Author: Ibrahim Shehata & Obay Ashraf
The Egyptian Court of Cassation has come out with two very decisions on the 28th of December of 2021 pertaining to the protection of trademarks in Egypt. In this regard, we try here at Shehata & Partners to synthesize both decisions and update the legal community on how these two decisions have shed the light on several critical issues in the realm of intellectual property protection laws in Egypt and the MENA region.
The first case pertains to a dispute between Metro Cash and Carry (the challenger and plaintiff) and Ahmad Bahgat International Electronics over the registration and ownership of trademark number 109909 “Metro” registered on 30/1/1999. It must be noted that the challenger had an existing protected and registered international trademark numbered 627390 – B issued on 30/9/1994 and published in the WIPO Gazette of International Marks. In light of these facts, the challenger has based its cassation challenge upon the fact that an error in law was committed by the lower court (i.e., Court of Appeal) by not taking into account the fact that their trademark has already taken precedence over the defendant’s trademark since it was registered internationally (5) years prior to the registration of the infringing trademark in Egypt. We see that the Court of Cassation has accepted this plea and adopted several principles on this front.
The first principle underlying this decision is that the applicable law to this case is the Madrid Agreement, in light of Egypt joining the Madrid Agreement Concerning the International Registration of Marks as per executive decree No. 1581 for the year 1974 which came into effect on 6/3/1975, which makes it enforceable in Egypt. The second principle concerns the fact that once trademarks are registered internationally, their protection indeed extends to Egypt. With that being said, the Court of Cassation has made a very important distinction between the protection of international trademarks prior to Egypt joining the Madrid Protocol as per decree no. 335 for the year 2008 published in the Official Gazette on 13/1/2009, and following to the joining of the Madrid Protocol. In this regard, before joining this Madrid Protocol in 2009, internationally registered trademarks were granted automatic protection in all Madrid Union states without the need for individual national registration. However, after the joining of the Madrid Protocol in 2009, this protocol has in fact outlined the need to specify the nation(s) of which the trademark holder would wish the trademark protection to be extended to. In this respect, it is worthy to mention that the national office still has the right to reject a trademark’s protection extension into its territory pursuant to article (5) of the Madrid Agreement given that such a national office provides all reasons for rejection specified under the Egyptian law as well as inform the International Bureau of said rejection while abiding by the notice period as specified by the Egyptian law and within (1) year following the international registration or the protection extension request. Further, the national office must also in case of invalidating protection extensions give the trademark holder the opportunity, in good time, to defend his right.
Moreover, in case of conflict, the competent administrative authority only needs a copy of the registered trademark’s publication in the WIPO Gazette of International Trademarks to ascertain its legitimacy. More importantly, if there happens to be any dispute or uncertainty regarding a trademark’s holder’s precedence, the Court of Cassation has set the criteria in this decision for determining precedence which should be the date of the international registration of the trademark.
As for the second case, it is a bit different than the aforementioned one seeing as it pertains to a petition by the challenger to deny the registration of a trademark, namely, “High Sleep,” that infringes on its own internationally registered trademark, “Sleep High.” The plaintiff in this case has based its cassation challenge upon the fact that an error in law was committed by the lower court by not taking into account that their trademark (Sleep High) is an internationally registered well-known trademark that the plaintiff has been using since 1998 according to receipts submitted to the lower court which makes it protected by authorities in Egypt and any attempt to register a similar trademark would violate the Paris Convention for the Protection of Industrial Property.
The Court of Cassation has accepted the plaintiff’s plea and outlined numerous principles regarding well-known international trademarks in Egypt. In this respect, the Court has stated that trademarks which are well-known both worldwide and in Egypt are legally protected even if said trademark is not registered in Egypt as per article (68) of the Intellectual Property Law. As a result, the owner of the said trademark should enjoy all the legal rights and protections attributed to the trademark and can file a lawsuit against and claim damages against anyone who infringes upon their trademark pursuant to article (66) of the Egyptian Commercial Code. Furthermore, the Court of Cassation has stated that it is a core obligation that lies with the Commercial Registry Authority to deny the registration of any trademark that is similar to a well-known trademark if the trademark in question is used by consumers to differentiate between like-products.
In a nutshell, both these judgments send a clear message that internationally registered and well-known trademarks in Egypt are safe. This decision further reinforces Egypt’s commitment to international agreements and reassures international actors that Egyptian Courts will uphold Egypt’s international obligations to protect intellectual property rights.
