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Legal Mechanisms

1- OPPOSITION SYSTEM

Procedure of opposition allowing, through an administrative procedure, the holders of prior rights to oppose the registration of a brand application.

Procedure regulated by articles 148.2 to 148.5 of Law 17/97 on the protection of the IP as amending and supplementing the Law 31/05 and articles 66.2 to 66.5 the Enforcement Decree of the law.

Who can oppose?

  • The owner of a protected or deposed brand subsequently to a new application of registration of brand or beneficiary of a date of subsequent priority ;
  • The owner of a protected or previously filed a new trademark application or benefiting from an earlier priority mark;
  • Le propriétaire d’une  marque protégée ou déposée antérieurement à une nouvelle demande d’enregistrement de marque ou bénéficiant d’une date de priorité antérieure;
  • The owner of an earlier week-known brand within the meaning of article 6bis of the Paris convention for protection of industrial property;
  • The holder of a geographical  indication or designation of protected origin;
  • The holder of an exclusive license.

Time for opposition

1/Case of an application for registration of a national brand:

- Two months after the publication of the application for registration in question.

2/ Case of an international brand:

- Two months from the first day of the month following receipt of the bulletin of   international brands by the OMPIC.

Conditions of admissibility of opposition

  • Opposition to present with the OMPIC using a downloadable form M7  on the website, together with attachments (power of attorney and elements of awareness where necessary); justification for the payment of fees "960 DH TTC per class of product/ service" and any document to support the arguments of the opponent).
  • Opposition must contain a presentation of the grounds argued, presented in three parts :
    - Comparison of products and services;
    - Comparaison of signs;
    - Where necessary, awareness.

The opposition is dealt with according to the following procedure:

1- The opposition is notified without delay to the holder of a the application for registration or his agent where necessary.

2- Where the applicant has not presented replies within two months, the OMPIC   rules on the opposition.

3- In case the applicant has presented responses within the aforementioned period, the opponent has a period of one month from the date of notification of the response of the other party to present its observations, and the applicant has a delay of one month from the date of notification of these observations for a further response.

4- The OMPIC notifies, without delay, the other party of any response or observation made by one of the parties.

5- The OMPIC rules on the opposition by reasoned decision within a period not exceeding six months following the expiration of a period of 2 months mentioned above.

However, an extension of this delay can be considered for an additional period of three months, on a reasoned request of one of the parties, accepted by that body.

The initial period of six months referred to in paragraph 5 above is suspended:

  • When the opposition is based on an application for registration of brand;
  • In case of commitment to a nullity action, forfeiture or claim of ownership;
  • On the joint application presented once by the parties to the OMPIC without that the period of suspension can exceed the current six months from the filing date of the aforementioned request.

Closing of the opposition

The opposition proceedings are closed by decision of the OMPIC:

  • When the opponent has withdrawn his opposition or has lost the capacity to act;
  • When the opposition has become purposeless as a result of a mutual agreement between the parties ;
  • When the application for registration against which the opposition was formed is withdrawn or dismissed ;
  • When the effects of the previous duties have ceased.

Assessment criteria of an opposition

  • Comparison of products and services: exam if identical products/services, identical by category or similar, taking into consideration the principle of specialty.
  • Comparison of signs: review of the identity or similarity of signs (visual, phonetic and intellectual aspects).
  • Review of the awareness, where necessary.

Decision draft

  • The OMPIC prepares a draft decision in view of the opposition and the observations in reply. 
  • The decision draft is notified by registered letter with acknowledgment of receipt to the parties to eventually challenge the merits letter.

Period of the contestation: 15 days.

  • Possibility to appeal to the Court of Appeal of Commerce Casablanca.

Add back later a link referring to the publisher of opposition decisions.

2- BORDERS MEASURES

The administration of customs and indirect taxes can, on application by the owner of a registered brand or beneficiary of an exclusive right of exploitation, suspend the free movement of imported, exported or in transit goods suspected of bearing counterfeit identical or similar marks compared to that mark causing confusion.

The aforesaid request must be supported by adequate proof elements assuming that there is an infringement of the protected rights and provide sufficient information that can  reasonably be expected that the holder of the copyrights is aware that the goods suspected of being counterfeit are reasonably recognizable by the administration of customs and indirect  taxes.

 In addition to the elements of the aforesaid proof, the administration of customs and indirect taxes can request any document or information necessary to instruct that request as well as any payable fee.

The applicant and the reporter or holders of the goods are informed, without delay, by the administration of customs and indirect taxes, of the suspension measure taken.

The request for suspension is available for a period of one year or for the period of the protection of the brand remaining when the latter is inferior to one year. these measures also apply to the holder of a geographical  indication or designation of protected origin.

The suspension is automatically lifted if the plaintiff fails, within ten working days of the notification to the defendant of that measure of suspension, to prove to the administration of customs and indirect taxes:

- Either provisional measure ordered by the president of the court;

- Or having filed a lawsuit and having provided the guarantees established by the court, to cover his liability in case where the infringement would not be subsequently recognized.

For the commitment of legal proceedings, the plaintiff can obtain from the Administration of customs and indirect taxes disclosure of the names and addresses of the consignor, importer, consignee or the holder, as well as their amount, notwithstanding any contrary provisions.

When the administration of customs and indirect taxes determines or suspects that imported, exported or in transit goods are counterfeit, it automatically suspends the release into free circulation of such goods. In this case, it informs, without delay, the copyright holder of the measure taken and provides it upon request, information.

The reporter or holders of the goods are also informed of this measure, without delay.

The aforesaid suspension is automatically lifted off right as default for the rights holder to justify to the administration of Customs and Indirect Taxes, within ten working days from the date of the information that was communicated to him by that administration, of measures or action taken.

Goods of which release for free circulation has been suspended and which have been recognized, by final judicial decision, constitute of infringing goods will be destroyed, except in exceptional circumstances. In this case, the cost of storage, destruction and all costs are borne by the infringer. They can in no case be authorized to export or be subject to other customs regimes or procedures, except in exceptional circumstances.

In case of amicable settlement which put an end to the suspension, the latter must contain a clause about the destruction of goods.

The administration of Customs and Indirect Taxes can proceed with the destruction of goods abandoned in custom on order of the President of the court, at the request of the claimant who should support the costs of the destruction.

The suspension of release for free circulation performed does not assume any responsibility for the administration of Customs and Indirect Taxes.

In case the goods are not recognized as counterfeit, the importer can ask the court for damages, paid on his behalf by the applicant, for compensation for any injury suffered. 

Are excluded from the scope of application of border measures, goods of non-commercial nature contained in small amounts in travelers' personal luggage’s  or sent in small consignments for personal or private use.

Link to ;

  • Circular No 4994/410 of March 10 2006 (PI).

3- LEGAL ACTIONS

Nullity action

Sign adopted for violation of prior rights

Only the holder of the prior right can engage the nullity action.
Sign likely to create confusion with a well-known mark within the meaning of Article 6 bis of the Paris convention

The owner of the well-known mark to the right of the nullity of a brand within 5 years from the date of the registration, under penalty of inadmissibility his action cause of the limitation period

Action for forfeiture

Three causes for forfeiture of the brand

  • non-use of the brand (art.163);
  • Brand becoming the common name in the trade (art.164.a);
  • deceptive character of the brand (art.164,b).

Forfeiture can be made to the court by anyone interested (person having the intention to use the brand).

Main effect of forfeiture: extinguishment of the right on the brand. other effects can be also identified:

  • forfaiture is enforceable to all.
  • Disqualification must be registered in the National Register of Trademarks.

Action claiming the ownership

  •  « If a registration has been made either in fraud of the rights to a third party, or in violation of a statutory or contractual obligation, the person who considers having a brand right can claim his ownership to justice... » (Article 142 al.1 of  law 17/97).
  • The action for claim is considered as a nullity action for fraud.
  •  The decision for claiming grants the ownership over the brand to the one who has the right.

Infringement action

  • Civil action: can be initiated by the brand owner or the holder of an exclusive license (except contrary contractual provisions).
  • Law enforcement : Penalties for the infringer " imprisonment from 2 to 6 months and a fine of 50.000 to 500.000 dirhams" or" one of these penalties "

Action for unfair competition

Any act of competition contrary to honest practices in industrial and commercial matters:

  • Creating a risk of confusion in the public mind, by any means;
  • False allegations : describe the products or services of the enterprise;
  • Competitor of lower- quality and non-compliance with standards...;
  • Parasitism: illegal exploitation of the reputation of the competitor enterprise;
  • Misleading indications or allegations : mislead the public into error damage;