Over the past few years, as with a number of other countries in the Arab world, Libya has experienced a period of dramatic political change. The transformations in Libya’s political landscape have led to a number of large scale shifts for  the country on many fronts, including in relation to the operation of Government offices and to the  country’s legislation.

In June 2013, the Libyan Trade Marks Office (LTMO) officially resumed full operation by issuing its  first Official Gazette for two years, and by taking steps to develop its systems for handling trade  mark applications. For the preceding two years, the LTMO had been inactive during the period of  civil unrest which resulted in the removal of Muammar Gaddafi from power.

With it now once again possible to carry out trade mark searches and file applications in Libya,  this article takes  a closer look at the new Libyan trade marks law (in effect since 2010) and it  examines the ways in which it differs from its predecessor.

The Libyan Trade Marks Law

On 21 August 2010, a new Commercial Code came into effect (Law No. 23 of 2010). Book 10 of the  Commercial Code set out a new Libyan trade marks law (the New Trade Marks Law), replacing Law No.  40 of 1956 (the Old Trade Marks Law) that had been in place for over half a century.

In summary, the New Trade Marks Law:

  • widens the definition of a trade mark;
  • provides that famous marks are afforded protection even if they have not been registered in  Libya;
  • permits individuals – including non-Libyan nationals who have a “true activity centre” in one of  the countries of the World Intellectual Property Organisation or in a country which offers Libya  reciprocity - to register trade marks;
  • extends the grace period for filing renewals;
  • grants trade mark holders (and those with a right to utilise/dispose of a mark) the right to  initiate actions, both civil and criminal, against infringing parties at any time; and
  • updates and increases the penalties for trade mark infringement. 

What constitutes a trade mark?

The New Trade Marks Law defines a trade mark as “anything characterising a product or a service  from another” and sets out a non-exhaustive list of what may be considered a trade mark.

This list specifically includes trade names, colour marks and sound marks. Holders of these  categories of marks may now potentially secure protection in Libya, provided their marks are  registered in accordance with the procedures outlined  in the New Trade Marks Law.

Further, in defining a trade mark as “anything” which distinguishes a product or service from those  of other traders, the New Trade Marks Law arguably covers all forms of non-traditional trade marks.  On the face of it, if something distinguishes a product or service from others, then it is capable  of being registered in Libya.

It remains to be seen however, whether the LTMO will, in practice, be prepared to apply such a  broad interpretation to the New Trade Marks Law. In particular, it will be interesting to see  whether issues which have restricted the registration of non-traditional trade marks in other countries (such as the ability to define the mark clearly and to register the mark in a form which  can be searched) will limit the application of the New Trade Marks Law’s broad definition of a  trade mark.

Famous marks

The holders of “famous marks” (defined as those “marks that remind the public of the product or  service they represent, even if those members of the public are not its clients”), are afforded protection under the New Trade  Marks Law regardless  of whether or not the trade marks in question have been registered in Libya.

Accordingly, any attempt to register a trade mark that corresponds to a famous mark (other than by  its legitimate owner) should be rejected automatically by the LTMO.

Potentially, this represents very good news for holders of famous marks. With Libya having been  closed to many international brands for so long, many are now  encountering problems with unauthorised versions of their marks being present on the market before them.

However, while a definition of famous marks is provided, it is unclear as to the level of proof  required to meet this definition. Of particular importance is the extent to which the LTMO will  consider “the public” to refer to members of the public internationally, or whether it will require holders of international famous marks to  provide evidence of a reputation in Libya.

Right to registration

Any individual or company is permitted to register trade marks under the New Trade Marks Law. This  extends the option of registration to all trade mark holders and not only just the ‘industrialists,  producers or merchants’ of Libyan nationality, or who resided in, or had an actual place of  business in Libya who were afforded the entitlement to register their trade marks under the Old  Trade Marks Law.

This is an important development as it opens the door to businesses to seek protection for their  trade marks in Libya, before they enter the Libyan market.

Protection Duration

Although the duration of protection granted to registered trade marks remains 10 years (renewable  for further 10 year periods), the grace period for filing renewals in Libya is extended by the New  Trade Marks Law from three to six months. With many brand owners facing difficulties in verifying  that their records of their Libyan registrations are accurate, this provision is potentially  important in that it provides more time to confirm the status of a mark before applying before  submitting an application to renew.

New rights for trade mark holders

Registered trade mark holders, as well as those individuals with a right to a registered mark’s  disposal and/or utilisation, may (even before having initiated civil or criminal proceedings) at  any time seek an order from the Court of First Instance for the seizure of any infringing goods.  This was not provided for under the Old Trade Marks Law.

This development in the law affords registered trade mark holders a potentially swifter and less  costly means for taking action against infringing goods.

Penalties for Infringement

Under the New Trade Marks Law, any individual found guilty of trade mark infringement, by either:

  • falsification of a mark already registered in accordance with the law; or
  • imitation of a mark in bad faith, shall be liable on conviction to imprisonment for a period up  to two years and fines of up to LYD 10,000 (approximately USD 8,000 according to the exchange rate  at the time of writing).

Whilst the term of imprisonment remains the same as   that prescribed in the Old Trade Marks Law,  the monetary penalty for infringement is more likely to act as a deterrent than previous amount of  LYD 300 (approximately USD 240).

Comment

The introduction of the New Trade Marks Law is a welcome (and long overdue) step in the right  direction for trade  mark holders seeking to protect their rights in Libya. With Libya becoming an  increasingly important emerging market within the region, brand owners (both local and  international) are in a better position to secure protection for their marks and to enforce their  rights thanks to the changes introduced by the New Trade Marks Law.

This, combined with the steps taken by the LTMO to process new trade mark applications (and to  clear the backlog of old filings), means that the Libya is now back on the map for brand owners  seeking protection in the MENA (Middle and North Africa) region.