned marks, including cartoon/animated characters. In addition to the unauthorised filing of these trade marks, Harchi Khalid/Plakton has had the audacity to file oppositions to the legitimate applications of the rightful proprietors of well-known trade marks in Morocco. Although we have, in many instances, succeeded in opposing the unauthorised applications by trade mark squatters, trade mark proprietors are encouraged to anticipate the trend of trade mark squatting, by filing their trade mark applications as early as possible.

Trying to misappropriate the beloved Minions characters

The Moroccan Trade Marks Office (“TMO”) recognised the notoriety of the well-known MINIONS characters in a recent decision. The matter concerned an opposition filed by Universal City Studios LLC (the “Opponent”) against a trade mark application in classes 16, 18, 25 and 28 in the name of PLAKTON (the “Applicant”). The Opponent is a well-known American company that produces and distributes motion pictures and television programmes. The trade mark in dispute concerned the device of the well-known character in the Opponent’s Despicable Me series, known as MINIONS.

This matter was particularly interesting, as the Opponent did not own any trade mark registrations in Morocco at the time. Accordingly, the Opponent had to rely on its prior use of the trade mark in Morocco, and argue that the trade mark is internationally well-known, including in Morocco, in terms of the Paris Convention. This was done by filing evidence which included copyright registration certificates, internet search results, proof of merchandise sold in Morocco and promotional material bearing the Opponent’s MINIONS character mark. Three of the Opponent’s franchise films, in which the MINIONS characters were featured, were shown in Morocco. Plakton’s applications in classes 16, 18, 25 and 28 covered goods in respect of which the Opponent generally uses and registers its MINIONS marks worldwide.

Plakton failed to defend the opposition and the TMO in Morocco had to decide the matter on the papers before it. In Morocco, unlike many other jurisdictions, the TMO’s decision is not made by default when a trade mark applicant fails to defend an opposition. Ultimately, the TMO found that the case made out by the Opponent was sufficiently convincing to reject the trade mark application. Accordingly, the application was rejected, and the Opponent’s MINIONS mark was recognised as a well-known mark in Morocco.

MINIONS mark was recognised as a well-known mark in Morocco.

This is a victory for all trade marks proprietors against trade mark squatters in Morocco. The Opponent has also lodged oppositions to other applications filed by Plakton.

Paw Patrol

On 26 November 2019, the Moroccan Appeal Commercial Court dismissed the appeal and upheld a decision of the Trade Marks Office (“TMO”), in the matter between Spin Master Ltd and the trade mark applicant Plakton, in respect of the mark well-known PAW PATROL.

The matter involves an opposition by the “Opponent” to a trade mark application filed by Plakton for the PAW PATROL device in classes 16, 18, 24 and 25. As mentioned above, Plakton is a notorious trade mark squatter in Morocco. The Opponent is a Canadian toy and entertainment company, and also produces a number of animation series, including the well-known PAW PATROL series. The Opponent did not own any registered trade marks in Morocco at the time, and had to rely on the well-known status of the mark, to oppose Plakton’s application.

It is important to note that it is not possible to rely on copyright in opposition matters in Morocco. Copyright is, however, a basis on which to institute cancellation proceedings. Unfortunately, the Registry did not agree that the Opponent’s PAW PATROL characters are well-known, and the opposition was dismissed.

The Opponent proceeded to file a cancellation application in respect of Plakton’s marks (which proceeded to registration, after the dismissal of the opposition). The cancellation application was based on the Opponent’s copyright in its characters as well as the notoriety of the marks. As Morocco is a member of the Paris Convention, in its Paw Patrol characters and logo was recognised as well-known in terms of Article 6bis of the Paris Convention.

The TMO delivered its decision on 10 June 2019 and ruled in the Opponent’s favour. The court also ordered that Plakton ceases all use of the characters and be fined 5000 Moroccan Dirham for each violation. Plakton subsequently filed a belated appeal to the cancellation decision. The appeal failed, and a decision was again made in favour of the Opponent.

It is clear that the rights of trade mark proprietors of well-known marks will be protected in Morocco, but it is recommended that applications be filed for important marks, to avoid becoming involved in lengthy and costly opposition and cancellation proceedings.

KEY OPPORTUNITIES & CONCERNS

Opportunities

  • Long-established international trade links provide multiple markets for exports
  • Stability, low inflation and security have proved good for economic growth
  • Low-cost labour assists industrial pursuits and has spurred auto manufacturing

Concerns

  • King Mohammed must be sincere about transference of power to a democratic dispensation or eventually face revolution
  • Rabat’s claim of Western Sahara is opposed by the UN and much of the international community
  • Education levels are low by North African standards, with fewer than two-thirds of Moroccan women able to read and write

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