The path of a trademark application from filing to the certificate
This page follows a single federal application before the Registrar of Trademarks, from the moment it is presented until a certificate is issued or the application lapses. The general framework is on the page about registering a trademark. Objection and imitation have a page of their own. What follows is a reading of the path provisions from the official texts in the Iraqi Legislation Database.
What is reviewed in the file before it is presented?
Before the application is presented, a number of questions are asked of the file itself. Is the sign distinctive on its face, or is the applicant relying on earlier use? Does it collide with the bars in article 5 — public order, official emblems, the red cross or the red crescent, a person's name without consent, a misleading indication of origin, or a mark already entered or already well known? Have the goods or services been identified clearly enough in each class? If a foreign priority is claimed, is the six-month period still open, and does the Iraqi application concern the same mark and the same products?
Inspection of the register — and the public's right to inspect it and to obtain a certified extract — helps to reduce the risk of confusion. It does not mean that the application will be accepted. The Registrar may still impose conditions that did not appear on a first look, and an interested person may still object after the announcement.
If the applicant is a legal person, its legal existence, and the authority of the person who signs, are checked. If the application is presented through an agent, the limits of the power of attorney are read. That representation before the directorate is not a commercial-agency licence.
Presenting the application, and conditions the Registrar may attach
The application is presented to the Registrar in the form, and on the conditions, set out in the regulation issued under the Law. The applicant identifies the goods or services. Where more than one class is sought, they are set out under the international classification to which the Law refers, and a distinct certificate is issued for each mark.
If more than one person presents, at the same time and before announcement, an application for the same mark, or for similar marks, in one class, the applications may be held until an authenticated withdrawal is filed, or until a final decision is reached.
The Registrar may attach restrictions or amendments in order to define the mark, or the manner of its use, so that it is not confused with an earlier mark. On a refusal, or on an acceptance made subject to a condition, the applicant is notified in writing of the reasons. If what was attached is not carried out within thirty days, the application is treated as withdrawn. The Registrar may also require a disclaimer of an element that is not registrable, and the applicant may offer such a disclaimer, within article 8 bis, without prejudice to a later right if that element later becomes distinctive.
Decisions of the Registrar — apart from what article 24, paragraph 3, excepts — may be challenged before the Court of First Instance (محكمة البداءة) within thirty days of notification.
The announcement, and the time allowed to answer an objection
If the mark is accepted in principle, the Registrar must announce it in three successive numbers of the bulletin named in the text. The original wording still refers to a bulletin of a former trade directorate, while the register today is at the Ministry of Industry and Minerals. In practice the announcement appears in the official bulletin of the directorate that keeps the register. The title of the bulletin in force is confirmed at the time of filing. That difference is recorded in the audit notes.
An interested person may lodge a written objection with the Registrar within ninety days, counted from the date of the last announcement. The Registrar serves a copy of the objection on the applicant. The applicant must answer in writing within thirty days; if no answer is filed, the applicant is treated as having withdrawn. Before deciding, the Registrar hears both parties, or one of them if that is requested, and then issues a decision accepting or refusing the registration, and may attach restrictions to an acceptance. If the Registrar considers that the objection is not serious, the Registrar may — by a reasoned decision — continue the procedure despite it.
The effect of an objection, and a claim for imitation, are on opposition and infringement.
The bulletin in which acceptance in principle is announced is not the Official Gazette (الوقائع العراقية). The Gazette publishes legislation. The announcement here is a procedural announcement in the directorate's bulletin, and it is that announcement that opens the time for objection. Confusing the two sources leads to counting the period from the wrong date.
Completing the entry, the certificate and renewal
If the registration is not completed within six months of the application because of the applicant's default, the Registrar may notify the applicant to complete it within the period fixed in the regulation; otherwise the applicant is treated as having withdrawn. When the registration is completed, a certificate is issued containing the particulars that appeared in the bulletin. The registration is evidence of the lawfulness of ownership of the mark, and it takes effect from the date on which the application was presented.
Protection lasts ten years and may be renewed on an application in the final year, or during the six months after expiry against the additional charges the regulations impose; otherwise the mark may be removed. Renewal and removal are announced in the manner the regulation provides. A mark that has been removed is not restored, for the same period, in a name other than that of its owner, until at least one year has passed since the removal.
If the application claims a foreign priority, the six-month period in article 6 bis is counted from the date of the first application in the state concerned, and the document the regulations require is attached.
A change after registration, and a transfer while the path is still open
The owner of a mark already entered may apply to introduce additions or alterations that do not go to the essence of the mark. Acceptance in principle of that request is treated, as to notification and objection, in the same way as an original application. An alteration that does go to the essence is not passed along this route, and it may call for a fresh application, read in the light of the text.
If ownership of the mark passes during the path or after it, a request is presented to enter it in the name of the transferee, with the grounds of the transfer, and the Registrar records it in that name. A transfer of the business may carry the mark with it unless the parties have agreed otherwise, under article 18. A licence to a third party to use the mark is permitted under article 18 bis, and it does not prevent the owner from using the mark unless the parties have agreed otherwise.
If a reply is late, or the path is interrupted
The periods on this path are short and several: thirty days to carry out a condition attached by the Registrar; ninety days to object after the last announcement; thirty days to answer an objection; six months to complete the registration where the applicant is in default; and thirty days to challenge a decision of the Registrar before the court. Missing one of them may mean a deemed withdrawal, or the loss of a route. The period is counted from the text and from the fact of notification or announcement.
| Step | Period | Counted from |
|---|---|---|
| Carrying out a condition attached by the Registrar | thirty days | written notification of the reasons |
| Lodging an objection to the announcement | ninety days | the date of the last announcement |
| Answering an objection | thirty days | service of a copy of the objection |
| Completing the registration after a notice of default | the period fixed in the regulation | the Registrar's notice, within six months of the application |
| Challenging a decision of the Registrar before the Court of First Instance | thirty days | notification of the decision |
| Applying to renew after expiry | six months | the date of expiry |
After the certificate is issued
The certificate does not end the care of the mark. The ten-year term is counted, and a renewal application is prepared in the final year, or in the six months after expiry if that becomes necessary. Interrupted use for three years may open the way to a request for cancellation under article 21, unless an excuse the text accepts is shown. Anyone who wishes to alter the form of the mark in a way that is not essential follows the path in article 13, rather than changing the sign in the market without a record.
The Law Office of Ali Barakat follows the arrangement of the file and the replies within these periods from its seat in Baghdad, al-Yarmouk.
Legal basis and sources
- Trademarks and Trade Descriptions Law No. 21 of 1957, as amended
- Law No. 9 of 2010 amending the Trademarks and Trade Descriptions Law
Frequently asked questions
When does the time for objecting to an application begin?
It is counted from the date of the last announcement in the bulletin, and it lasts ninety days, under article 11. The answer to an objection is due within thirty days; otherwise the applicant is treated as having withdrawn.
Does the registration take effect from the date of the certificate, or from the date of the application?
Article 14 gives the registration retroactive effect from the date on which the application was presented, once the registration has been completed and the certificate has been granted.
What happens if the applicant does not complete the registration within six months?
If the delay is due to the applicant's default, the Registrar may notify the applicant to complete it within the period fixed in the regulation. If that is not done, the applicant is treated as having withdrawn.
Is the announcement published in the Official Gazette?
No. The Official Gazette publishes legislation. The announcement that opens the time for objection is a procedural announcement in the bulletin of the directorate that keeps the register. The two should not be confused when the period is counted.
May the owner change the form of the mark after the certificate has been issued?
Additions or alterations that do not go to the essence may be requested under article 13, and acceptance in principle of that request is treated, as to notification and objection, in the same way as an original application. A change that goes to the essence is not passed along that route.
Does reserving a company name stand in for filing a trademark?
No. Reserving a name, or registering the company with the Companies Registration Department, is a path separate from entering a mark with the Registrar of Trademarks at the Ministry of Industry and Minerals. Each path is read in its own text, and neither stands in for the other.
Related topics and articles
- 01Opposing registration of a mark, and imitation of a markObjecting to a trademark application, asking the court to cancel an entry, and what the Law provides for imitation or unlawful use, with no fine amounts.
- 02Does filing a mark in the Kurdistan Region differ from the federal path?Filing a mark in the Kurdistan Region compared with the federal path, with no regional law number cited without a published official instrument.