Libya

• Trade Mark Law no 40 of 1956 Commercial Law no 23 of 2010

Note: A new Commercial Law no 23 of 2010 has been enacted, which includes provisions on trade marks. This Law became effective on 21 August 2010; however, the regulations to implement the Law have not yet been issued. Accordingly, the Trade Mark Law of 1956 is still being applied. Libya is a member of the Paris Convention.

The 1956 Law provides for the protection of trade marks for goods and services, and also for certification and collective marks.

No express provision is made in the 1956 Law for the protection of well-known marks. The new 2010 Law defines a well-known mark and provides for protection of well-known marks.

Trade marks are, in practice, registrable in respect of goods and services. However, the Law only refers to the registration of trade marks in respect of goods, referred to as so-called commercial trade marks. The new 2010 Law provides for the registration also of certification and collective marks.

A commercial trade mark is defined to include names of any distinctive form, signatures, words, letters, figures, drawings, tokens, stamps, seals, devices, embossed engravings or any other mark, employed or intended to be employed to distinguish the products of any undertaking.

There is no express reference to colours, but the use of colours is permitted in practice.

The International Classification of Goods and Services (Nice Classification) is followed. Application may not be made for alcoholic products in classes 32 and 33. A separate application has to be filed for each class of goods or services.

Although Libya is a member of the Paris Convention, the Law contains no express provision for the claiming of convention priority. However, in practice the filing date of an earlier filed foreign application can be claimed as the effective date, provided the application in Libya is filed within a six-month period of such earlier filed foreign application.

The following information and documents are required:

• Full particulars of the applicant
• Power of attorney (legalised), in Arabic
• Certificate of incorporation (if the applicant is a company; legalised), with an Arabic translation
• Copy of a corresponding home registration (legalised; may be required)
• Specimen of the trade mark
• List of goods and services to be covered.

Applications are examined for formal requirements, inherent registrability and for conflict with prior registrations and/or pending applications. Upon acceptance, the trade mark is published.

The Law makes provision for the lodging of an opposition within the prescribed time limit, although the current regulations do not make provision for opposition proceedings. In practice, an interested party may oppose the registration of a mark within three months of its publication.

Any person concerned may submit to the office a written notification of his objection to the registration of the trade mark together with the grounds of opposition. The office must serve on the applicant for registration a copy of the notification of objection. The applicant must submit to the office his written response to the objection within the term prescribed.

The opposition is heard by the Registrar of Trade Marks and, if the matter is not settled or a party is unhappy with the Registrar’s decision, the matter may be referred to the Tribunal. The Law also makes provision for appeals to the Federal Supreme Court.

The registration of a trade mark may be opposed on the ground that the mark is not registrable as a trade mark. The following marks shall not be registrable as trade marks:

• Marks that contain no distinctive signs of authenticity, or which consist of signs or titles which are, by custom, assigned to the products themselves or to any ordinary drawing or picture thereof
• Marks which are contrary to good morals or public order
• Public emblems, official signs and stamps and imitations thereof, flags and other symbols of the State or of any other state dealing with Libya on a basis of reciprocity
• Marks which are identical with or similar to symbols of a purely religious character
• Symbols of the Red Crescent or the Red Cross or other similar symbols
• Pictures or mottos of any other person, unless the use thereof is approved by him
• Descriptions of honorary titles to which the applicant cannot prove his legal title
• Marks which may mislead the public or which contain any misstatements about the origin or description of the products
• Marks which contain a fictitious, imitative or forged commercial name.

A trade mark registration is valid for 10 years and, thereafter, renewable for like periods.

A trade mark registration may be removed from the register by an order of court.

The court of first instance may, upon the application of any person concerned, order the cancellation of a trade mark registration where it is satisfied that the trade mark in question has not been seriously used for five consecutive years, unless the proprietor of the marks show a reasonable cause for non-use.

In addition, the trade marks office and any person concerned shall be entitled to apply for a judgment cancelling any marks which might have been unjustly registered (see the section on Grounds of opposition above).

The ownership of a trade mark cannot be placed in dispute where it has been used by the person who has registered it for a continuous period of at least five years from the date of registration, in the course of which period no claim against the registration has been judged to be valid.

To avoid a risk of cancellation on the ground of non-use, the owner must ensure that a period of five consecutive years does not elapse without the mark being seriously used, unless he can show reasonable cause for non-use (see the section on Grounds for cancellation/removal of a trade mark above).

Assignment is permitted with the goodwill of the business. Recording is required in order to be effective against third parties.

Requirements for recordal:

• Power of attorney from the assignee (legalised), in Arabic
• Deed of assignment (legalised), in Arabic or with verified Arabic translation
• Certified copy of the certificate of incorporation of the assignee (legalised), with an Arabic translation.

Licensing is recognised. Recording is required in order to be effective against third parties. The licence agreement must provide for quality control by the licensor.

Requirements for recordal:

• Power of attorney from the proprietor (legalised), in Arabic
• Power of attorney from the licensee (legalised), in Arabic
• Licence agreement (legalised), in Arabic or with verified Arabic translation.

Provision is made for the amendment of a registered trade mark, provided that any modification or addition shall not amount to a substantial change of the mark.

The registration of a trade mark confers on the owner the sole proprietorship of the mark. The owner is entitled to the exclusive use of the mark in regard to the goods for which it was registered, or to authorise use by other parties.

As indicated above, any person registering a trade mark shall be deemed to be the sole proprietor of such mark. The proprietor of the mark shall be entitled to exclusive use of the mark in relation to the products or goods for which it was registered. Any person who uses the mark without the consent of the owner commits an infringement.

Both civil and criminal proceedings are possible. Seizure, confiscation and destruction of infringing goods, as well as damages, may be ordered.

The remedies available to the owner of a registered trade mark are also available to trade marks registered abroad which are entitled to protection in terms of international agreements to which Libya is a party.

The Law also provides for certain offences which include:

• Counterfeiting a trade mark which has been registered, or imitating it in order to mislead the public, or using a counterfeited or forged trade mark
• Using any trade mark owned by another person
• Selling or offering for sale or circulation, or holding for sale, or importing into the country for commercial purposes a counterfeited or forged trade mark or any products carrying a counterfeited, forged or unlawful trade mark, or in any other way causing the circulation of the aforesaid trade mark or products.

The penalties upon conviction include a fine and imprisonment.