Unlike other forms of intellectual property, trademarks can be everlasting if they are renewed on time and the trademark owner is actively using the mark relation to the goods/services registered. Pursuant to the article 90 of Egyptian IP Law No. 82/2002 which stipulates “The period of protection conferred by the registration of the mark is 10 years, renewable for an identical period or periods upon request of its owner and every time within the last year of the protection period, against payment of the fees due for the initial registration application ………”.
However, a trademark may be venerable to a non-use cancellation action by any interested third party if the trademark has not been seriously used for a period of five consecutive years by the trademark owner or any third parties licensed by the owner. Authorized third party use must be based on a license or sub-license agreement registered before the Egyptian trademark office. Unrecorded licensed agreements cannot not be claimed against any party in accordance with article 65 of Egyptian IP Law No. 82/2002 which stipulates “The person who has registered a trademark and who has made use of it for a period of five years as of the date of its registration, shall be deemed the owner of such a trademark, unless precedence of use by a third party is proven. A prior user of the mark may, within the said period of five years, challenge the validity of its registration. The registration of a mark may, however, be challenged at any time, where the registration is made in bad faith.”
A number of remedies can be made to protect a registered trademark against cancellation actions by any third party whereby the applicant is required to prove that the mark has been in use for a period of five consecutive years from the registration date.
Use of the trademark should include all the trademark elements registered and not a part of these elements separately. The use such use should preserve or create market share.
The following activities may qualify as use of the trademark:
(a) Use by an authorized third party by way of a recorded license agreement;
(b) marketing and advertising campaigns within a local publication for the goods/services;
(c) registration by the trademark proprietor of a local domain name using an identical trademark, with the domain showing the same field of the registered products or services;
Conversely, it is important to highlight that the following activities do not constitute as legitimate use of the trademark:
(a) Use of the trademark for goods or services different than those protected by the registration; and
(b) unrecorded licensed use by a third party; and
(c) internal business use of a mark that is not introduced to the general public, private events, or private use.
Trademarks acquire notoriety through simultaneous registration and use. Continued use of the trademark allows the proprietor to preserve their trademark rights indefinitely by way of timely renewals.
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