CWB recently obtained a positive decision in Tunisia for a major fashion business, resulting in the final rejection of a ‘pirate’ trade mark application.

Brand owners should be aware that opposition proceedings in Tunisia are fairly nuanced: oppositions are filed at the Trade Mark Office principally to determine if the parties can come to the settlement of a dispute. If, and after the applicant timely files a counter-statement, the Trade Mark Office should invite the parties to a conciliation hearing. The purpose of the conciliation hearing is for trade mark opponents to reach settlement with applicants, failing which the opposition would have to be appealed in Court on the merits.

In relying on unregistered trade mark rights, which were relevant in this matter, it is important to submit local evidence of use, which the examiners and courts focus on. There is no defined list of evidence which could be submitted, although examiners can be particular. Brand owners, with guidance from experienced counsel, generally need to look to local sales, advertising, promotion and marketing expenses; examples of packaging/products illustrating how the brand owner’s products appear in the Tunisian market (if dealing with a goods application); commercial documents showing export of products to, and sales in, Tunisia, such as bills-of-lading, customs clearance documents, and invoices; and dated advertising, marketing and promotional materials circulated in the Tunisian market.

In a properly constituted opposition, brand owners may elicit easier settlement, or, as in this matter, an overall positive decision.

By Theuns van de Merwe