TRADEMARKS FILING AND PROSECUTION IN YEMEN
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Yemen are designated by the following symbols:
- ™(for an unregistered trademarks, that is, a mark used to promote or brand goods)
- ®(for a registered trademark)
The owner of the registered trademark may commence legal proceedings against trademark infringement of its mark.[1]
| Relevant office | Ministry of Industry and Trade, General Department for Intellectual Property Protection |
| Nice classification | Yes (8th edition) |
| Paris convention | Yes |
| Madrid system | No |
| Multi class system | No |
| Documents required for filing a trade mark application | Power of Attorney legalized by Yemeni Consulate Certified copy of the certificate of incorporation or an extract from the commercial register with its Arabic or English translation. |
| Prosecution process | Filing publication of the mark in trademark journal opposition (within 90 days from the date of publication) registration renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Yemen
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark searches in Yemen can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the Ministry of Industry and Trade, General Department for Intellectual Property Protection.
Trademark word search edition of Yemen follows the nice classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in Yemen can be conducted for the desired class and associated class.
Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Yemen.
Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.
A device mark can be searched with the help of international classification of figurative elements of marks which prescribes Vienna codes for different figures.
Filing of trademark applications in Yemen
A person may file single class trademark application in Yemen.
Trademark applications in Yemen can be filed in two categories:
- Ordinary applications
- Convention application (claiming priority from a convention country)
Ordinary trademark applications in Yemen:
Ordinary trademark applications filed in Yemen are applications which are filed without claiming any priority. Ordinary applications must be filed with the Registrar of Trademarks at the Ministry of Industry and Trade located in Sanaa. Only tradesmen can apply for the trademarks. Multi class trademark applications cannot be filed in Yemen. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.[2]
Priority/convention trademark applications in Yemen:
A priority trademark application should be filed in Yemen within 6 months after the date on which the application was made in the convention country.[3]
Paris convention
The Paris Convention for the protection of Industrial Property, signed in Paris, France, on March 20, 1983, established a union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim on the Paris convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Yemen within 6 months of after the date on which the application was made in the convention countries.
Trademark classes for goods and services in Yemen
Yemen follows the international classification of goods and services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services from classes 1 to 45.
There is an exception in classes in Yemen, class 33 and alcoholic goods in class 32, goods which are made of pork in class 29 cannot be registered.[4]
Trademark examination in Yemen
Once the application for the registration is submitted in writing with the registrar, the registrar will make decision in respect of the filed trademark in terms of acceptance, refusal or conditional acceptance on the amendment of the trademark in order to avoid the confusion with the marks already enjoying protection under the act.
If the registrar decides to refuse the application or decides to accept the application on the condition amending the application, the registrar will state the reason for doing so and the competent authority shall furnish such decision to the applicant.
If the applicant fails to provide necessary amendments to the application or fails to challenge such decision of the registrar within thirty days from the date of receipt of such notification, the application for the registration will be deemed to be abandoned by the applicant.
The applicant is entitled to challenge the decision of the registrar within thirty days from the date of receipt of notification of the decision. The decision can be challenged to the committee set up by the minister for this purpose. The decision of the challenging committee can be appealed by the applicant to the court within thirty days from the date of receipt of the notification of the decision from challenging committee. [5]
Trademark opposition in Yemen
On the successful completion of the examination stage, the application is accepted and published in the official gazette for the third party observations. Any interested party may file a notice of opposition along with the grounds of opposition within 90 days from the date of publication.
The concerned department will furnish the copy of the opposition to the applicant, the applicant must file a written reply against the opposition within thirty days from the date of receipt of notification of opposition.
The registrar will then issue, in respect of the opposition, a decision whether to accept or deny the opposition.
If any party aggrieved by the decision of the registrar may appeal the decision to the court within thirty days from the date of notification of the decision. An appeal against the decision of denying the opposition submitted against a trademark application will not suspend the registration process unless the court rules otherwise.[6]
Trademark registration in Yemen
If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. The mark is then registered for a period of 10 years from the date of filing of the application and registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://www.country-index.com/country_surveys.aspx?ID=246
[3] https://wipolex.wipo.int/en/treaties/ShowResults?search_what=C&treaty_id=2
[4] https://www.country-index.com/country_surveys.aspx?ID=246
[5] https://www.agip.com/Agip_Country_Service.aspx?country_key=70&service_key=T&SubService_Order=1
[6] https://www.agip.com/Agip_Country_Service.aspx?country_key=70&service_key=T&SubService_Order=1