By Ibtisam Awadat
AMMAN - Legal Researcher Major Nader Al-Salamat from the Jordan Public Security Department/ Criminal Investigation Department - Intellectual Property Rights Protection Division confirmed in his book entitled “Trademark Licensing Contract in the Jordanian Legislation: A Comparative Study” the high value of trademarks that may exceed the value of assets and liabilities of projects they represent.
Al-Salamat told ag-IP-news Agency that this book, which has been recently published by the Deanship of Academic Research (DAR) at the University of Jordan and falls in 202 pages, discusses aspects of licensing contracts to use the multi-trademark stating that the trademark doesn’t only play the traditional role any longer since it has become a symbol or an inseparable character of products or services that it marks , pointing out that the consumer does not see any longer such products or services except through their trademark or brand name, which is directly linked to quality.
The book addresses the concept of licensing to use trademarks, the nature of such contracts, the phase of preliminary negotiations for such contracts that include conducting a feasibility study to assess the effectiveness of concluding such a contract, and the best modality for its finalization, and what rights and obligations the contract would impose on both parties, what elements that the contract should cover, the quality of liability for its breach, and the law applicable in case of dispute or conflict, plus designating competent courts having jurisdiction over such disputes as well as the right to resorting to arbitration, and finally defining cases which could lead to the termination of the contract, particularly as a result to its unique special nature.
In introducing this book, Prof. Dr. Fayyad Al Qudah- Professor of Commercial Law at the University of Jordan –highly commended the book and described it as being of an added value not only to the legal library in Jordan in particular but also to the Arab legal library in general, specially “that it represents a comparative study which has tackled not only Jordanian laws, but also touched upon the most important Arab laws and international conventions and treaties, and this does not come as a surprise, knowing the author who is renowned for his dedication and diligence in search for knowledge.”
Al Qudah also commended the good choice of the author for the title of his book, given the scarcity of Arabic sources and the important financial and investment return on licensing contracts to use brands or trademarks, and in view of the considerable legal and commercial dimensions this issue has.
In the introduction of his book, Al-Salamat highlights the importance of holding a license to use a trademark this significance arises when the right to use the trademark is combined with another right of the intellectual property rights: such as the license to use an industrial design or model or invention, and may represent contracts for the transfer of technology, and this contract is often characterized by its international nature when it involves foreign elements, and this is usually most often very common.
Al-Salamat added: “the Jordanian legislator did not initially allow in the Trademarks Act No. 33 for the year of 1952 the use of a trademark when licensing as it confined its use as per its definition in the law to its traditional function i.e. to define the source of products and services. Eventually, this resulted in the inadmissibility of the use of a trademark except by its owner.”
To remedy that shortcoming, the Jordanian legislator allowed in the Amended Act No. 34 of 1999, according to Al-Salamat, the use of the trademark independently or away from the business, as he had authorized licensing to use the trademark or brand name; he had also referred procedures related to registration, renewal, and defining specific applicable geographical area, waiver and write-offs and any other matters to regulations to be issued by the Minister.
However, these regulations were not issued until the last amendment to the Trademarks Act No. 15 of 2008 came out, which eliminated the reference to such instructions, while the text authorizing licensing contract to use a trademark along with some of its provisions remained.
According to Al-Salamat, the lack of Arab legal library of specialized studies dealing with licensing contracts using trademarks, along with legislative amendments that occurred at the international, Arab and national levels, and the scarcity of judicial decisions in this area, is what emphasizes the importance of this study, trying to bridge this gap.
Al-Salamat also said: “To identify the position of the Jordanian legislator regarding the conclusion of a license to use trademark according to legislative amendments introduced to the Jordanian Trademarks Act, it was necessary to analyze texts of the international conventions and treaties which Jordan has adhered to or even those to which Jordan is not party of, and to compare the position of the Jordanian legislation with a number of Arab legislations that have various provisions in the course of concluding such a contract, so as to appreciate or value the position of the Jordanian legislator.”
These conventions and treaties have included the Trademark Law Treaty of 1994, the relevant Joint recommendation on Trademark Licenses in 2000, the Singapore Treaty on Trademark Law of 2006, and the Convention on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 1994. As for the laws, they have focused on those States that have enacted or amended recently provisions related to licensing to use trademarks, namely: the Jordanian Trademarks Act, the Egyptian Law on Intellectual Property Rights No. 82 for the year 2002, the Trademark Law of Bahrain No. 11 of 2006, the Omani Law of Industrial Property Rights No. 67/2008, and the Moroccan Law on the Protection of Industrial Property No. 97/17.
The nature of the study required a twofold approach: analytical and descriptive; where the position of both the jurisprudence and the judiciary on this issue will be illustrated, in addition to the position of the Jordanian legislation and comparative legislations.
This comparative study is divided into four basic chapters preceded by an introductory chapter, which explains or presents the concept of a licensing contract to use a trademark, and indicates its status as well as its characteristics and types, and the most important features that distinguish it from other contracts. The first chapter deals with the preliminary stage for issuing a contractual license and its legal effects, and the final conclusion of the contract, explaining how it should be prepared and drafted and how its final form should be.
The second chapter is devoted to discussing the impact of issuing a contractual license to use the trademark .i.e. the rights and obligations imposed on both parties by virtue of the conclusion of the contract. Meanwhile, the third chapter explains the dispute resolution mechanisms under this contract, including elements of contractual liability and the law applicable in case of disputes, and deals also with arbitration as a means of conflict resolution too.
The fourth chapter shows how the contractual license to use the brand name or trademark expires, and in this case it is similar in some instances to other contracts, while it is different in others under special circumstances.
For a copy of the book: University of Jordan - the Deanship of Academic Research (DAR)