A Brief Guide to Trademark Registration in Syria
The Trademark Law 8/2007 provides that any mark, sign, logo, trade name or tagline that distinguishes a product or service may be regarded as a trademark if registered accordingly. A mark shall not be considered a trademark if there is a risk that it will confuse the public, such as one that was previously registered, one that is similar to a preexisting trademark, one that is a well-known international trademark which is not registered in Syria, or if it contravenes the law or the public policy of the state. The Trademark Law also additionally regulates geographical indications, and industrial designs and models. It also affords temporary legal protections to trademarks, industrial designs and models in markets and fairs throughout Syria and abroad. It also offers safeguards to commercial and industrial prizes, trade secrets and against unfair competition.
The US and other international sanctions regimes imposed against Syria offer an exemption and specifically permit foreign parties to protect their intellectual property rights in Syria, including by registering their trademarks. Foreign companies are therefore advised to assess their trademark registration options in Syria to avoid situations in the future where they subsequently discover that their brands have already been trademarked by another party who intends to advertise them for sale at exorbitant prices. Attempts to register distinguished international brands are however blocked by domestic legislation in the form of Legislative Decree 48/2009 but subject to certain conditions.
Trademark regulations are applied depending on whether the goods or services are manufactured or provided in Syria or abroad. Trademarks used on goods and services originating from Syria and sold within the country are to be comprised of Arabic letters but they may contain foreign letters next to their Arabic counterparts as long as they are equal in size. Trademarks exclusively composed of foreign letters may represent goods and services that are produced inside Syria but exported abroad without being traded in Syria. Any products emanating from Syria under a trademark license granted by a foreign licensor may bear such trademarks as long as they specify in Arabic that they are made in Syria. Under such circumstances, it is irrelevant whether the manufacturer or service provider is a Syrian national or not. Marks may also represent goods and services originating from overseas but imported and traded in Syria with the country of origin specified and regardless of the nationality of the manufacturer or service provider. Any trademarks that do not comply with these rules shall not be registered or renewed when applicable.
The Industrial and Commercial Protection Directorate at the Ministry of Internal Trade and Consumer Protection has jurisdiction over trademark applications. Trademark applications may encompass a number of goods or services. As a precondition for filing a trademark application, an applicant should be a business owner who has fulfilled their commercial registration requirements, such as being recorded in the Commercial Registry for instance. Trademarks can be registered in Syria by both local and foreign businesses. If the trademark applicant is not resident in Syria, they must authorize a Syrian national to act as their representative to handle filing and registration requirements. Moreover, a trademark may be owned either individually or jointly with another party whether by natural or legal persons. The official registration fees are provided for in Resolution 1171/2016, which was issued by the Minister of Internal Trade and Consumer Protection.
The Directorate may request the applicant to modify their mark to prevent possible confusion with another similar trademark. If the applicant refuses to do so within 90 days of receiving such a notification, the Directorate is entitled to reject the application. If an application is rejected or suspended by the Directorate, an appeal may be lodged with the Competent Committee within 30 days of the decision being notified to the applicant. The Competent Committee’s decision may furthermore be appealed before the Competent Court by the applicant within 30 days from the date they are made aware of the decision.
The Directorate may approve the application and if so, its decision is subsequently published in the Intellectual Property Protection Gazette. Any parties intending to oppose the Directorate’s decision shall have 90 days to do so from the date of its publication. As of late 2016, the Ministry of Internal Trade and Consumer Protection was looking into a potential amendment to the Trademark Law to hasten the registration process by reducing the time period to object to trademark applications from 90 days to 30 days. However, no modifications to the Law in this respect have since been made to date.
The applicant should be informed by the Directorate within 30 days of the latter receiving any objections from third parties contesting the ownership of the mark. At that point, the applicant would then be obliged to respond to the objection within a further 30 days or risk having their application deemed revoked. The Directorate shall then issue a decision regarding the dispute, which may be challenged before the Competent Committee by the relevant party within 30 days of being notified of the decision. The Competent Committee’s decision may also be appealed before the Competent Court by an aggrieved party within 30 days from the date of notification.
The applicant shall be deemed to have abandoned their application if they do not implement the modifications as instructed by the Directorate within the timeframe mentioned in the notification addressed to them. Moreover, the application shall be considered revoked if the applicant does not object to the Directorate’s decision or appeal the Competent Committee’s decision within the fixed time limits.
If the applicant is successful, the trademark is legally valid for a renewable period of 10 years from the date it is filed. Once a trademark has been registered, it incurs legal protection so as to deter any party from infringing on the rights of the proprietor. Moreover, the Customs Directorate is granted authority to seize any goods entering the country that are the subject of trademark infringements.
As long as they are acting in good faith, any party that registers a trademark shall not have it challenged after a period of five years has elapsed. However, there are instances when no such time limit has to be observed when revoking a trademark registration that was made illegally. In certain instances, a decision by the Directorate to this effect may be appealed to the Competent Committee within 30 days from the date of notification to the relevant party. A further appeal may be made to the Competent Court within 30 days of the said notification. Unless it can be justified, a trademark registration may be revoked if the trademark has not been used for a period of three successive years in line with a ruling from the Competent Court.
If a trademark registration has been revoked for whatever reason or due to the fact that it was not renewed, it may be registered once again only in the name of its proprietor within three years from the date it was revoked. After the period of three years has elapsed, the trademark may be registered by the original proprietor or other parties. If the revocation was in accordance with a court judgment, the party adjudicated as entitled to the trademark shall consequently have the right to register it.
The Trademark Law was subsequently amended by Legislative Decree 48/2009, which states that the owner of a well-known trademark whether in Syria or abroad may request the concerned authorities to prevent third parties from using identical or similar marks even if they were the first to register them. In determining whether a trademark may be deemed well-known, the extent of its exposure to the Syrian public shall be taken into account. The passage of Legislative Decree 48/2009 proved particularly effective after a situation arose whereby an individual had registered the logo of the ‘Four Seasons Hotel’ in Syria, thereby affecting the ability of the international hotel chain to benefit from its brand. The dispute was resolved and Legislative Decree 48/2009 was enacted accordingly to avoid such problems arising in the future.
Trademarks may also be assigned wholly or partially. In the event an owner decides to sell their business, they have the right to retain their trademark. A trademark proprietor may also grant a license to another party to utilize the trademark for a term that does not exceed the remainder of the validity period and without compromising the licensor’s right to use it unless agreed otherwise.
The Trademark Law also includes provisions regarding the use of collective trademarks and collective certification trademarks. Geographical indications referring to the source of a product that gives it its distinguished reputation are safeguarded as long as they have acquired legal protection in the country of origin and continue to enjoy it. In order to register a geographical indication, it is necessary to prove continual production of the item in question and to present a certificate of origin. Similar rules pertaining to trademarks also apply to the legal protections afforded to industrial designs and models. However, one difference worth noting is that the protection period concerning the latter is limited to a five-year term starting from the date the relevant application was filed and it may also be renewed for two further five-year terms.