Article by Lawyer Dareen Mahajneh
Trademarks are considered the signs that distinguish one product from another, to the extent that consumers have become more concerned with the form and name of the product’s brand than the name of the factory itself. Consumers now recognize a product by its distinctive trademark rather than the manufacturer’s name, especially since, in most cases, a manufacturer produces several different products with different trademarks and trade names. Thus, the brand becomes the distinguishing factor for the product, not the name of the owner of the factory. Consequently, since the trademark has become part of a company’s capital and assets—in both material and moral value—it is vital and mandatory for companies to ensure the registration of their trademarks to preserve their rights and prevent infringement.
Legislations have been keen to protect trademarks by preventing infringement and organizing the legal mechanism for registration, as well as the conditions required for a trademark. Among these legislations is the Jordanian Trademarks Law No. 33 of 1952, which is applied and enforced in Palestine.
By reviewing the provisions of the aforementioned Trademarks Law, we find that it consists of 47 legal articles outlining the methods of registration, the specifications of the marks to be registered, and the registration procedures before the Registrar of Trademarks at the Palestinian Ministry of National Economy. The law defines a trademark in its second article as:
“The expression ‘trademark’ means any mark used or intended to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trademark by virtue of manufacture, selection, certification, dealing with, or offering for sale.”
A trademark has been defined in various forms; some define it as “a word, symbol, or a combination of elements that identify the source of a specific product and distinguish it from other products.”
It is also defined as “a distinctive sign or indicator used by an individual, business organization, or any other legal entity to indicate that the products or services provided to the consumer, on which the trademark appears, originate from a unique source, distinguishing its products or services from those of others.”
Accordingly, we find that a trademark is usually—according to common practice—a name, word, phrase, logo, symbol, design, image, or a combination of these elements.
The law applied in Palestine has established several conditions and specifications for a trademark to be eligible for registration in the Trademarks Register. These specifications are clarified in Article (7) of the aforementioned Trademarks Law, which states:
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Trademarks eligible for registration must consist of characters, drawings, marks, or a combination thereof that possesses a distinctive character.
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For the purposes of this article, “distinctive” means that the trademark is designed in a manner that ensures the distinction of the owner’s goods from the goods of other people.
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In determining whether a trademark has a distinctive character, the Registrar or the Court may, if the trademark is already in use, take into account the extent to which such use has rendered the trademark effectively distinctive for the registered goods or those intended to be registered.
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A trademark may be limited in whole or in part to one or more specific colors. In such cases, the Registrar or the Court shall take this limitation into account when deciding on the distinctive character. If a trademark is registered without limitation to specific colors, it shall be deemed registered for all colors.
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The registration of a trademark is limited to specific goods or specific classes of goods.
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If a dispute arises regarding the class to which any goods belong, the Registrar shall resolve the dispute, and their decision shall be final.
On the other hand, the law identifies certain marks that are prohibited from being registered as trademarks under Article (8), which are as follows:
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Marks that resemble the emblem of His Majesty the King, royal crests, the word “Royal,” or any other words, characters, or drawings that may lead to the belief that the applicant enjoys royal patronage.
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The emblem or decorations of the Government of the Hashemite Kingdom of Jordan, or foreign countries/states, except by authorization from the competent authorities.
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Marks indicating an official status, unless their placement is mandated by the competent authorities to which the mark belongs or under whose supervision it falls.
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Marks that resemble the national flag, military or naval ensigns of the Hashemite Kingdom of Jordan, honorary decorations, or national military/naval flags.
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Marks containing the following words or phrases: “Patent,” “Patented,” “By Royal Letters Patent,” “Registered,” “Registered Design,” “Copyright,” “To counterfeit this is a forgery,” or similar expressions.
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Marks that are contrary to public order or morality, or those that lead to deceiving the public, encourage unfair commercial competition, or indicate an incorrect source.
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Marks consisting of numbers, letters, or words commonly used in trade to distinguish types and classes of goods, or marks describing the type or nature of the goods, or words commonly indicating a geographical meaning or surnames, unless presented in a special form. Provided that this does not prevent the registration of marks of this type if they possess a distinctive character as defined in Article 7.
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Marks that are identical or similar to any emblem of a purely religious nature.
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Marks containing the picture of a person, their name, the name of their commercial establishment, or the name of a company or entity, except with the consent and approval of that person or entity. For recently deceased persons, the Registrar may require the approval of their legal representatives.
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A mark identical to one belonging to another person already registered for the same goods or class, or a mark so similar that it may lead to deceiving others.
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Marks identical or similar to the Red Crescent or Red Cross signs on a white background, or the Geneva Cross signs.
Therefore, the owner of a trademark must take the above into account when choosing the design or name they wish to register, to avoid violating the aforementioned articles. This ensures the trademark can be registered easily without rejection by the Registrar or opposition from third parties.
Thus, we advise trademark owners—whether natural or legal persons of any legal entity—to work on registering their trademarks in the classes related to their trade to protect their distinctive marks from infringement by any person.
Furthermore, we point out that the system implemented by the Registrar of Trademarks in Palestine allows, before launching the brand or applying for registration, the possibility of conducting a search for the mark using the designated form. If it appears that no similar registered mark exists, the registration application is filed, which saves time and money for the applicants.