By Shaimaa Solaiman
Law Firm Challengue
According to the Egyptian IP Law No. 82 /2002, the cancellation of a trademark under the said Law may take place either by administrative authority (the Egyptian Trademarks Office) or judicial authority (the Administrative Courts). Administrative cancellation through (the Egyptian Trademarks Office) occurs when the legal protection period of a trademark prescribed in the above mentioned Law is lapsed without being renewed. The protection period of a trademark under Egyptian Law is ten years as of the date of filing and may be renewed during the last year for another period. If the protection period has been lapsed without submitting a request to renew the trademark registration for another period, the Egyptian Trademarks Office shall automatically cancel the registration of the trademark.
Is it possible for the owner of a trademark to renew said trademark after being canceled and stricken off by the (the Egyptian Trademarks Office)?
It is worth mentioning that according to Article 92 of the above mentioned law; only the owner of the trademark has the right to re- register his trademark within a period of three years following the stricken off of such trademark.
However, after the lapse of said three years the third parties are entitled to re- register the said trademark. Judicial cancellation may take place as follows:
1- Article 65 of the Egyptian IP Law No. 82/2002 stipulates that «the person who has registered a trademark and who has made use of it for a period of five years as of the date of its registration, shall be deemed the owner of such a trademark, unless precedence of use by a third party is proven. A previous user of the trademark may, within the said period of five years, challenge the validity of its registration». This means that any previous user may submit a request to the competent court requesting the cancellation of a registered trademark, during a period of five years as of the date of its registration, if he proves that the trademark was previously used by said previous user.
In such a case the court will issue its judgment cancelling the registration of the trademark.
2- When the registration of a trademark is made in bad faith, the concerned party may, at any time, request the competent court to cancel such registration. Based on the above, it is very important to differentiate whether the registration of a trademark is made in a bad faith or in a good faith. This is due to the fact that if the trademark was registered in a good faith and the period of five years was lapsed, the cancellation of a trademark may not be requested. However, if the registration of the trademark is made in a bad faith, the cancellation of the trademark may be requested at any time without being restricted by the period of five years.
3- According to Article 91 of the aforementioned law, any concerned party may request the competent court to cancel the registration of a trademark, if it is proven that such a trademark has not been seriously used for a period of consecutive five years; and the owner of such a trademark fails to submit a legitimate reason for the non-use of the trademark during the said period. This means that in order to apply Article 91 the following two conditions should be met:
• The registered trademark has not been seriously used for a period of consecutive five years.
• The owner of the trademark fails to submit a legitimate reason for the non use of the trademark.
Finally, it is to be noted that if the trademark has been canceled and stricken off by the administrative courts, the third parties shall be entitled to re- register.