There are two options of obtaining legal protection through registration of trademarks in Kurdistan which are summarized as follows:
A) If the trademark is already registered or accepted for registration in Iraq and the owner of the mark wish to extend its protection to Kurdistan an official letter should be issued by the Iraqi Trademarks Registrar in Baghdad and addressed to the Registrar of Trademarks in Kurdistan furnishing him with the complete details of the concerned trademark filed in Iraq with a report on its latest status whether accepted or registered in order protect the mark and accredit its registration under Kurdistan jurisdiction.
– A power of attorney duly legalized up the Consulate of Iraq abroad. However, if the mark is registered through our Firm we can use the one in our possession.
B) For trademarks which are not originally registered or even that are registered in Iraq an application for registration of the mark should be submitted directly to the Trademarks registrar in Kurdistan with the following documents:
A power of attorney legalized up to an Iraqi consulate abroad, which requires local legalization in Kurdistan.
An extract from the commercial register or certificate of incorporation of the applicant company, legalized up to an Iraqi consulate abroad, which requires local legalization in Kurdistan.
A certified copy of the home registration certificate of the mark or in its absence a certificate proving that the applicant has a factory in the home country and in its absence a certificate from the factory from which the good is making in favor of the applicant; any of the aforesaid documents should be legalized up to an Iraqi consulate abroad, which requires local legalization in Kurdistan.
Fifteen (15) prints of the trademark.
In this perspective, I should note that:
Registration of trademarks in Kurdistan alone will not give protection to the mark in Bagdad, Iraq where a separate registration should be sought therein directly.
It is legally more effective to obtain direct registration of trademarks in Kurdistan for trademarks registered or non-registered trademarks in Bagdad, Iraq since it is the practice of the Trademarks Registrar in Kurdistan to issue an official circular addressed to the General Customs Directorate with the Ministry of Finance and Commerce combined with copies of the registration certificate notifying them of the registration of the mark so as to take the necessary action towards the non-allowance of the entry of any infringing mark identical or confusingly similar to your client’s mark in the name of any different party.
As for the trademark search, please note that it takes approximately 2 weeks to be completed.
It takes approximately 6 – 8 months for a trademark to be registered.
When filing a new trademark application the applicant or his agent should submit a pledge in the effect that the trademark has not been previously registered in Baghdad- Iraq for the same class (es) for which it is applied in Kurdistan and in case it is confirmed that the same mark was registered earlier for a third party in Baghdad – Iraq the Trademarks Registrar in Kurdistan will cancel the mark automatically without referring to the competent civil court.
When filing a new trademark application it is obligatory to combine the same with a request for search of the mark as to prior rights and distinctiveness. In case the Trademarks Registrar refuses the application for registration due to the presence of a prior right or non-distinctiveness he will call for the withdrawal of the application and will not accept the payment of the official fees for filing of same.
It is permitted to file trademark applications and obtain official filing receipt with filing number and date and further the trademark application will be examined within two to three working days and published without the above-requested documents which should be submitted within the ninety days of opposition. A non-extendable one month from the date of publication of the mark will be given for the submission of the complete documents and in case of failure to submit the said documents during the one month subsequent to the expiry of the opposition term the trademark application will be abandoned and considered as never existed. However, if a legalized power of attorney is already in our possession for filing trademarks o f the same client in Iraq the same can be used for filing and registration in Kurdistan by presenting the original legalized power of attorney to the Trademarks registrar in Kurdistan who will obtain a copy of same and have it sealed as a duplicate copy of the original.
However, due to the importance of Kurdistan region bordered by Iran to the East, Turkey to the North and Syria to the West, we always advise our clients to file a separate application in Erbil. Once the mark is registered, it will be protected against any similar/identical application filed and the trademark office will notify the customs in North Iraq to monitor any infringement. In compliance with the recent regulations of the Trademarks Registry in Kurdistan an official circular from the Trademarks Registrar addressed to the General Customs Directorate with the Ministry of Finance and Commerce combined with copies of the registration certificate of the above notifying them of the registration of the mark so as to take the necessary action towards the non-allowance of the entry of any goods in the class in respect of which the mark is registered bearing the same mark or any confusingly similar one in the name of any different party from the registrant company.
Opposition Proceedings, Requirements and Charges:
The opposition action MUST be filed with the Trademarks Office in Erbil, Kurdistan Region within ninety days from the date of publication.
A Power of Attorney duly legalized up to the Iraqi Consulate.
It is worth mentioning that the original legalized POA shall be filed along with the opposition statement, otherwise the Registrar would not accept to receive the opposition statements. However, we have a special arrangement to lodge the opposition without the legalized power of attorney which can be submitted within two weeks from filing the opposition.
A list of the worldwide registrations of the Client’s trademark and copies of the corresponding registration certificates of the trademark in Iraq (if any) and Arab and Foreign countries.
Documents that prove the use of the Client’s trademark in Iraq or Kurdistan Region.
Any documents that proves the international fame of the Client’s trademark, such as Administrative and/or Judicial decision, stating that their trademark is considered well-known trademark.
Any documents that proves any business relations between the applicant and the opponent such as a franchise agreement or agency/distributorship agreement.
Chances of Success:
Kindly note that, according to the Trademarks Law applied in Kurdistan Region, the opposition action can be filed either by the owner of prior registered trademark in respect of identical or similar Class of goods and/or services OR the owner of a well- known trademark. However, we would like to point out the main elements that is taken by the Trademarks Office when issuing its decisions in respect of the opposition actions are whether the opponent hold a prior valid registration for the trademark in question in respect of identical or similar goods and/or services in Iraq or Kurdistan Region.
Further, please note that the Classes of goods mentioned in the trademarks applications are subdivided. The wording of the goods to be included in the application should be in conformity with the local classification, which is almost identical to the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement and the wording of the goods will define the parameters of the scope of protection of a registration