Legal framework National Iraq is a parliamentary republic and a civil law jurisdiction. Its legal system is based on substantive and procedural codified laws derived from Egyptian and French law. The Iraqi Constitution contains no provision expressly referring to IP rights. However, the Constitution contains a principle according to which the state shall: • promote cultural activities and institutions in a manner that benefits Iraq’s civilisation and cultural history; and • support indigenous Iraqi cultural orientations. The following are the main texts governing copyright, trademarks and service marks in Iraq: • the Trademark Law (21/1957), as amended by Coalition Provisional Authority Order 80/2004; • the Copyright Law and Neighbouring Rights in the Kurdistan Region (17/2013); • the Penal Code (111/1969); • the Copyright Law (3/1971), as amended by Coalition Provisional Authority Order 83/2004; • Law 65/1970 on Regulating Patents and Industrial Designs; and • the Consumer Protection Law (1/2010). A draft Trademark Law has been submitted to the Iraqi authorities for deliberation, the purpose of which is to secure compliance with the Trade-Related Aspects of Intellectual Property Rights Agreement. To date, this law has not been enacted. International Iraq is a member of the World Intellectual Property Organisation and a signatory to the Paris Convention for the Protection of Industrial Property and the Nice Classification. Border measures Import and export restrictions The Customs Law imposes restrictions on the import and export of certain prohibited goods and restricted merchandise. Goods bearing false marks and labels indicating the incorrect origin are classed as prohibited and treated accordingly. They are seized on import or export, and the carriers are subject to penalties. It is forbidden to import, pass in transit, transport, export or re-export: • products bearing false trademarks, labels or commercial descriptions that benefit from legal protection in Iraq; • foreign products, whether natural or manufactured, marked or labelled in any way whatsoever to indicate that they were made in or originate from Iraq; • products that are inconsistent with the conditions prescribed in laws and regulations pertaining to the protection of intellectual property; and • labels, signs, caps, containers and other elements incorrectly bearing the sign of a factory or store, or a commercial description or an indication of origin eligible for legal protection in Iraq. Penalties The violation or attempted violation of the Customs Law constitutes a criminal offence. Thus, the import or attempted import of prohibited goods without the submission of a customs declaration or through smuggling is considered be an offence punishable by imprisonment, seizure and forfeiture of the goods, in conjunction with a monetary fine. The value of the forfeited goods could also be added to the monetary penalty, which is determined either as a percentage ranging from 5% to 10% of the value of the forfeited goods or as a fixed amount. Customs procedure Violations and attempted violations of the Customs Law are referred to the Customs Special Court, which subsequently refers the case to the criminal and or civil courts. When violations are brought before a court, the injured party may join the case as a civil party. The losing party bears the cost of storing the seized goods. Criminal prosecution Article 467 of the Penal Code provides for a maximum two years’ imprisonment and/ or a fine should any party mislead or deceive another party to an agreement on the nature of the products, their substantial qualities, composition, type or origin, when this constitutes the main cause of the agreement; the same penalty shall apply when the fraud is committed on the number, amount, weight or capacity of the products, or the products themselves, when this constitutes the main purpose of the agreement. Article 476 of the Penal Code also provides that, without any prejudice to a more severe penalty provided for by law, any party which infringes a moral property right protected by the law or an international convention to which Iraq is signatory shall be subject to a fine. All infringing products shall be forfeited. The local courts interpret the moral rights provided for under Article 476 of the Penal Code as IP rights. Moreover, Article 35 of the Trademark Law (21/1957), as amended by the Coalition Provisional Authority Order 80/2004, provides for a fine of between ID50 million (approximately US$41,300) and ID100 million (US$82,600), and/or imprisonment of between one year and five years, against any party which:
counterfeits a legally registered trademark in such a way as to mislead the public or uses in bad faith a counterfeited trademark; • illegally uses a registered trademark which is the property of another party; • affixes on goods a trademark which is the property of another party; • sells or offers for sale or circulation, or possesses with the deliberate intention to sell, goods bearing a counterfeited trademark or a trademark illegally affixed; or • intentionally offers services of counterfeiting or the illegal use of a trademark. In all cases, the court can order the forfeiture of products, merchandise, company names, packaging tools, papers, cards, posters and other items bearing a counterfeited trademark, along with the revenues and profits, as well as the tools used in the infringement. Criminal cases are initiated by either the injured party or the prosecutor. Once initiated, the case is referred to the police for investigation. Once the investigation is completed, the matter is referred to the criminal court with jurisdiction over the matter for the defendant to be tried. Criminal charges may be brought against an individual or the manager(s) of a legal entity involved in counterfeiting activities. The investigation usually takes between one week and one month from the date on which proceedings are initiated. The trial court takes approximately two years to hand down its decision. Civil enforcement A trademark registration is prima facie evidence of ownership and a basis for enforcement. Any prior users should petition the court to remove an illegally registered mark within five years of the date of registration. Once that period lapses, trademark ownership may not be challenged on the grounds of prior use, unless it is proven that the trademark: • has become a generic name for the protected products; • was fraudulently or illegally registered; • was not used for a consecutive three-year period; or • was used by its owner in such a way as to mislead the public regarding the origin of the products or services. Registration grants the rights holder the right to institute infringement actions. Owners of unregistered trademarks may file unfair competition suits only. Unfair competition proceedings may lead to: • cessation of the acts of unfair competition; • prevention of damage caused by such acts; and • compensation for damages sustained. The courts have full discretion to decide whether an act of competition is unfair. The rights holder may request: • cessation of the infringing activities; • damages; and • destruction of the counterfeit goods. In certain situations, where infringement is imminent and easy to prove, the owner of the original product or trademark can petition the judge to obtain a temporary injunction to stop the offending activity. Anti-counterfeiting online Although current laws and regulations do not cover online infringement, the general rule of law and the IP laws apply to such infringements. Contractual solutions and alternative dispute resolution based on the Uniform Domain Name Dispute Resolution Policy Rules may serve to resolve conflicts between domain names and trademarks. The rules on unfair competition also apply to disputes over domain names. Sections 186 and following of the Civil Code may also provide, to some extent, a legal basis for claims relating to the illegitimate registration of a domain name. Preventive measures/strategies The Quality Control Administration and the Commission of Commercial Control at the Ministry of Industry and Trade can investigate acts of alleged counterfeiting through: • entering the premises where the suspected infringing activity is taking place; • examining suspected counterfeited goods; and
seizing the offending goods and leaving them with the owner of the outlet as a judicial custodian. The above authorities may then prepare a report, which may be sent to the prosecutor for further action. Use of local counsel and investigators There is a lack of knowledge of the IP laws at a judicial level, and even among lawyers in general. Therefore, the use of local counsel experienced in IP matters is recommended in counterfeiting cases in order to help explain to the court and the police the various legal issues involved in the case. Private investigators are not permitted to operate in Iraq. Therefore, it is impossible to hire a professional investigator to obtain certain basic information before taking action against the infringer. Such investigation is done by the police after a criminal complaint is filed. Other measures The Ministry of Economy and Trade has made some efforts to fight infringement by communicating the name of the mark owner to the customs and borders police. In addition, the ministry has launched a website featuring information regarding trademark registration and protection. Until 2011 trademarks could be registered only with the Trademark Registration Office in Baghdad. As of 2011 it became possible to register trademarks with the Ministry of Industry and Trade located in the Kurdistan region of northern Iraq. This has caused conflict between the central government and the Kurdistan regional authorities as to the terms and conditions of securing protection of a trademark registered with Baghdad, but not in the Kurdistan region and vice versa. The current practice is that a trademark registered in the Kurdistan region is not protected in the other governorates of Iraq. However, when registered in Baghdad, a trademark registration is acknowledged and protected by the Kurdistan region authorities. Nevertheless, it is advisable to register a trademark with both the central government and the Kurdistan regional authorities in order for a trademark to be duly protected throughout the Iraqi territories. The Iraqi authorities are currently working on setting up a strategy of cooperation practice related to trademark registration and protection policies between the central government and the Kurdistan region.