Order 80: Amendment to the Trademarks and Descriptions Law

by L. Paul Bremer, Coalition Provisional Authority

COALITION PROVISIONAL AUTHORITY ORDER NUMBER 80

AMENDMENT TO THE TRADEMARKS AND
DESCRIPTIONS LAW NO. 21 OF 1957


Pursuant to my authority as Administrator of the Coalition Provisional Authority (CPA)
and under the laws and usages of war, and consistent with relevant U.N. Security Council
resolutions, including Resolution 1483 and 1511 (2003),

Having worked closely with the Governing Council to ensure that economic change as
necessary to benefit the people of Iraq occurs in a manner acceptable to the people of
Iraq,

Acknowledging the Governing Council’s desire to bring about significant change to the
Iraqi intellectual property system as necessary to improve the economic condition of the
people of Iraq,

Determined to improve the conditions of life, technical skills, and opportunities for all
Iraqis and to fight unemployment with its associated deleterious effect on public security,

Recognizing that companies, lenders and entrepreneurs require a fair, efficient, and
predictable environment for protection of their intellectual property,

Noting that several provisions of the current Iraqi trademark legislation do not meet
current internationally-recognized standards of protection, and that current Iraqi
legislation does not extend protection to geographical indications,

Recognizing the demonstrated interest of the Iraqi Governing Council for Iraq to become
a full member in the international trading system, known as the World Trade
Organization, and the desirability of adopting modern intellectual property standards,

Acting in a manner consistent with the Report of the Secretary General to the Security
Council of July 17, 2003, concerning the need for the development of Iraq and its
transition from a non-transparent centrally planned economy to a free market economy
characterized by sustainable economic growth through the establishment of a dynamic
private sector, and the need to enact institutional and legal reforms to give it effect,

In close consultation with and acting in coordination with the Governing Council, I
hereby promulgate the following:

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Section 1
Amendments to the Trademarks and Descriptions Law No. 21 of 1957


1) The Trademark and Descriptions Law No. 21 of 1957 is hereby renamed the
“Trademark and Geographical Indications Law”.

2) Article 1, definition for “Mark” is amended to read as follows: ““Mark” – Shall
include trademarks, service marks, collective marks and certification marks.

3) Following the definition for “Mark”, a definition for “Trademark” is added to
read as follows: "Trademark" – Any sign, or any combination of signs, capable
of distinguishing the goods of one undertaking from those of other undertakings,
shall be capable of constituting a trademark. Such signs, in particular words
including personal names, letters, numerals, figurative elements and colors as
well as any combination of such signs, shall be eligible for registration as
trademarks. Where signs are not inherently capable of distinguishing the relevant
goods or services, registrability will depend on distinctiveness acquired through
use. Signs need not be visually perceptible in order to be eligible for protection as
trademarks.

4) Following the definition for “Trademark”, a definition for Service Mark is
added to read as follows: Service Mark – Any sign, or any combination of
signs, used by a person to identify and distinguish the services of one person,
including a unique service, from the services of others and to indicate the source
of the services, even if that source is unknown. Titles, character names, and other
distinctive features of radio or television programs may be registered as service
marks notwithstanding that they, or the programs, may advertise the goods of the
sponsor. Marks used in connection with retail services, whether associated with
the selling of the goods of the service provider or those of others, or both, are
eligible for protection as service marks.

5) Following the definition for “Service Mark” a definition for “Certification Mark”
is added to read as follows: Certification Mark - Any sign, or any combination
of signs, used by a person other than its owner to certify regional or other origin,
material, mode of manufacture, quality, accuracy, or other characteristics of such
person's goods or services or that the work or labor on the goods or services was
performed by members of a union or other organization. Certification marks shall
include geographical indications.

6) Following the definition for “Certification Mark” a definition for “Geographical
Indications” is added to read as follows: “Geographical Indications” -Indications
which identify a good as originating in the territory of a country, or a region or

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locality in that territory, where a given quality, reputation or other characteristic

of the good is essentially attributable to its geographical origin.

7) Following the definition for “Geographical Indications” a definition for
Collective Mark is added to read as follows: Collective Mark – A trademark
or service mark used by the members of a cooperative, an association, or other
collective group or organization, and includes marks indicating membership in a
union, an association, or other organization.”

8) Following the definition for “Collective Mark” a definition for “Nice
Classification” is added to read as follows: “Nice Classification means the
classification established by the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of
Marks, signed at Nice on June 15, 1957, as revised and amended.”

9) Article 2.1 is amended to read as follows: “1. There shall be kept at the Ministry
of Industry a Register in the custody of the Registrar, wherein shall be recorded
all the marks, the names and addresses of their owners, and descriptions of their
goods. The public shall be entitled to inspect the Register. The public shall also be
entitled to receive certified copies thereof on payment of the prescribed fees.”

10)Article 2.2 is suspended.

11)Article 3 is amended to read as follows: “A mark shall be deemed to be the
property of the person who registered it. The ownership of the mark may not be
contested if the owner used it for five consecutive years from the date of
completion of registration, except as provided in Article 21.”

12)Article 4 is amended to read as follows: “Any natural person or legal entity shall
have the right to apply for the registration of a trademark with all attendant rights
in accordance with the provisions of this Law.”

13)Article 4bis is added following Article 4 to read as follows:

“1) The owner of a registered trademark shall have the exclusive right to
prevent all third parties not having the owner’s consent from using in
the course of trade identical or similar signs for goods or services which
are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In
case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed.


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2) The owner of a well-known trademark shall have the right to enjoy the
protection conferred by this Law even if such a mark is not registered in
Iraq.


3) The preceding provision shall apply to marks intended for use in
connection with goods or services which are not identical with those of
the well-known mark, where the use of the marks in relation to those
non-identical goods or services would indicate a connection between the
owner of the well-known mark and those products, and that such a use
may be prejudicial to the interests of the owner of the well-known mark.


14)Article 4quater is added following Article 4ter to read as follows: “Collective
and certification marks, including geographical indications, shall be registrable in
the same manner and with the same effect as trademarks by any natural persons or
legal entities, including nations, states, municipalities, and other regional
authorities, exercising legitimate control over the use of the marks sought to be
registered. When registered, they shall be entitled to the protection provided in
this chapter in the case of trademarks.”

15)Article 5.1 is amended to read as follows: 1. Marks devoid of any distinctive
character or which are used in trade to describe the kind, nature, quantity or place
of production of the goods, or marks which in the ordinary language of Iraq
indicate any of such matters. Where signs are not inherently capable of
distinguishing the relevant goods or services, registrability will depend on
distinctiveness acquired through use.

16)Article 5.2 is amended to read as follows: “2. Marks, expressions, or designs
which are contrary to public order or morality.”

17)Article 5.3 is amended to read as follows: “Marks which are identical with, or
similar to armorial bearings, flags or other State emblems of Iraq or other
countries of the Paris Union or international intergovernmental organizations,
official signs or hallmarks, indicating control and warranty adopted by them, and
any imitation from a heraldic point of view.”

18)Article 5.4 is amended to read as follows: “4. Marks which are identical with, or
similar to, the insignia of the Red Cross, Red Crescent, or Geneva Cross.

19)Article 5.5 is amended to read as follows: “5. The name, title, portrait, or armorial
bearing of a person except with that person’s written consent.”

20)Article 5.6 is amended to read as follows: “6. Designations of honorary degrees
to which the applicant is unable to prove a right.”

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21)Article 5.7 is amended to read as follows: “7. Marks which are likely to mislead
or confuse the public, or which contain false descriptions as to the origin of
products, whether goods or services, or their other qualities, as well as the signs
that contain an indication of a fictitious, imitated or forged trade name.”

22)Article 5.8 is amended to read as follows: “8. Marks that are identical or similar
to a well-known mark, or marks that are identical or similar to a previously
registered trademark if registration of that mark will result in confusing the
consumer public as to the goods distinguished by the mark or other similar
goods.”

23)Articles 5.9-5.12 are suspended.

24)Article 6bis is added following Article 6 to read as follows: “Where an
application for registration of a mark is filed:

a) by any person whose country of origin is a member in the Paris Union, the
WTO, or party to any convention or treaty relating to trademarks, trade or
commercial names, or the repression of unfair competition, to which Iraq is a
party, or a country which extends reciprocity to Iraq;

b) in a country described in subsection (a)

the applicant, or rightful successor, may, within six months from the date of
filing the application, file with the Registrar a similar application for the same
mark covering the same products included in the previous application in
accordance with the terms and conditions prescribed by this Law and its
Regulations. In such a case the priority date shall be that of the first
application filed in the foreign country.”

25)Article 7 is amended to read as follows:

“1. A mark shall be permitted to be registered in respect of one or more
articles or in one or more classes. The application shall indicate the goods or
services by their names, grouped according to the classes of the Nice
Classification.

2. Goods or services may not be considered as being similar to each other
solely on the ground that, in any registration or publication, they appear in the
same class of the Nice Classification. Conversely, goods or services may not
be considered as being dissimilar from each other solely on the ground that, in
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any registration or publication, they appear in different classes of the Nice

Classification.

3. In a single application, an applicant may apply to register the same mark in
multiple classes for all of the goods and/or services on or in connection with
the mark that is sought to be protected. The applicant must specifically
identify the goods or services in each class. A single certificate of registration
shall issue for such mark.”
26)Article 8 is amended to read as follows: “Where before any publication is made
two or more persons apply simultaneously for the registration of the same mark or
of identical or similar marks in respect of goods or articles of the same class of
products, the Registrar may suspend all such applications until the renunciation
by one of the disputants is duly attested to or a final decision is made in favor of
one of them.”

27)Article 8bis is added following Article 8 to read as follows:

“1. The Registrar may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable. An applicant may voluntarily
disclaim a component of a mark sought to be registered.

2. No disclaimer shall prejudice or affect the applicant's or registrant's rights
then existing or thereafter arising in the disclaimed matter, or his right of
registration on another application if the disclaimed matter be or shall have
become distinctive of his goods or services."
28)Article 9 is suspended.

29)Articles 12.2 and 12.3 are suspended.

30)Article 15 is amended to read as follows:

“1. The owner of a mark shall, on completion of registration thereof, be given
a certificate containing the particulars published in the aforementioned
bulletin.

2. The registration of a trademark shall in all legal proceedings
constitute prima facie evidence of the validity and ownership of the
trademark.”
31)Article 17 is amended to read as follows: “The ownership of a mark shall be
transferable and the mark shall be pledged or seized together with the business

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dealing in the goods carrying that mark, or with that part of the business
connected with the use of and symbolized by the mark.”


32)Article 18bis is added following Article 18 to read as follows:

“1. The owner of a mark may license one or more natural persons or
legal entities to use the owner’s mark on all or some of the products for
which the mark was registered. Such license to a third party shall not
prevent the owner from using the mark, unless otherwise agreed.

2. Recordal of an assignment or a license for the mark shall not be
required for the assignee or licensee to establish the validity of the
mark or to assert rights in the mark against third parties.”
33)Article 19 is suspended.

34)Article 20 is amended to read as follows:

“1. The duration of protection of a mark shall be for ten years, renewable for
like periods upon application made during the last year in the manner
prescribed in the regulation and payment of the prescribed fee.

2. The owner of the mark may request a renewal within six months after the
date of its expiry against payment of the prescribed fees and a supplemental
fee prescribed by the regulations, failing which the Registrar shall proceed to
cancel the said mark from the register.”
35)Article 21 is amended to read as follows:

“1. Any interested person shall be entitled to apply to the Court within five
years of the registration of any mark for its cancellation, stating the grounds
relied upon.

2. Notwithstanding paragraph 1 of this Article, a petition to cancel a
registration of a mark may be filed at any time if the registered mark:
a) becomes the generic name for the goods or services, or a portion thereof,
for which it is registered;

b) is functional;

c) was obtained fraudulently or contrary to the provisions of registrability;

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d) has gone unused for an uninterrupted period of three years, unless such
nonuse may be proved to be due to uncontrollable cause or lawful excuse;
or

e) is being used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in connection with
which the mark is used.”

36)Article 24.1 is suspended.

37)Article 24.2 is suspended.

38)Article 24.3 is amended to read as follows: “3. Decisions issued by the Registrar
in accordance with paragraph 2 of Article 5, and Article 21 of this Law are
subject to appeal to the Minister within 30 days from the date of notification of
the decision, and those concerned may object to the Minister's decision, subject to
appeal to the court within 30 days from the date of notification of the Minister’s
decision.”

39)Article 25 is suspended.

40)Article 26 is amended to read as follows: “The Registrar may, whenever there is
justification, make any alteration in the Register if this alteration is designed to
correct a mistake or to complete a technical deficiency.”

41)Article 27 is suspended.

42)Article 32 is amended to read as follows: “Trade indications may not be
misleading to the public, whether they are placed on the goods themselves, on the
premises or stores or in their firm names, or on packages, invoices, letters,
advertising materials and the like, which are used in offering the goods to the
public.”

43)Article 33.1 is suspended.

44)Article 35 is amended to read as follows: “Any person who commits any of the
following acts shall be punished by imprisonment for a period of not less than one
year and not more than five years and by a fine of not less than 50,000,000 Dinars
and not more than 100,000,000 Dinars, or by one of those penalties:

1) Whoever counterfeits a trademark, which is lawfully registered or imitates it in
such a manner as to mislead the public, or uses in mala fide a counterfeited or
an imitated trademark;

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2) Whoever unlawfully uses a registered trademark owned by another party;

3) Whoever puts, in mala fide, a registered trademark owned by another party on
that person’s products;

4) Whoever knowingly sells or offers for sale or circulation or possesses for the
purpose of sale, products bearing a counterfeited or an imitated trademark, or a
trademark which is unlawfully affixed; or

5) Whoever intentionally offers rendering services under a forged, imitated or
unlawfully used mark.

In all cases, the court shall order the confiscation of the infringing products, goods,
firm name, wrapping materials, papers, hang tags, stickers, etc., which bear the mark
of the subject matter of the offence, the revenue and the returns of such products as
well as the implements used in the infringement.”

45)Article 36 is suspended.

46)Article 36bis is added following Article 36 to read as follows: “Any person who
commits for the second time one of the offenses mentioned in Articles 35 and 36
of this Law, shall be punished by imprisonment for a period of not less than 5
years and not more than 10 years and by a fine of not less than 100,000,000
Dinars and not more than 200,000,000 Dinars in addition to the closure of the
commercial store or enterprise for a period of not less than fifteen days and not
exceeding six months, together with the publication of the judgment at the
expense of the infringer.”

47)Article 37 is amended to read as follows:

“1. The owner of a mark may, at any time even before the institution of any
civil or criminal action, obtain, upon application supported by evidence
establishing the registration of the mark, an order from the examining
magistrate or from the court which has the jurisdiction to hear and determine
the offence or damages to take provisional measures, more particularly to
seize the instruments and tools used in the commission of the offence as well
as the products, goods, firm name, wrapping materials, papers, hang tags,
stickers, etc., which bear the mark of the subject matter of the offence. This
includes seizure of products, goods, firm name, wrapping materials, papers,
hang tags, stickers, etc., that are imported from abroad.

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2. The judicial authorities shall have the authority to adopt provisional
measures inaudita altera parte where appropriate, in particular where any
delay is likely to cause irreparable harm to the right holder, or where there is a
demonstrable risk of evidence being destroyed.
3. Provisional measures taken on the basis of paragraphs 1 and 2 shall, upon
request by the defendant, be revoked or otherwise cease to have effect, if
proceedings leading to a decision on the merits of the case are not initiated
within 20 working days or 31 calendar days, whichever is the longer.
4. Where the provisional measures are revoked or where they lapse due to any
act or omission by the applicant, or where it is subsequently found that there
has been no infringement or threat of infringement, the judicial authorities
shall have the authority to order the applicant, upon request of the defendant,
to provide the defendant appropriate compensation for any injury caused by
these measures.”
48)Article 38 is amended to read as follows:

“A. The court competent to hear any civil action shall be permitted to order:

i) damages adequate to compensate for the injury the right holder has
suffered as a result of the infringement;

ii) profits of the infringer that are attributable to the infringement and are not
taken into account in computing the amount of the actual damages referred
to in clause (i) of this Article; and

iii) seizure and destruction of the infringing articles, as well as materials
and implements that have been used in the manufacture or creation of such
counterfeit goods. The charitable donation of counterfeit trademark goods
shall not be ordered by the competent court without the authorization of
the right holder. In no case shall the simple removal of the trademark
unlawfully affixed be sufficient to permit the release of goods into the
channels of commerce.”

49)Article 38bis is added following Article 38 to read as follows: “The court shall
provide final judicial decisions in writing and shall state any relevant findings of
fact and the reasoning or the legal basis upon which the decisions are based. The
court shall publish such decisions or, where such publication is not practicable,
otherwise make publicly available.”

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