Due to unrest in Yemen, trade mark registration should be sought in both the Sana’a and Aden jurisdiction in order to obtain full legal protection of trade marks, although there is no institutional or legal division in term of laws and regulations.

Aden trade mark protection covers the Southern part of Yemen which is represented by the following cities: Aden, Lahj, Abyan, Shabwah, Hdhramowt, Mahrah, Half of Mareb city, Half of Taiz city.

Accordingly, the best way to have a legal trade mark protection for the whole country is to file separate trade mark applications in both Aden and Sana'a, and at the same time, renewing old trade marks already registered in Sana’a separately in both jurisdictions when they are due for renewal. 

For renewal of Sana’a trade mark registrations in Aden, the requirements differ since it is a matter of constituting a file for the trade mark and renewing it as if it exists in Aden. For those trade marks registered in Sana'a prior to February 2018, it may be possible to submit an application to update the trade mark particulars with the Trademark Office in Aden.

 

Trade mark squatting

Kindly note that there is a limited possibility of trade mark squatting under this jurisdiction for registered international trade marks considering that the registration process includes a trade mark clearance search for each class of goods/services at the Trademark Office which is mandatory and submitted simultaneously with the trade mark application which takes 1 – 2 working days to obtain an official search report, which will be treated as an official formal, absolute and relative grounds examination of the trade mark and subsequently expediting the procedure and based thereon the trade mark will proceed towards subsequent stages. In addition to searching the records of the national trade marks for closely similar or identical trade marks, the trade mark searching officer refers to WIPO International Trademark database in order to be ensured that the trade mark subject of the search may not have been filed/registered as an international mark although Aden is not a member of Madrid Protocol/Agreement in order not allow its registration in Aden by a third party in bad faith.  Depending on the official search report, the trade mark can be progressed to registration or a negative report can be challenged at the Appeals Committee or General Directorate of Intellectual Property.

Despite the above procedures of trade mark registrations, we have come across a considerable number of trade marks being filed by local distributors or marketing agents belonging to their principals but this mostly effects small and medium scale enterprise brands and not the major ones.

 

Background

The legitimate government in Aden was formerly in charge of the Trademark Office in Sana’a; however, when the national salvation government took control (by coup) over Sana’a region, the official government retreated to Aden region which resulted in the formation of Trademark Office (TMO) in Aden, Yemen which began functioning independently from the current TMO in Sana’a in Feb 2018.

The link to the official notice published in local news sources in Arabic in 2018 (Aden Alwattan Newspaper) is http://alwattan.net/news/7517; the page is translated into English below.

Please note the translation of the circular states the following:

“IMPORTANT NOTICE ISSUED BY MINISTRY OF INDUSTRY & TRADE IN ADEN

The Ministry of Industry and Trade in the interim capital of Aden issued an important declaration, which states the following: 

Based on the decisions made in the cabinet offices in the interim capital Aden and on the conduct of work and serve the public good. 

According to the directives of the ministry leadership, the Ministry of Industry and Trade in the interim capital Aden declares to all commercial houses, companies, institutions, businessmen and all commercial activities whose interests are connected with the ministry should visit its office in the Tawahi Province- in front of the tour of Sheikh Ishaq where the specialized departments that operate and provide their services as follows: 

  • Facilitating procedures for all public and private commercial sectors. 
  • Renewal of commercial records of all legal types. 
  • Issuing ministerial decisions on the granting of incorporation licenses to companies.
  • Receipt of applications for the deposit of trademarks and all applications related to the Law of Trademarks and Geographical Indications No. (23) for the year 2010. 
  • Registration and accreditation of commercial agencies for individuals or local and foreign companies. 
  • Granting certificates of registration of trade names. 
  • All services activities and commercial activity. 

The ministry calls on all commercial sectors to turn to the Ministry Diwan in the interim capital of Aden, with copies of all the documents in their possession about updating their database, which would preserve their rights according to the law. 

The ministry has setup a number of communication channels through it: ((009672241082)). 

The communication also warned people not to deal with the Office of the Ministry of Sana'a, which is under the control of the coup, pointing out the lack of legal basis of any actions resulting therefrom.

Conclusion

Sana’a and Aden have adopted the same trade mark law, and there is no institutional or legal division in terms of laws and regulations but currently registration should be sought in both jurisdictions in order to obtain a full legal protection for trade marks. 

FICPI’s view and involvement 

FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.

Next steps 

 

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