TRADEMARKS FILING AND PROSECUTION IN TUNISIA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Tunisia may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
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 standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.[1]
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark
| Relevant office | National Institute for Standardization and Industrial Property (INNORPI) |
| Nice classification | Yes (11th edition) |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Five copies of the mark not exceeding 10 cm on each side |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(within 2 months from the publication date) registration renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademarks searches in Tunisia
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 search in Tunisia can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the National Institute for Standardization and Industrial Property (INNORPI). National Institute for Standardization and Industrial Property on request can carry out a trademark prior art search. The form for requesting the trademark prior art search can be downloaded from the official website of the registry.[2]
Trademark word search edition of Tunisia follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Tunisia to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Tunisia. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Tunisia can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in Tunisia
A person may file multi class or single class trademark application in Tunisia.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Tunisia:
Ordinary trademark applications filed in Tunisia are applications without claiming any priority. Ordinary application is filed at the Institut National de la Normalisation et de la Propriété Industrielle (INNORPI). The application form for registration can be downloaded from the official website of the register. Multi class trademark applications can be filed in Tunisia. 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.[3]
Priority trademark applications in Tunisia/Convention trademark application in Tunisia:
A priority trademark application may be filed in Tunisia. A priority trademark application should be filed in Tunisia within 6 months after the date on which the application was made in the convention country.[4]
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, 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 of 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 Tunisia within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Tunisia follows the nice classification of classes. Intellectual property office uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
The list of classes with the description of goods and services is available on the official website of the registry.[5]
Trademark examination in Tunisia
Once the application for registration is submitted the IP authority will examine the application. The examination will be done on the basis of formal and absolute grounds to check that the marks comply with requirement of local rules of deceptiveness and distinctiveness. No examination is conducted on the basis of relative grounds. If the application for the registration does not comply with all the requirements of registration, the IP authority will notify the applicant and will give a grace period of one month from the date of notification to amend the application or to contest the objections of the competent authority.
In case no amendment is made and no observations are submitted, the application for registration shall be deemed to be rejected.
The reason for the rejection will be justified by the competent authority.[6]
Trademark opposition in Tunisia
When the application for the registration meet all the requirement of registration it is accepted and published in official publication of the industrial property authority for the third party observation.
The application for registration may be opposed by:
- The owner of a trademark registered or previously deposited or the beneficiary of the right of priority to the registration of a trademark.
- The owner of a prior well-known mark.
- The beneficiary of an exclusive right of exploitation unless otherwise stipulated in the contract.
The notice of opposition shall be submitted to the legal representatives of the industrial property authority within two months from the date of publication.[7]
Trademark registration in Tunisia
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of application and the registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://www.innorpi.tn/index.php/fr/la-protection-des-marques-de-fabrique-de-commerce-et-de-services
[3] https://www.innorpi.tn/index.php/fr/la-protection-des-marques-de-fabrique-de-commerce-et-de-services
[4] https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[5] https://www.innorpi.tn/index.php/fr/la-protection-des-marques-de-fabrique-de-commerce-et-de-services
[6] https://files.njqandassociates.com/files/d79f7acc-42d0-4342-a8cb-ea949e1e01ef/download?namer=long
[7] https://files.njqandassociates.com/files/d79f7acc-42d0-4342-a8cb-ea949e1e01ef/download?namer=long