Egypt

• Law no 82 of 2002, Book Two pertaining to Marks, Trade Names, Geographical Indications, and Industrial Designs
• Council of Ministers Resolution no 1366 of 2003, Regulations for implementing Law no 82 of 2002, Book Two
• Trade Marks (Consumer Protection) Law no 67 of 2006

Egypt is a member of the Paris Convention, the Madrid Agreement and Protocol, and the WTO/TRIPS.

Provision is made for the registration of trade marks for goods and services and for collective marks and certification marks. There is no specific provision for defensive marks.

Trade mark applications may be filed as national applications, in appropriate circumstances claiming priority in terms of the Paris Convention; or Egypt may be designated in international applications in terms of the Madrid Agreement or Protocol.

Marks which are well known, worldwide and in Egypt, are entitled to the protection conferred by the legislation, even if not registered in Egypt. This protection means that an identical mark cannot be registered by another in respect of identical goods or services and, in certain circumstances, also not in respect of goods or services which are not identical.

The owner of a registered trade mark has the right to use, or to authorise the use of, the registered mark, and the right to institute civil or criminal proceedings in the case of the contravention of a protected right. The owner also has the right to assign the trade mark, or license its use.

The following types of trade marks are registrable:

• Goods and service marks
• Collective marks
• Certification marks (by ministerial authorisation).

A trade mark is any sign distinguishing goods, whether products or services, and includes in particular names represented in a distinctive manner, signatures, words, letters, numerals, designs, symbols, signposts, stamps, seals, drawings, engravings, a combination of distinctly formed colours and any other combination of these elements if used, or meant to be used, to distinguish the products of a particular industry, agricultural, forest or mining venture or any goods, or to indicate the origin of products or goods, or their quality, category, guarantee, preparation process, or to indicate the provision of any service. In all cases, a trade mark shall be a sign that is recognisable by sight.

A minister may, in the interest of the public, authorise natural persons or legal entities involved in the control or examination of products as regards origin, components, methods of manufacture, quality, authenticity or any other distinctive characteristic, to register a mark to certify such control or examination. Such a mark may only be disposed of with special authorisation of the minister.

A collective trade mark is used to distinguish a product of a group of persons who belong to a specific entity, even where such entity has no industrial or commercial enterprise of its own. A representative of such entity may submit an application for the registration of the mark.

A combination of distinctively formed colours may constitute a trade mark.

The International Classification of Goods and Services (Nice Classification) is followed. A separate application is required for each class.

Egypt is a member of the Paris Convention which affords applicants who have applied to register a trade mark in another Paris Convention country, the right to claim priority based on the first filing date, provided the Egyptian application is filed within six months of the earlier filing date. The right to claim priority has been extended to apply to a first filing in any member country of the WTO (World Trade Organisation).

Applications are filed with the Trade Registry Department.

The following information and documents are required:

• Full particulars of applicant
• Power of attorney (legalised), in Arabic
• If the applicant is a company, a certificate of incorporation (legalised)
• List of goods and/or services to be covered
• Electronic prints of the mark, for each class
• Priority document (certified copy; if priority is claimed).

Note: If any of the documents are in a foreign language, an Arabic translation must be provided.

Applications are examined as to formal requirements, on relative and absolute grounds. In particular, the Trade Registry Department may require the applicant to make the necessary modifications to the mark to avoid its confusion with a mark already registered or the subject of a pending application.

Upon acceptance of the application for registration, the Department must publish the acceptance in the Gazette of Trademarks and Industrial Designs.

Any person concerned may oppose a trade mark application within 60 days of its publication in the Gazette of Trademarks and Industrial Designs. It is not possible to extend the opposition period.

Opposition proceedings are prescribed by Regulation. A notice of opposition is lodged, containing the grounds of opposition, and is forwarded to the trade mark applicant within 30 days. The trade mark applicant must, within 30 days from the date of receipt of the opposition, provide a written response. Should the trade mark applicant fail to file a response, the trade mark application will be deemed to be abandoned.

Upon receipt of the trade mark applicant’s written response, a copy is forwarded to the opponent within 10 days. Upon request by the trade mark applicant or opponent, a single hearing may be convened for the parties to present their arguments. A decision is made and the parties are informed within 10 days.

Where the opposition is unsuccessful, the trade mark applicant shall be allowed 90 days from the date of notification of the decision, to complete the registration procedure, failing which the application shall be deemed to be abandoned. It is possible to appeal the decision to the competent Administrative Court.

According to the legislation, the following trade marks shall not be registered and, although not specifically stated, these grounds may presumably form the basis of an opposition:

• Marks that are devoid of any distinctive character, or composed of signs or statements which are descriptive of the goods, or which are the normal picture or image thereof
• Marks that are contrary to public order or morality
• Marks that consist of public armorial bearings, flags and other emblems pertaining to the State or any other state, regional or international organisations, as well as any imitations thereof
• Marks which are identical with, or similar to, symbols of religious character
• Symbols of the Red Cross or Red Crescent, or any other emblem of the same character, as well as any imitations thereof
• The portrait of an individual or his armorial bearings, except with his consent
• Designations of honorary degrees, if the applicant is unable to prove his right
• Marks and geographical indications which are likely to mislead or confuse the public or which contain false descriptions as to the origin of the products, whether goods or services, or their other qualities, as well as signs that contain an indication of a fictitious, imitated or forged trade name
• Marks which are identical to a well-known trade mark (even if not registered in Egypt) and which are intended to be used in relation to goods which are identical to those of the well-known mark
• Marks which are identical to a well-known mark (where the well-known mark is registered in a member country of the World Trade Organisation and in Egypt) and which are intended to be used in relation to non-identical goods, but where the use is intended to lead the public to believe that a connection exists between the owner of the well-known mark and those goods and such use may be prejudicial to the interests of the owner of the well-known mark.

The legislation further provides that the Department may require the trade mark applicant to modify the trade mark in question in order to define and clarify the mark, so as to avoid confusion with a mark already registered, or a mark for which an earlier application has been filed.

A trade mark registration is valid for an initial period of 10 years, from the date of filing, and is renewable for like periods. The owner of a trade mark may request the renewal of the protection period within six months after the date of its expiry against payment of the prescribed fees as well as an additional amount, failing which the mark shall be cancelled.

Cancellation/removal of a registered trade mark is possible.

Any interested party may apply to the competent court to cancel a registration if the trade mark in question has not been ‘seriously’ used for a period of five consecutive years. ‘Serious’ use of a trade mark is not defined. A mark so cancelled may be re-registered in the name of its previous owner within three years of its cancellation against payment of a prescribed fee and under prescribed conditions. The cancelled mark may also be re-registered in the name of a third party in certain circumstances.

The legislation further provides that the registration of a mark may be challenged at any time where the registration was made in bad faith.

A prior user of a mark which has been registered by another party may challenge its validity within five years of its registration.

Use of a registered trade mark is a requirement. A registered trade mark is vulnerable to cancellation if it has not been seriously used for a period of five years (see the section on Grounds for cancellation/removal of a trade mark above).

Assignments are possible and may be made with or without the goodwill of the business. Recording of an assignment is necessary to be effective against third parties.

Requirements for recordal:

• Full particulars of the person making the request and of the transferor
• Power of attorney, signed by the assignee (legalised)
• Date of transfer of ownership
• Deed of assignment, signed by both parties (legalised)
• Certified copy of the certificate of incorporation of the assignee company (if applicable; legalised).

Licensing of a trade mark is recognised. Recording of the licence agreement is necessary to be effective against third parties.

Requirements for recordal:

• Full particulars of the person making the request and of the licensor
• Power of attorney, signed by the licensee (legalised)
• Licence agreement (legalised)
• Certified copy of the certificate of incorporation of the licensee company (if applicable; legalised).

The owner of a registered mark may request the Registry to introduce any modifications that do not essentially affect the substance of the mark. Deletion of part of the specification of goods/services covered by the registration is also possible. The amendment will be advertised for opposition purposes.

Requirements for amendment:

• Power of attorney (legalised)
• Supporting document (if any, e.g. certified certificate of the change of name and/or address).

The legislation recognises the right of the owner of a trade mark registration to prevent third parties from the import, use, sale or distribution of products distinguished by such mark. This right does not apply when the owner itself markets these products in any country, or authorises a third party to do so.

The legislation envisages the institution of both criminal and civil proceedings in the case of infringement.

The following offences are listed, punishable by a fine or imprisonment:

• Counterfeiting a trade mark registered in accordance with the law, or imitating it in a manner which is likely to mislead the public
• Fraudulently using counterfeit or imitated trade marks
• Fraudulently affixing to products a trade mark belonging to a third party
• Knowingly selling, offering for sale or distributing, or acquiring for the purpose of sale, products bearing a counterfeit or imitated mark, or to which the mark has been unlawfully affixed.

The legislation provides that the owner of a well-known trade mark, worldwide and in Egypt, shall have the right to enjoy the protection conferred by the legislation even if such a mark is not registered in Egypt.  

No specific defences are listed in the legislation.

The legislation envisages various forms of relief in both criminal and civil cases including:

• An order establishing the infringement of a protected right
• Seizure, confiscation and/or destruction of the infringing products or other items to which the infringing marks have been applied, the revenue and the returns of such products as well as the implements used in the infringement
• Closure of the enterprise used to commit the infringement, for a period not exceeding six months; repeat offenders may be closed permanently
• An order for the compilation of an exhaustive inventory of all the machines and implements used in the infringing actions as well as all products, goods, signboards, packaging, invoices, correspondence and advertisements to which the offending mark has been affixed
• Sale of the offending articles, their value deducted from the damages claimed by the plaintiff, or disposal of them by any other appropriate means
• Publication of the court’s judgment in one or more newspapers at the expense of the infringer.

The law recognises prior user rights, inasmuch as a prior user of a trade mark may, within a period of five years, challenge the validity of a trade mark registration obtained by another party.

It is not compulsory to use the Ⓡ symbol to indicate that the mark has been registered. It is however a criminal offence to indicate that an unregistered mark has been registered.

Where the quantity, dimension, measure, capacity, weight, origin or ingredients of a product constitute a factor in assessing its value, the relevant minister may prohibit the sale, marketing or importation of those goods, unless they bear these indications. These indications must be placed on the product in Arabic.

Trade indications must be factual in all aspects and no mention may be made of medals, diplomas, awards or honorary distinctions except in relation to the products for which such distinctions apply or in relation to the persons/commercial names (or their successors) who have acquired those distinctions.