Bashar H. Malkawi, Well Known Marks in Jordan

Well-known marks in Jordan: protection and
enforcement

Bashar H Malkawi

1. Introduction well-known marks benefited from article 8.10 thereof.
Article 8.10 prohibited the registration of marks that might
The proper protection of well-known trademarks is a confuse the public or cause unfair competition in trade.
significant issue in international trade relations, as a trade- This provision proved useful for owners of well-known
mark is often a company’s most valuable asset. The brand marks because registration of a mark similar or identical to
name Nike is estimated to be worth $7 billion and is their marks might have caused consumer confusion and
considered a well-known mark.1 International trademark constituted unfair competition. Although this provision
doctrine has developed to protect these marks in the global afforded some relief to proprietors of well-known marks,
marketplace. the lack of a black letter provision for protecting well-
known marks was evident.
Protection of intellectual property is an integral part
of Jordan’s economic reform policy. With the develop- Generally, well-known trademarks were given pro-
ment of Jordan’s economy, culminating in its entry into tection through ad hoc or informal determinations. The
the World Trade Organization (WTO), and the pressure Trademarks Registration Office, under the Ministry of
put to bear from multinational corporations and the Industry and Trade, granted well-known status determina-
governments of developed countries, the Jordanian tion on an ad hoc basis through oppositions and cancella-
Government has become aware that protection of well- tions. Furthermore, a court in a particular case could grant
known marks pursuant to the standards of the Agreement well-known status for trademarks on an ad hoc basis.
on Trade-Related Aspects of Intellectual Property Rights
of the WTO (TRIPS) must be an integral part of Jordan’s The following case is an example of an ad hoc well-
trademarks law. It was not until 1999, however, that the known status determination granted by the Trademarks
protection of well-known marks was integrated into Registration Office. Farid Khalaf Company, a Jordanian
Jordan’s Trademarks Law. company, filed to register the mark ‘MILLER’ in Jordan
for beers. Miller Brewing Company, owner of the famous
The central concern of this article is to examine the mark MILLER, filed an opposition and contended that it
rise of well-known marks in the Jordanian legal system was the owner of the famous MILLER trademark that is
from initial judicial recognition of marks to the amend- registered and used in several countries worldwide. Miller
ment of the Jordanian trademarks law. The article is Brewing Company further contended that the fact that its
divided into three parts: regulation of well-known marks MILLER trademark was not registered in Jordan should
in Jordan prior to its WTO accession; the current protec- not adversely affect the opposition. The Jordanian
tion granted to well-known marks as of the recent amend- Trademarks Registrar ruled in favor of Miller Brewing
ments to the Trademarks Law; and Jordan’s enforcement Company and rejected Khalaf’s Company application.3
efforts to protect these marks. The Registrar reasoned that Khalaf’s Company registra-
tion would cause consumer deception and constitute unfair
2. Protection of well-known competition and false indication of origin of the goods
trademarks: a historical look bearing the trademark. It appears that in MILLER case
deception of the consuming public was a controlling
Prior to Jordan becoming a WTO member, protection of factor.
well-known trademarks was vague and unsystematic. Due
to the lack of explicit provisions preventing the registra- In another example, Hani Al-Qudsi & Partners, a
tion of well-known marks, many local Jordanian compa- Jordanian company, filed a trademark application to
nies filed applications to register these marks under their register the mark ‘7ELEVEN.’ The Southland
own names. The simplistic approach to register trade- Corporation, a US corporation, filed an opposition claim-
marks in Jordan also contributed to the registration of ing that the Jordanian applicant was not entitled to such
well-known marks.2 Moreover, Jordan’s trademarks registration since it uses and owns the registration of the
system was first-to-file system whereby trademark rights mark ‘7ELEVEN’ in various countries worldwide.4 The
were granted to the first person to register the mark in Southland Corporation prevailed in its opposition not so
Jordan. This approach allowed third parties to acquire much on merits but rather on points of procedures. The
rights to internationally well-known marks by registering Jordanian company did not submit its response to the
them in Jordan as their own. opposition on time; thus the Registrar dismissed its appli-
cation.
While no clear reference was made to well-known
marks in the Trademarks Law of 1952, proprietors of In other cases, foreign owners of well-known trade-
marks had to litigate in Jordan because of the trademark

118 Communications Law, Vol. 12, No. 4, 2007

registrations by Jordanian persons. For example, Dar Al factor in cases involving well-known marks.14 Courts have
Dawa Development and Investment Co, a Jordanian phar- ignored other elements and their respective weight. Thus,
maceutical company, attempted to register the mark a mark would not be well-known if it was still new and
‘Tagadar’ so it could be used to distinguish certain medi- consumers did not yet associate it with a certain producer.
cations. SmithKline and French, a British-based pharma-
ceutical company, registered several marks using the name In sum, well-known trademarks in Jordan had a rep-
‘Taga’ alone or by attaching another syllable such as utation of being under protected. This impression has
Tagamay or Tagadiane. SmithKline and French objected largely been caused by the decisions of the Registrar and
to the registration. After investigating the issue, the appli- judicial cases. These decisions and cases have a foreign
cation of the Jordanian pharmaceutical company was corporation as the primary victim and a Jordanian com-
rejected. On appeal, the High Court of Justice confirmed pany. Additionally, jurisprudence in Jordan seems to
the decision of the Registrar by concluding that the approve a local standard whereby a well-known mark
Jordanian pharmaceutical company intended to free ride would be protected if it is used and is well-known in
on the goodwill and fame of the British company by taking Jordan.
the term ‘Taga’ and adding ‘dar’ so that it became
‘Tagadar.’5 The High Court of Justice stated that 3. The current treatment of well-
SmithKline and French was a famous entity. In 1982, the known trademarks in Jordan
total sales of SmithKline and French worldwide were $825
million and its total sales in Jordan were £53,000. It is important to consider the international agreements
that justified passage of the amendments to the
In other cases, foreign owners of well-known marks Trademarks Law of 1999 and how these agreements have
were unable to prevent registration of similar marks by been incorporated in the Jordanian law. There are two
Jordanians. Jordan refused to acknowledge the dilution basic legal documents that regulate well-known trade-
doctrine, despite the fact that countries like the US and EU marks internationally: the Paris Convention for the
already applied this doctrine.6 There could be no infringe- Protection of Industrial Property (Paris Convention) and
ment where the marks did not cover goods of the same TRIPS.15 These agreements aim to create a minimum level
description. For example, Jordanian Trico & Yarn Factory of trademark protection. Article 6bis of the Paris
Co filed a trademark application for the ‘AL TIMSAH’ Convention is considered the cradle for protection of well-
mark (which means crocodile in Arabic) similar to that known trademarks. Countries of the Paris Convention
filed by the French company La Chemise Lacoste. The undertake to refuse the registration, and to prohibit the use,
Jordanian Trademarks Registrar rejected Lacoste’s oppo- of a trademark which constitutes a reproduction of a well-
sition for the registration of ‘AL TIMSAH’ mark on the known mark.16 Article 6bis also does not require that a
basis that the two marks, AL TIMSAH and LACOSTE, well-known mark be used in a specific country.
were in different classes and there was no likelihood of
confusion.7 In another case, Sobhi Jabri & Sons Co filed an The TRIPS Agreement was formulated in 1993 as a
application to register TOTO which was intended to cover result of the Uruguay Round of multilateral trade negotia-
goods (food) in class 30. Time Warner Entertainment tions under the auspices of the General Agreement on
Company filed an opposition against the registration of the Tariffs and Trade (GATT).17 TRIPS provides stronger pro-
trademark TOTO, a depiction of the famous cartoon char- tection than other international agreements such as the
acter Tweety, in Jordan. In its opposition, Time Warner Paris Convention. TRIPS introduced two significant inno-
contended that it owned the rights over its famous vations regarding well-known marks. First, it granted pro-
‘Tweety’ character and its opposition should be accepted.8 tection for well-known marks covering dissimilar goods
However, the Trademarks Registrar rejected the opposi- under certain circumstances. Second, it made article 6bis
tion because no convincing evidence was submitted to of the Paris Convention applicable to services.18 Article 16
prove that Time Warner was using the Tweety character of TRIPS stated that a court must consider reputation in
with respect to goods (food) in class 30.9 the relevant sector of the public when evaluating whether
a mark is well-known.19 An owner may establish reputa-
In the pre-WTO period, the standard applied by tion among a substantial segment of the public, rather than
Jordanian courts to determine the status of foreign brands the general public. The TRIPS Agreement emphasizes
or marks required usage of the mark in Jordan.10 In addi- enforcement both internally and at the borders, taking into
tion, a mark could not be considered as well-known unless account the widespread nature of infringement of intellec-
it is widely recognized in Jordan.11 For instance, if the tual property rights.20 TRIPS further provided that
trademark had not been used in ads and there were no out- enforcement procedures should be meaningful.21 The
lets that could sell goods bearing the trademark, the trade- enforcement procedures must be fair and equitable, and
mark may not qualify as well-known. The standard not unnecessarily complicated or costly. They should not
followed by Jordanian courts was clearly in conflict with entail unreasonable time limits or unwarranted delays. In
the World Intellectual Property Organization (WIPO) so doing, the enforcement mechanisms in TRIPS may be
Joint Resolution Concerning Provisions on the Protection more effective than those found in the Paris Convention.
of Well-known Marks.12 The Joint Resolution states that a
member state shall not require, as a condition for deter- Jordan joined TRIPS in 2000. The joining of TRIPS
mining whether a mark is well-known, that the mark has marked an important beginning for Jordan’s protection of
been used in that member state.13 well-known marks. Compliance with the TRIPS
Agreement and the un-listing from the US watch list of
Since the 1980s, Jordanian courts have emphasized Special 301 helped Jordan accede to the WTO.22 In 1999,
the deception of the consuming public as the controlling

Communications Law, Vol. 12, No. 4, 2007 119

Jordan enacted an amendment the Trademarks Law to terms interchangeably and with no distinction. Case law in
comply with the TRIPS Agreement. Jordan has used terms ranging from the words ‘ famous’ to
‘international prominence’, ‘highly reputed’ , ‘widely
(i) Well-known marks under the current known’ and ‘well-known’, among other definitions. To
Trademarks Law make sense of these definitions is virtually impossible,
since judges are apt to make up a new term as soon as a
Well-known marks are expressly protected in Jordanian new decision is rendered on the subject.
Trademarks Law of 1999. The amended Trademarks Law
sets out special provisions to protect well-known marks. A The Trademarks Law of 1999 entitles the proprietor
key issue in the well-known trademarks area is how to to prevent all third parties from the registration of a trade-
define the term ‘well-known’ and what criteria to use in mark which constitutes a reproduction or translation,
doing so. The amended Trademarks Law of 1999 defines liable to create confusion, of a well-known mark on iden-
well-known trademarks as marks that are widely known to tical or similar goods.27 Courts have interpreted the term
the relevant public in Jordan and enjoy a high international ‘reproduction’ to mean exact copying of a well-known
reputation.23 In contrast with article 16(2) of TRIPS, the mark in terms of identical features, appearance, form, type
amendment to Trademarks Law of 1999 did not provide of goods, and consumers.28 Infringement could also occur
that a court could determine whether a mark is well-known through use of transliteration of well-known marks.29 It is
by considering the extent of its reputation as a result of important for a mark owner to look at the Arabic transla-
marketing efforts. tion of its mark in guarding against potential infringers.

While the Trademarks Law of 1999 defined well- In the case of using an identical sign for identical
known marks, this definition is fundamentally vague. The goods, a likelihood of confusion is presumed. The Trade-
term ‘relevant public’ used in the Trademarks Law marks Law of 1999 does not provide a period of time
remains unclear as to whether it refers to an urban popula- within which the proprietor can request the cancellation or
tion in a specific income class or a wider audience such as the prohibition of the use of such a mark that infringes
those persons involved in channels of distribution of the upon his well-known mark. Additionally, the Trademarks
type of goods to which the mark applies. Law imposes limitations on the types of well-known
marks that are protected – only well-known trademarks as
The definition of well-known marks used in the opposed to service marks. Therefore, McDonald’s restau-
Jordanian Trademarks Law should be complemented by rants would not be able to protest copying of the world
taking into consideration other, more concrete, economic famous mark in relation to other types of commercial
factors such as production and sales volume of the goods, ventures, for instance, insurance services. The Jordanian
sales area and time, market share, duration for the use of Trademarks Law should go a step further than the existing
the trademark, advertisements, customer surveys, and language by extending equal protection to well-known
product quality. The determination of the well-known service marks and trademarks.
status is more of a totality of factors. For example, in some
cases, all of the factors may be relevant; while in others, Article 26 of the Trademarks Law of 1999 prohibits
only some may be relevant. The factors listed above the use of a well-known, but unregistered, mark on non-
should be integrated in the Jordanian Trademarks Law, as similar goods provided that the use of that trademark in
the case in other countries.24 Until the Trademarks Law of relation to those goods would indicate a connection
1999 is further amended to provide clarification of the between those goods and the owner of the trademark, and
factors used by examiners to verify that the mark is well- provided that the interests of the owner of the well-known
known, the High Court of Justice could issue guidelines on trademark are damaged by such use.30 This article is
the admissible evidence of the well-known status of a intended to provide an exception to the principle of spe-
mark.25 The Trademarks Registration Office and lower- cialty, which stipulates that trademarks are only protected
level courts then could follow these guidelines in making in relation to the same or similar goods that the mark has
their decisions or determinations. been registered for. In the case of using an identical sign
for non-similar goods, a likelihood of confusion is not
Well-known marks are those known to the relevant presumed. Substantiating a likelihood of confusion adds a
public because they are associated with particular goods or hurdle that owners of well-known marks must overcome.
services. What then is the difference between a well- It is also interesting to note that article 26 of the
known mark and a famous one? The difference between Trademarks Law suggests that the economic damage to
these two types of marks is only one of degree. A famous the owner of a well-known mark by a junior user is a pre-
trademark is that which has been able to achieve a requisite to relief.
secondary function distinct from its first and natural func-
tion (ie, that of distinguishing the products which it distin- The Trademarks Law of 1999 infused several reme-
guishes by means of their origin). This second function dies available against trademark infringers. The
involves the exercise of a power of attraction, resulting Trademarks Law strengthened enforcement of trademarks
from the famous status of the mark itself, totally indepen- by raising the fine for violations to the equivalent of $4235
dent of the products or their origin.26 The amended instead of the $141 fine applied in the past.31 It also
Trademarks Law of 1999 appears to assimilate between imposed a one-year prison sentence. However, remedies
well-known and famous marks. Furthermore, Jordanian available to the owner of an unregistered well-known
courts have not sufficiently distinguished between well- mark are limited to injunctions.32 The owner of a well-
known and famous marks. In fact, courts have used the known mark that is registered in Jordan is entitled to addi-
tional remedies. Additional remedies include damages,
compensation, destruction of infringing goods and receipt

120 Communications Law, Vol. 12, No. 4, 2007

of infringing goods.33 The legislature may have intended against Westernization and the domination of Western
to encourage owners to register well-known marks in culture.35 Therefore, violating intellectual property rights
Jordan by providing additional protection. However, are a means of revenge for the West’s colonization of
registration should not be a decisive factor in determining Jordan. Jordanians believe that few benefits would occur
the extent of protection granted to well-known marks. to the national interest as a result of granting trademarks
protection as most trademark applications are submitted
In general, Jordan is a country where the prerequisite by foreigners.36
for protection is registration. Jordan does not have a
national well-known mark registry. Perhaps such a (ii) Well-known trademarks enforcement
registry is not a bad idea, considering how many famous record
marks are generated and how much effort went into
spreading the fame of these marks around the world. Thus, Jordan has witnessed an increase in enforcement activities.
a registry of well-known marks is advisable to evade any For example, in 2000, raids were conducted in Jordan
problems. against traders selling chisels and screwdrivers bearing the
well-known STANLEY mark owned by the US company
It remains unclear, however, how Jordanian courts of Stanley Works.37 These raids yielded a substantial
will interpret the amendments concerning well-known quantity of counterfeit products, and those traders’ pro-
marks. Moreover, it is unclear how stringently courts will ducts were confiscated and later destroyed.
enforce well-known mark protection pursuant to the
amendments. It is hoped that Jordanian courts will begin to Owners of well-known marks have a new tool to stop
provide an increased level of protection to internationally the importation and exportation of goods in and out of
well-known marks. Strong implementation and enforce- Jordan. In 2005, the Jordanian customs authority required
ment of well-known marks would be a positive sign that trademark owners to provide it with copies of their respec-
courts are diligently applying the standards laid out in the tive trademarks and basic owner information.38 These pro-
TRIPS Agreement and the Jordanian Trademarks Law. cedures are designed to implement stronger customs
protection by assisting the customs service in identifying
4. Enforcement counterfeit products before they enter the country.
Through these procedures, well-known mark owners can
Compliance with the TRIPS provisions requires strong move to detain suspected goods at entry and exit points.
enforcement of Jordan’s Trademarks Law. Enforcement of
Trademarks Law in Jordan is an area where many factors The enforcement record in Jordan should be com-
inform policy enforcement which reflects the current state mended. In only a few years, Jordan has changed its norms
of affairs. and standards in trademarks.39 Moreover, Jordan has cre-
ated a workable system for trademarks protection.
(i) Administrative and cultural factors
undermine enforcement efforts 5. Conclusion

Despite the latest efforts in Jordan to enforce well-known Until 1999, there was no coherent framework to speak of
marks, there are several problems hindering proper regarding the status of well-known marks in Jordan. The
enforcement of trademark regulations. Enforcement of area of well-known marks was a hodgepodge of legal and
intellectual property rights is not cheap, and requires the administrative systems with no coherent standards thus
appropriation of millions of dollars that would capture a allowing for an unhealthy amount of subjective analysis
good portion of the annual budget of Jordan. Therefore, by the courts and Trademarks Registration Office. Now,
any action plan such as raids, seizures, arrests, or educa- the system for well-known marks is on par with interna-
tion campaigns to reduce trademarks infringement is con- tional standards.
strained by limited financial resources.
While one could argue that the current framework of
Jordan also experiences lack of sufficient human well-known marks is satisfactory, it is evident that there is
resources. For example, the Industrial Property Protection room for improvement in standards and enforcement to
Directorate at the Ministry of Industry and Trade has 35 truly become satisfactory. For instance, there is no defini-
professional, trademark and patent examiners, and support tion of the term ‘relevant public’ and, therefore, there is
staff.34 Until recently, these examiners were not required plenty of room for subjectivity regarding what constitutes
to be lawyers with intellectual property knowledge and ‘relevant public.’ Moreover, the amendments to the
expertise, having a background in science and technology, Trademarks Law of 1999 overlook the important distinc-
or taking a bar-like exam. tion between well-known and famous marks. The amend-
ments also fail to fully address the ways in which a mark
The new trademarks law cannot be effective if it is may achieve well-known status. In Jordan, trademark pro-
not enforced, and enforcement demands a fully function- tection begins with registration. Registration in Jordan
ing legal system with judges and attorneys competent to offers far broader protection for well-known marks as
enforce the law. More courts are now equipped to handle compared with unregistered marks. All these shortcom-
intellectual property disputes and each court has been ings could be rectified via judicial applications.
assigned professional judges.
A separate register for well-known marks is needed.
The enforceability of intellectual property in Jordan A special register would assist owners in defending their
may often be determined by political and cultural senti- well-known marks by proving notoriety. It could also
ments that a religiously-based law is a necessary bulwark

Communications Law, Vol. 12, No. 4, 2007 121

assist a well-known mark owner in any legal proceeding addition, time is needed for the development of a sufficient
by indicating prior use. The well-known register could be level of awareness of intellectual property protection.
optional and co-exist with the current trademarks register. Although improvements are still needed, the protection of
The Registrar would review the register over certain peri- well-known marks in Jordan has come a long way.
ods so as to add or omit a mark based on changes in the
mark’s status. Bashar H Malkawi
The battle against well-known marks violations in Jordan Assistant Professor of Commercial Law, Hashemite
cannot be resolved by legislative enactments and regula- University, Jordan. LL.B 1999, Yarmouk University; LL.
tory measures alone. The enforcement of these enactments M 2001, University of Arizona; S.J.D 2005, American
and measures is the mean to accomplish effective protec- University, Washington College of Law. The author
tion of well-known marks. Close examination of well- thanks his colleague Professor Daniel Bradlow for read-
known marks enforcement record reveals a good start. In ing numerous drafts and providing invaluable insight

NOTES

1 See James Gleick, ‘Get Out of My Namespace’, NY Times Magazine, 18 Id, article 16(2), 33 International Legal Materials at 1203-04 (provid-
March 21, 2004, at 44. ing that article 6bis of the Paris Convention shall apply to services).

2 The Jordanian law was rather lax regarding documentation. All that is 19 Id, (emphasizing that in determining whether a trademark is well-
required for registration of trademarks is a general or specific power of known, WTO members shall take account of the knowledge of the
attorney. See Trademarks Law No 33 of 1952, Official Gazette No. trademark in the relevant sector of the public, including knowledge in
1110 (June 1, 1952). the member concerned which has been obtained as a result of the pro-
motion of the trademark).
3 See Miller Brewing Company v Fareed Khalaf Company, Trademarks
Registrar’s Decision No TM/35571/1142, (April 6, 1997). 20 Id, article 51, 33 International Legal Materials at 1217 (providing that
a right holder may petition customs authorities for suspension of the
4 See Southland Corporation v Hani Al-Qudsi & Partners, Trademarks release of infringing goods into free circulation).
Registrar’s Decision No TM/40918/1410 (April 27, 1997).
21 Id, article 41, 33 International Legal Materials at 1213–14 (specifying
5 See High Court of Justice, Case No. 164/88, Journal of the Jordanian that members shall ensure that enforcement procedures are available so
Bar Association, 924 (1989). as to permit effective action against any act of infringement of intellec-
tual property rights including expeditious remedies to prevent infringe-
6 Dilution is a doctrine under which the first trader may remedy the dilu- ments and remedies which constitute a deterrent to further
tion of distinctiveness caused by the second trader’s use of its mark for infringements).
different goods. A mark is likely to be strongest if used by one trader
only. Should another trader use the same mark for different goods or 22 Jordan had been on the US watch list for quite sometime, where the US
services, then the attractive power of the mark may become dimin- has closely watched Jordan’s intellectual property regime. The situa-
ished. See Keola R Whittaker, ‘Trademark Dilution in a Global Age’, tion worsened when there was discussion in 1998 on whether Jordan
27 University of Pennsylvania Journal of International Economic Law would be targeted with trade sanctions under Special 301 of the 1988
907, 927–33 (2006). Omnibus Trade and Competitiveness Act for failing to adequately
protect US copyrights, patents, and trademarks. See Gary Yerkey, ‘US
7 See La Chemise Lacoste v Jordan Trico Yarn Factory Co, Trademarks removes Jordan from ‘watch list’ of special 301 nations failing to
Registrar’s Decision No 34310/77 (January 6, 1998). protect IP’, 16 International Trade Reporter (BNA) 2047 (December
1999).
8 See Turner Warner Entertainment Company v Sobhi Jabri & Sons Co,
Trademark Registrar Decision No TM/29626/78 (January 6, 1998). 23 See Trademarks Law No 34 of 1999, article 2, Official Gazette No
4389 (November 1, 1999).
9 The Trademarks Registrar also reasoned that the cartoon character is
only protected by copyright law, but not trademarks law. Id. 24 Various countries have attempted in their legislations to define the
required criteria for a mark to be considered well-known. These coun-
10 See High Court of Justice, Case No 4/53, Journal of the Jordanian Bar tries include the US (in the Lanham Act), Brazil (in the Industrial
Association, 151 (1953). See also High Court of Justice, Case No Property Code of Brazil), and Canada (in the Canadian Trade-marks
32/87, Journal of the Jordanian Bar Association, 1207 (1988). Act). See Lanham Act, 15 United States Code 1125(c) (2002). See also
Canadian Trademarks Act, RSC, ch. T-13, 5 (1995).
11 See High Court of Justice, Case No 171/88, Journal of the Jordanian
Bar Association, 933 (1989). 25 Setting aside formal laws and regulations, any other guidelines or opin-
ions are non-binding and can be compared to the notion of ‘persuasive
12 See Gen Rep of the Assemblies of the Member States of World authority’ in a common-law system. See Mary Garvey Algero, ‘The
Intellectual Property Organization, Joint Resolution Concerning sources of law and the value of precedent: a comparative and empirical
Provisions on the Protection of Well-known Marks, WIPO Doc. study of a civil law state in a Common Law Nation,’ 65 Lousiana Law
A/34/13, (1999), available at http://www.wipo.org/news/en/ Review 775, 784–92 (2005) (discussing sources of law and the role of
index.html?wipo content frame=/News/en/conferences.html. precedents in England and the U.S.).

13 Id, article 2.3. 26 See Frederick W Mostert, Famous and Well-Known Marks, 276
14 See Miller Brewing Company v Fareed Khalaf Company, supra note 3. (1997).

See also High Court of Justice, Case No 120/97, Volume 6 Judicial 27 See Trademarks Law N. 34 of 1999, supra note 23, article 8.12.
Journal 351 (1997) (the court determined that deception of consumers 28 See High Court of Justice, Case No 27/1995, Journal of the Jordanian
occurred as they could not distinguish between products).
15 While a substantial number of other regional and bilateral agreements Bar Association 622 (January 1, 1996).
deal with trademark matters, their effects on Jordanian law are limited. 29 In 2005, a manufacturer used the transliteration of the well-known
For example, see North American Free Trade Agreement, December
17, 1992, Can-Mex-US, 32 International Legal Materials 289 (contain- mark ‘OASIS’ in the Arabic words ‘WAHA.’ The owner of ‘OASIS’
ing provisions setting forth minimum standards of protection for trade- brought an action and stopped the manufacturer from using the Arabic
marks). transliteration of ‘OASIS’ as a mark for their products because it would
16 Countries of the Paris Union undertake to refuse the registration, and to mislead consumers to associate the unauthorized products with the
prohibit the use, of a trademark which constitutes a reproduction, an company who owns the mark ‘OASIS.’ See High Court of Justice,
imitation, or a translation, liable to create confusion, of a mark consid- Case No 436/2005 (December 28, 2005).
ered to be well-known in that country. See Paris Convention for the 30 See Trademarks Law No. 34 of 1999, supra note 23, article 26.1.b. The
Protection of Industrial Property, March 20, 1883, article 6bis(1), 828 language of the Jordanian Trademarks Law mirrors article 16.3 of
United Nations Treaty Series 305, 325. TRIPS.
17 See Agreement on Trade-Related Aspects of Intellectual Property 31 Id, article 38.1.
Rights, April 15, 1994, Marrakesh Agreement Establishing the World 32 Id, article 34.1.
Trade Organization, Annex 1C, Legal Instruments – Results of the
Uruguay Round, volume 31, 33 International Legal Materials 1125.

122 Communications Law, Vol. 12, No. 4, 2007

33 Id, article 39. 37 See NJQ & Associates, ‘STANLEY’ – Police Raid on Counterfeit
34 See Report of the Industrial Property Protection Directorate of Products in Jordan’, available at http://www.qumsieh.com/
Newsletters/Newsletter_%20August_2000/Newsletter_August_2000.
Ministry of Industry and Trade, 3 (2007) (on file with the author). The html
number of trademark and patent examiners at the Ministry of Industry
and Trade in Jordan constitutes a fraction of the some 7000 employees 38 See NJQ & Associates, Jordan, ‘The Role of Customs Department in
at the USPTO. Intellectual Property Protection,’ available at http://www.qumsieh.com/
35 See John Carroll, ‘Intellectual property rights in the Middle East: a Newsletters/Newsletter_December_2005/Newsletter_December_2005
cultural perspective, 11 Fordham Intellectual Property Media and .html
Entertainment Law Journal 555, 574 (2001).
36 On average, the Industrial Property Protection Directorate in Jordan 39 Developed countries took decades to improve their norms, standards,
receives 5000 trademark applications a year. Foreign countries account and enforcement. These developed countries did not protect intellec-
for the biggest filings. See Report of the Industrial Property Protection tual property while they were in the stage of developing their
Directorate of Ministry of Industry and Trade, supra note 34, at 12. economies. See Margaret Chon, ‘Intellectual property and the develop-
ment divide’, 27 Cardozo Law Review 2821, 2856 (2006).

Communications Law, Vol. 12, No. 4, 2007 123