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.
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.
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).
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.