Published: 26/04/2009 8:43 am
The Intellectual Property Rights Law provides detailed provisions regarding what constitutes a trademark, how companies can protect their trademarks
The identity of a business is to a great extent associated with its logo and the name with which it is known in the public domain.
The unique logos and names are referred to in legal terms as the trademarks and trade names and companies invest a lot of time and money in promoting their trademarks and trade names.
Consequently, it is very important for the businesses to protect these symbols of their identity. Today, comprehensive international treaties exist which provide protections and safeguards to companies with respect to the use of their trademarks and trade names.
The World Intellectual Property Organisation has the task of considering the needs of businesses and balancing them with individual rights and developing international standards on intellectual property rights including those related to copyrights, patents, trademarks and trade names.
Oman is also a signatory to these widely accepted and ratified international conventions and last year promulgated the comprehensive Intellectual Property Rights Law through Royal Decree 67/20008 (as amended) (the Law).
The Law provides detailed provisions regarding what constitutes a trademark, how companies can protect their trademarks and what remedies and safeguards are available to businesses against violators.
The following is a brief overview of the trademark rela-ted provision of the Law and companies should seek legal advice from intellectual property lawyers on the detailed provisions of the Law.
The Law defines a mark as any sign capable of being designed in a specific form which distinguishes goods (trademark) or services (service mark) produced by an entity from those produced by other entities. Such sign may in particular be words including personal names, drawings, letters, colours, a combination of colours, numerals, variety of geographical indications, sounds, smell or taste. If the signs are not long enough to be eligible as a copyright they shall be protected as marks." A trade name is defined as "the distinctive name or title which distinguishes a certain establishment."
Registration The application for registration of a trademark has to be submitted to the Registrar in the manner prescribed by the Law and relevant regulations. The Registrar shall then examine the application to verify if it is compliant with the prescribed requirements and to determine whether it is a mark eligible for registration in accordance with the provisions of the Law.
If the application for registration meets all the requirements the Registrar shall publish the application, after payment of the prescribed fees, in the Official Gazette.
The Law further provides that any interested person may within ninety days from the date of publication in the Official Gazette submit to the Registrar a written objection to the registration of a trademark.
The duration of protection consequent to registration of the mark is ten years from the date of filing the application for registration. Registration may be renewed on request for similar periods after payment of the prescribed fees. Protections & Rights The Law also provides protection to trademarks registered in other countries, such as those countries which are members of the Paris Club and the World Trade Organisation.
The filing of every mark registered in such countries shall be accepted and protected in the sultanate. However, this is subject to certain exceptions such as if the mark is contrary to public policy or morality or of such a nature as to deceive the public. Moreover, before carrying out the final registration, the Registrar may request a copy of the certificate of registration of the trademark in the other state issued by a competent authority.
The owner of a registered trademark shall be entitled to prevent third parties from using, without his consent, identical or similar marks including trade names and geographical indications of goods and services related to those in respect of which the mark has been registered if such use is likely to create confusion.
The owner of the registered trademark is also entitled to initiate legal proceedings against any person who infringes the trademark by using it without his consent or performs acts as a result of which infringement of the trademark is likely to occur.
The Law also provides that on the application of the owner of a registered trademark, the court may issue a judicial order to prevent the existing or imminent infringement and decide a reasonable compensation for the damage resulting from such infringement. Taimur Malik is a lawyer at Said Al Shahry Law Office (SASLO), Muscat. You can contact him at +968 24636954 or firstname.lastname@example.org"