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Iraq Trademarks - JAH CO.IP
Iraq Trademarks

Trademark Requirements:

 

The following documents and information are required for filing a trademark application in Iraq:

The name, address, nationality, and occupation of the applicant.

A power of attorney legalized up to the Consulate of Iraq. However, if your clients cannot legalize it up to the Iraqi Consulate, kindly try to legalize it up to the Qatari Consulate and we shall complete the legalization in Qatar at the cost of USD 285.  Please note that the legalized Power of Attorney MUST be also legalized in Iraq from (the Central Bank, General Tax Commission and the Ministry of External Affairs) to be acceptable by the Iraqi Trademarks Office.

The classes and subclasses of the goods to be covered by the application. The wording of the list of goods/services to be protected should conform to the local classification, which is similar to the International Classification.

Ten prints of the trademark. It is advisable that the necessary prints in the combined Arabic and Latin scripts be prepared locally, as the trademark should be filed in a specific form: the Arabic script should be shown above the Latin script and in large lettering.

A certified copy of the priority document duly legalized up to the Iraqi Consulate.

Applications in class 34, requires a sample of the packs and a certificate from the competence authority attesting that the applicant is authorized to manufacture or trade with products of the class.

 

Multi-class and sub-classes systems are applied at the Iraqi Trademarks Office, and the total costs for registration of a trademark in Iraq depend on the number of sub-classes covered by the application. International classes of the goods and services to be covered by the application are divided into subclasses which is similar to the International Classification.

 

We are pleased to inform you that the Registrar at the Iraqi Trademarks Office has reversed his decision regarding submitting the legalized Power of Attorney at the filing stage, and accepting the new applications without the POA while the same could be filed belatedly within NON-EXTENDABLE SIX months from the filing. 

 

Time frame from filing a trademark application up to registration in the normal course of action; i.e.  in case that no office action is raised by the trademark examiner or oppositions are lodged by third parties:

Filing up to Examination : 24-36 months

Examination up to Publication : 10-12 months

Opposition Period : 90 days from publication date

End of Opposition Period up to Issuance of Registration Certificate : 6-12 months

Total Estimated Time Frame : 42-62 months

 

Renewal:

A duly legalized POA

 

It is possible for us to proceed with the renewal of these trademark applications immediately though the registrations certificates of these trademarks are not issued.  What matters most is the fact that the opposition period against the registrations of these trademarks applications has been lapsed without being opposed by third parties against the registration of your client’s titled trademarks. As such, these trademarks are considered virtually registered and we may file the renewal applications in favor of these trademarks immediately upon receiving your instructions.  However, we recommend paying the registration fees and issuing the registration certificates of the trademarks so as to effectuate the renewal action since the renewal will be maintained in abeyance till the trademarks are processed into registration.

 

TIME FRAME for Issuance of a renewal certificate : 12-24 months

 

Change of Name Requirements:

A power of Attorney with the new name legalized up to an Iraqi consulate abroad.

A certificate of change of name legalized up to an Iraqi consulate abroad.

TIME FRAME IS 12-24 months

 

Change of Address Requirement:

A power of Attorney with the new address legalized up to an Iraqi consulate abroad.

 

TIME FRAME IS 12-24 months

 

Assignment Requirements:

A power of Attorney in the name of the assignee legalized up to an Iraqi consulate abroad.

A deed of assignment legalized up to an Iraqi consulate abroad.

 

TIME FRAME IS 12-24 months

 

Registered user/license requirements:

A license agreement has to be in writing. It is permitted to license the use of registered and pending trademarks. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the license.  There are no specific statutory provisions in the Iraqi Civil or Commercial Law stipulating the terms or conditions for the licensing of trademarks.  There are no mandatory provisions in law for the recordal of a licensee. Recordal is voluntary, but a license will not have legal effect vis-à-vis third parties unless it is recorded and published. There is no time frame for a recordal and there is no prescribed form or content for the validity of a license agreement. The terms and conditions agreed upon between the parties will constitute the license agreement.

 

The following documents are required for a recordal:

A power of attorney duly legalized up to an Iraqi Consulate, with the legalization stamp affixed to the back of the document. If it is not possible to legalize the document up to an Iraqi Consulate, it may be legalized up to a Jordanian Consulate.

A legalized license agreement, executed by the licensor and the licensee (preferably in English) as well as two copies thereof.

 

Effectiveness of Registered user/license

When the license agreement is recorded in the Trademark Register and published in the Official Gazette, it will be effective and enforceable vis-à-vis third parties from the application date for the recordal. The license is published in the Official Gazette and in two local newspapers.

 

Infringement Proceedings:

There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may not join the trademark owner in infringement proceedings. An infringement action can only be defended by the legitimate owner of the trademark. The licensee may call upon the owner to institute infringement proceedings, but he may not institute any proceedings in his own name if the proprietor refuses or neglects to do so. The owner of the mark may however give the licensee that right.

 

Opposition procedures:

The opposition period is 90 days from the date of the publication of the trademark.
Any interested person may, within ninety days from the date of advertisement, file a written notice of opposition against the registration of the mark. The Registrar shall serve a copy of the notice of opposition on the applicant for registration who shall, within thirty days, send a written reply to the opposition. If no reply is received within the said period, the applicant shall be deemed to have abandoned the application.

Before giving a decision on the opposition, the Registrar shall, if requested to do so, hear both of the parties. The Registrar may decide either to accept the registration or to reject it. In the former event, he may impose any limitations he may deem necessary. If there is reason to believe that the opposition is not serious, the Registrar may, not withstanding the opposition, give a reasonable decision to proceed with the registration.  The Registrar’s decision is subject to an appeal before the civil competent court within thirsty days from the date of being notified of the Registrar’s decision.

 

TIME FRAME: 10 to 15 months for a decision to be issued in respect of an opposition action in Iraq

 

Infringement action against trademarks:

Protection of trademarks in Iraq is either civil or criminal and the registrant owner of a duly registered trademark has the option to file either a civil claim or criminal one, while unregistered trademarks do NOT qualify for criminal and/or civil protection under the Iraqi Trademarks Law.  Therefore, it would NOT be possible for an owner o a trademark not registered in Iraq to take any legal action at this stage, including the injunctive orders, against the counterfeit products UNTIL the registration certificates of trademark is issued by the Trademarks Office in Iraq.

 

After the issuance of the registration certificates of the Client’s trademark in Iraq, it would be possible for registrant owner to file a trademark infringement action with the Competent Court in Iraq against the infringers. However, please be advised that there are many actions that should be taken by the registrant owner of a trademark before proceeding with filing a legal action against the Infringers in Iraq which are summarized here under – in sequence – the legal actions which should be taken against the Infringers of a registered trademark in Iraq:

 

Conducting an investigation in the Iraqi Markets in order to obtain information about the infringer’s full name, address, size of his business and branches, and further, obtain information about the distribution and/or circulation of the said products in Iraq in addition to obtaining samples of the same.

 

Our charges for conducting the investigation in Baghdad City are US$ 750 in addition to the costs of the samples.

 

Conducting official search with the Iraqi Trademark Office in order to check whether the infringer has registered any trademark identical and/or similar to your Client’s trademark.

 

The total costs for conducting an official trademark search with the Iraqi Trademark Office in one class are US$ 120. This amount covers the official fees of US$ 20.00 in addition to our own charges of US$100.00.

 

If the search results revealed that the infringers do not hold a registration for any trademark identical and/or similar to registrant owner’s trademark, then we would recommend sending a strongly worded Cease and Desist letter to the infringer, and demand them to immediately stop their infringing activities and threaten to take the appropriate legal measures to preserve and protect the client’s rights in the trademark, and further, request them to provide an undertaking to this effect within 15 days as of the date of being notified with our cease and desist letter, otherwise they would face legal action.

 

Our charges for preparing, filing and following up the cease and desist letter are US$ 1250.

 

If no response is received or if the response received is negative, and if it has been ascertained thereafter that the infringers are still using the infringed products despite of being warned with the same, then it would be possible for the registrant owner to file a legal action with the Competent Court in Iraq provided that the registration certificate of infringed trademark is issued.

 

Our charges for preparing and filing the legal action with the Court are US$ 3000 in addition to US$ 500 for attending each hearing session, while the official fees will be determined by the Court when filing the legal action.

 

In case the infringer is the Registrant Owner Commercial Agent/ Distributor OR that the Infringer used to be their Commercial Agent or Distributor and that the Client has ever signed any agreement or contract with the infringer in relation to the products, and further, we need to have a copy of the agreement in order to enable us to review the same and advise whether the Client can file a lawsuit against the infringer for breaching the agreement or not.