Circular No. 353; Tunisia - Trade Mark Law No. 36 of 17 April 2001
This new Tunisian trade mark law came into force on 17 April 2001. It replaces the Tunisian Trade Marks & Trade Names Law dated 4 June 1889
The new law introduces several significant changes and the most important are detailed below:
Definition of a Trade Mark
The definition of a trade mark has been broadened to include words, designs, holograms, shapes of the product, colours, and phonic signs such as musical tunes and sentences.
Examination and Opposition Procedures
Previously Tunisia followed a simple deposit system. In terms of the new law, applications will be examined as to form and registrability and will then be advertised in the official bulletin. There is then a two (2) month term within which the application may be opposed by:
- The owner of a prior registered trade mark
- The owner of a previous well-known trade mark
- The holder of an exclusive license (provided the contract does not stipulate otherwise).
Duration and Renewal
The duration of a registration is now ten (10) years from the filing date. Previously the term was fifteen (15) years from the filing date.
Registrations will now be renewed for a period of ten (10) years from the date of expiry of the registration. Previously the term was fifteen (15) years from the date of application for renewal.
Late Renewal Abolished
Registrations may be renewed at any time in the last six (6) months of the term of the registration. There are no provisions for late renewal or restoration of a registration. If a renewal fee is not paid by the due date then the only option is for the applicant to file a fresh application. Previously there were provisions for late renewal with six (6) months of the due date.
No Amendment of a Trade Mark
It is not possible to amend a trade mark or expand a specification of goods or services. This can only be achieved by filing a new application.
A registration becomes vulnerable to attack if there has been no bona fide use of the mark for a period of five years from the filing date or for any other consecutive period of five (5) years. Subsequent use of the trade mark (before an attack by an interested party) should be sufficient to ensure the continued validity of the registration. The initial term for "old law" registrations is five years from the date of the new law (17 April 2001)
Well Known Marks
Well known or famous mark as provided by Article 6 bis of the Paris Convention are acknowledged by the new law.
Cancellation proceedings may be filed at the competent court on the grounds that the mark is not registrable (i.e. it does not conform to articles 2, 3 or 4 of the law) or because the mark conflicts with a prior right.
Assignments and Other Changes in Ownership
Assignments and other changes in ownership must be recorded if they are to have any legal effect.
We hope these brief comments are of some assistance but if you require any further information regarding the position in Tunisia, or elsewhere, then please contact Spoor & Fisher Jersey.
Spoor & Fisher