Questions about Tunisian trademarks

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.

A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorise another to use it in return for payment. The period of protection varies, but a trade mark can be renewed indefinitely on payment of corresponding fees. Trade mark protection is enforced by the courts, which in most systems have the authority to block trade mark infringement.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties. The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned.

In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. A person who has a link (through nationality, domicile, or establishment) with a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country, obtain an international registration having effect in some or all of the other countries of the Madrid Union.

In Tunisia, trademark protection can be obtained through registration, by filing an application for registration with the National Trademark Office (INNORPI) and paying the required fees. At the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.

Through a registered trademark, you can protect your mark or “brand” by restricting other people from using its name or logo. Once acquired, a trademark can last indefinitely as long as you renew it every 10 years. Because a registered trademark is a form of IP, you can license or assign it to others.

As for the benefits of registering a trademark, it is not compulsory to register a trademark in Tunisia. For not registered mark in Tunisia, you may rely on your rights under the common-law action of “passing off” to protect your mark against imitation or infringement.

In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.

However, if you register your trademark in Tunisia, you are effectively gaining a statutory monopoly of your mark. A trademark can add value to your business because it can be used to protect your market share, you can license it to third parties such as a franchisee, or you can sell it outright for a specified value. You can also use a trademark to help you to raise equity for the development of your business.

Finally, most importantly, the registration of your trade mark allows you to prevent the use of a confusingly similar trade mark for the same or similar goods or services since you, as the owner, have exclusive rights to use it in the territory where it’s registered.

• There are many benefits to registering your trade mark:
• A registered trade mark is easier to enforce against infringers in the civil courts.
• Trading Standards can take action against counterfeiters in the criminal courts.
• Other people can easily find out that the mark is registered and avoid using it.
• A registered trade mark strengthens a corresponding Internet domain name.
• You have rights without waiting until the mark has acquired the sort of goodwill that’s needed to support a “passing off” claim.
• If you don’t register your trade mark, somebody else might!

A registered trademark has been examined, has been confirmed to be distinctive, and is subject to the protections under the Tunisian Trademarks law, including nationwide protection. In order to obtain a registered trademark, you have to apply for a registration with the Tunisian Trademark office and continue to renew it as required in Tunisia. In return, your trademark registration is presumed to have validity, with any burden of proof to invalidate the registration resting on the challenger. An unregistered trademark has not been registered, and is governed under Trademarks law. It is valid only in the geographical area where it has been used, and the owner has to prove that it is a mark that has developed sufficient goodwill with consumers for those rights to be enforceable. This typically requires that the trademark has been used for a substantial length of time.

A word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or colour shades used as distinguishing features – the possibilities are almost limitless.

The following can be registered as a trade ark but a mark must be distinctive and capable of distinguishing your goods or services from similar ones of other traders:

• Letters
• Words
• Names
• Signatures
• Labels
• Devices
• Tickets
• Shapes
• Colours
• or any combination of these elements.

Once registered, you are authorised to use trade mark symbols. If you successfully register a trade mark, you are permitted to use the ® symbol next to your mark. Another common symbol associated with trade mark is ™ − this denotes that the mark is being used by the company as their trade mark but it does not mean that the mark is registered or protected under the trade mark law.

In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist.

A collective mark is a sign that is used to distinguish the goods and services offered by an association or group of traders from those being offered by non-members of the association. Once registered, all members of the group can use the collective mark; it is an effective way to indicate that your business is a member of a wider group of traders.

Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects.

Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted “ISO 9000” quality standards are an example of such widely recognised certifications.

Yes, you can register your name as a trademark provided the Tunisian Trademark Office considers it “distinctive.” As to whether a name is distinctive or not depends on a variety of factors. As a rule of thumb, the more common the name is the less likely it will be considered distinctive as there may be many others with the same name. Likewise, the more unusual the name is the greater the distinctiveness and the greater the likelihood that registration will be granted.

In any event, even if you have been refused registration of your name as a mark either for the reason that it was not considered distinctive or because someone else had already registered it you are not prevented from using your name in the course of your business for ordinary business purposes.

First, an application for registration of a trademark must be filed with the National Trademark Office (INNORPI). The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. The application must also contain a list of goods or services to which the sign would apply. The sign must fulfil certain conditions in order to be protected as a trademark or other type of mark. The trademark must be distinctive, so that consumers can distinguish it from other trademarks identifying other products, as well as identify a particular product with it. It must neither mislead nor deceive customers or violate public order or morality.

Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights.

Yes, Tunisia uses the International Classification of Goods and Services, under the Nice Agreement, to classify trade mark registrations (Trade Mark Classification). This classification sets out 34 different classes of goods and 11 classes of services that a trader can register in relation to a mark. For more information visit : Nice Classification

Are there any goods or services for which the mark cannot be registered?

No.

Yes. In Tunisia multiclass application is allowed.

Does the specification of goods in any class limit the protection to the specified goods, or does it give additional protection to all the goods in the class?

The specification of goods gives additional protection to the specified goods.

Marking is not compulsory.

The term of trademark registration is usually ten years (10 years from the filing date). It can be renewed indefinitely on payment of additional fees. Trademark rights are private rights and protection is enforced through court orders.

24 hours during working days.

Can a trademark be registered in the name of more than one applicant ( i.e. joint application) ? If so, what are its requirements?

Yes, no special requirements.

Can an application be filed without its complete documents? If yes, what is the deadline for filing the documents?

Yes. The deadline for filing the missing documents is three months from receiving a written notice from the Trademarks office.

Yes.

If a trademark application was filed incorrectly originally, what documentation would be required to amend the official register to show the correct details?

A registered trademark cannot be amended.

As a general principle, once your trademark has been registered it should be used. If your mark is not put to use, its registration is liable to be cancelled on the application of a third party who can show that it has not been used. In most countries, a mark will not be so cancelled unless it can be established that there has been at least three years of non-use. In this context, it would be advisable to check the legal position in the country or countries for which your mark has been registered.

If, however, the owner of a mark can establish that, despite every intention to use the mark, he was prevented from doing so due to circumstances beyond his control, the mark may not be subject to cancellation.

Is use required before registration or for maintaining the registration in force?

Use is required for maintaining the registration in force within 5 years from registration date. Use is not required before registration.

Is use of the trademark on one item sufficient to maintain the protection for all the goods covered by the registration?

Yes.

• Placing the mark on the goods or their packaging for the purpose of marketing.
• Using the mark in an differing form which does not make it loose its distinctive nature.
• Using the mark with the consent of its owner or by a person qualified to use a collective mark.

In case a trademark is not renewed in due time, and another company register the same trademark, can the original owner oppose the registration or not?

No.

Yes.

You can certainly license the right to use your mark to someone else. It must be kept in mind that since marks establish a connection between the mark and the goods, and are often understood as an indication for a certain quality and reputation. It is, therefore, important that the person to whom you have licensed your rights maintains that same connection and the same quality and reputation. To this extent, you must be closely involved with the proper use of that mark by your licensee.

Is recording a license agreement compulsory? What are the consequences of non-recordal?

The recordal is recommended to claim rights against third parties.

Can recordals such as change of name, address, merger, assignment, license, etc., be made against pending applications?

Yes.

Can an assignment be made with or without the goodwill? What monetary consideration is to be mentioned as the value of the assignment? Is there any tax based on the value mentioned?

Yes, an assignment be made with or without the goodwill. No monetary consideration is to be mentioned, no taxes to be paid.

Usually you’ll want to know whether anyone else is trying to register a trade mark similar to yours. We can help by providing a “watching service” which lets you know about any potentially conflicting applications in time for you to file an opposition.

The cost of filing a trade mark application depends on how many classes of goods and services need to be covered. Once we know more about your business, we can tell you how many classes you should consider covering and provide more information about the costs involved.

A trade mark registered in Tunisia is infringed if a competitor uses a similar trade mark on goods or services similar to those specified in the registration. A trade mark registered as plain words gives protection against the use of those words in any typeface. Remember that a Tunisian registration does not give any rights in foreign countries.

The trade mark registration may be enforced by applying to a Court for an injunction (to prevent further infringement) and for damages. For wilful infringement of a registered trade mark, criminal proceedings are also possible. It can get serious, so talk to us if you have any concerns.

Trade marks can be registered in most countries but the application systems may differ so check with us about current requirements and costs. Two international systems are available: The Community (or EU) trade mark and the Madrid Protocol. If the foreign trade mark application is filed within six months of the TN application, it can claim the original filing date (known as “claiming priority”). It’s possible to carry out advance searches for foreign trade marks but the cost can be high.

A Community trade mark is a single trade mark registration effective throughout all member states of the EU. Its advantages are that the application and renewal are simpler and cheaper than a large number of national applications would be, and that the trade mark only needs to be used in one EU country to avoid being revoked. The main disadvantage is that an objection arising anywhere in the EU can be a barrier to eventual registration.

The Madrid Protocol is a flexible system in which a single international application can be used to obtain registrations in selected member countries. It’s useful for protecting your trade mark in non-EU countries such as the United States and China. The application procedure and the renewal procedure are centralized but the cost depends on the number and on the identities of countries selected. The international application must be based on an earlier application or registration in the ‘home’ country.

If you want to try and protect your trade mark in several different countries then we can work out the best filing strategy to fit your needs.