How Morocco is becoming the new destination of choice for industrial subcontracting.  

#BRITCHAM

WEBINAR

How Morocco is becoming the new destination of choice for industrial subcontracting.    May 9, 2024 at 5:30 pm 

M.Wassim BENZARTI

In his speech, Wassim Benzarti, Managing Partner of Westfield Morocco, emphasized the need to strengthen the implementation of industrial property protection measures, which include registering trademarks, patents and geographical indications locally with the Moroccan Industrial and Commercial Property Office.

Protection measures also include annual filing with customs, as well as ongoing monitoring of trademarks, he continued, noting that, contractually speaking, it is also a question of signing contracts with subcontractors, containing extensive confidentiality clauses covering all types of exchanges, and providing for “destruction” in the event of termination of the contractual relationship.

The following is an overview of the issues involved:

What protection provides the Moroccan legal system in regard to industrial property ?

The purpose of intellectual property is to protect and enhance inventions, innovations and industrial or commercial creations.

As a branch of intellectual property, industrial property includes patents, trademarks (trademarks, trademarks or service marks), trade names, industrial designs, and geographical indications.

Industrial property rights are property rights like any other: they enable the creator or owner of a patent, trademark or copyrighted work to benefit from their work or investment.

In Morocco, the protection of industrial property is governed by the provisions of Law 17-97 as amended and supplemented by Law 31-05 in 2006 and Law 23-13 in 2014.This law introduced new provisions dealing in particular with:

*protection of new areas: pharmaceutical products which have become patentable, employee inventions, service marks, collective marks.

*flexibility of the filing procedure. All applicants have the possibility of a period of 3 months in which to rectify their incomplete file.

* as regards penalties, imprisonment and dissuasive fines for imitation, counterfeiting and unfair competition.

Act No. 31-05 amending and supplementing Act No. 17/97, which contains provisions on:

*the extension of protection to sound and olfactory marks

*the establishment of the trademark opposition system

*electronic filing of trademark applications;

*protection of geographical indications and designations of origin, the related opposition system and the national register of geographical indications;

* border measures in the event of the import and export of counterfeit products infringing trademarks protected in Morocco.

Law 23-13 amending and supplementing Law 17-97, it is structured around the following axes:

*Organization of the profession of industrial property adviser.

*Modernization of the procedure for filing applications for industrial property titles.

*Improvement of the patent system for inventions.

*Reform of the national system of industrial designs.

* Consolidation of the national trademark system.

*Establishment of a dating system.

*Strengthening the enforcement of industrial property rights.

Finally, it should be stressed that the industrial property system confers on the proprietors of a trademark, an industrial design or a patent the following advantages:

• Priority of filing;

• The benefit of the exploitation monopoly and

• The freedom to act legally against any attempt at unfair competition or counterfeiting.

What are the processes and regulatory requirements that companies must comply with when setting up their subcontracting operations in Morocco, particularly with regard to industrial property rights?

Industrial property law under Law No. 17-97 ensures protection by the prior completion of a valid filing of trademarks, industrial designs and patents with OMPIC.

At first glance, ownership of a trademark is acquired by registration, which gives rise to the establishment of an IP title “certificate of registration of a trademark, trade mark or service mark” and enjoys legal protection from the date of its filing (Art. 143, Law No. 17-97).

The registration of the trademark confers on its proprietor a right of ownership “of the filing date for a period of ten years which may be renewed indefinitely” (Art. 152, Law No. 23-13). At the request of the holder, the registration may be renewed every 10 years. This property right protects trademarks against any form of counterfeiting, that is, any form of reproduction, use, modification or imitation.

With a view to protection, OMPIC shall adopt a trademark which fulfils all the requirements from validity and availability to the earlier rights of registered or well-known trademarks within the meaning of Article 6 bis of the Paris Convention for the Protection of Intellectual Property and in accordance with the provisions of Article 137 of Law No. 17-97.

In the case of a patent, the legal protection resulting from the filing of a patent is limited in time. It shall be granted for a period of 20 years from the date of filing of the application. The novelty of an invention is thus assessed in the light of the prior art, which “consists of everything that has been made available to the public by a written or oral description, by use or by any other means, before the filing date of the patent application … (art. 26, Act No. 31-05).

Although the invention patent provides protection over time with a monopoly on exploitation, some innovative companies prefer not to disclose the features of their invention. The choice between secrecy and patent remains dependent on the company’s ability to implement a disinformation strategy ( and protection of his invention. However, only the title granted under the patent guarantees protection, in the case of secrecy, for example, if a competitor discovers the same process, he will be free to use it and even patent it.

Thirdly, the protection of designs and models is guaranteed, like that of patents, by conferring on the creator a monopoly of exploitation, subject to the completion of a filing formality in accordance with Articles 114-117 of Law No. 17-97 .

In the case of an industrial subcontracting relationship, before deciding to subcontract to Morocco, we recommend to investors two types of measures, first of all industrial property protection measures, first of all, one should think of protection through registration, either locally with WIPO or internationally with WIPO, and targeting Morocco as a country covered by this protection as well. Through this mechanism, we prevent the subcontractor from counterfeiting the target products or using your trademarks or other industrial property rights. Secondly, it is absolutely necessary to carry out the deposit every year at customs, the customs administration has an alert system, whenever the protected products are counterfeit, the customs carry out an alert, so we strongly recommend this measure.

In addition, the need for monitoring remains one of the measures to enhance legal certainty, through a legal consultancy or an IP firm, with the ultimate aim of monitoring on a daily or monthly basis, including on social networks.

From a contractual point of view, signing a contract with the subcontractor requires a solid contractual basis in order to protect your rights, first by thinking of a confidentiality clause, a clause that is broad in scope, but also long in duration. Provision for the destruction of the material once the contractual relationship is terminated is an extremely important measure in this context, provision should be made for licensing as well, if you have technological inventions, provision should be made for a licensing clause and an intellectual property clause requiring the subcontractor to act quickly if your intellectual property rights are infringed.

*The Scope of Protection: Invention Patent Case

What effect does a patent have ?

Patent protection means that the invention may not be made, used, distributed or sold commercially without the consent of the proprietor of the patent throughout the life of the patent in the territory in which it is granted.

Who is the patent holder?

The applicant for the patent is in principle the proprietor of the patent, possibly jointly with others, e.g. where part of the invention has been assigned or where several inventors have a common right in the patent. A patent may, of course, be transferred to another person or licensed.

Can I discuss the features of my invention with a potential investor before filing a patent application?

It is important to file a patent application before disclosing the features of the invention to the public, for example as part of scientific publications or as part of campaigns to promote a new product. In general, any invention that is made public before it is the subject of a patent application will be considered to be prior art. If it is imperative that you disclose your invention, such as to a potential investor or business partner, prior to filing a patent application, this disclosure must be covered by a confidentiality agreement.

How do I define the scope of my patent protection?

The scope of protection is defined by the claims of the patent as granted.

Thus, third parties may not exploit the claimed technical features without the consent of the patentee. Anything described in the description but not claimed in the claims is not protected and may be exploited without the consent of the owner.

I have applied for a patent in Morocco, am I protected abroad?

A patent for an invention shall have effect only in the country in which it is granted and in force. Outside that territory, anyone is free to exploit the invention. If you wish to exploit it in another country, you must protect it in that country.

I made an invention. How can I have it protected in several countries?

The best and most economical way to extend protection on an international scale is to go through the PCT procedure. (With the World Intellectual Property Organization (WIPO) to benefit from registration in all countries adhering to the Patent Cooperation Treaty, which includes more than 145 countries including Morocco)

How can a company navigate the Moroccan legal system efficiently in the event of infringement of its industrial property rights by subcontracting partners?

Like other industrial property rights, Law 17/97 provided a framework of protection of its own, including legal actions aimed at such protection.

*Action to claim ownership of the patent

The principle of this action is that a person other than the inventor is prohibited, except in specific cases such as the employer (Art. 18(a)) from applying for the registration of the patent title with OMPIC. If, however, this happens in violation of the above-mentioned principle, Article 19 of Law 17/97 allows the injured party to claim ownership of the title granted either for an invention that has been withdrawn from the inventor or his successors in title, or in violation of a legal or contractual obligation.

*Action for invalidity of the patent

An action for invalidity is an action brought by any person or the Public Prosecutor’s Office, whereby the court is requested to declare the title of the patent null and void in whole or in part (Articles 85 and 88). The purpose of the action is to penalise the absence of the conditions for the validity of a patent laid down in Article 85.

Under these articles, the person entitled to apply to the court for a declaration of invalidity is the person who has an interest in doing so. This may include the inventor or his successors in title, a person claiming an earlier right in the patent, a beneficiary of a conventional, compulsory or ex officio licence, or a co-owner.

*Action for infringement

Infringement action is the best means of protection against infringements that the owner of the patent right may suffer, and the title of the action reflects its content. The Moroccan legislature has granted the inventor who is the owner of the patent, who has suffered damage as a result of an infringement of his right, the right to apply to the criminal or commercial courts for infringement, in accordance with the spirit of the TRIPS Agreement and, above all, in accordance with the provisions of the Free Trade Agreement with the United States.

The infringement action is closely linked to most industrial property rights – (Articles 1 and 201 of Law No. 17/97). Moreover, a comparison of the action relating to a trade mark and the action relating to a patent shows that, in the first case, the legislature drew a distinction between two offences, namely imitation and infringement, whereas in the second case, that is, the action relating to the patent, the law confined itself to punishing infringement.

*Unfair competition

If the basis of industry and commerce is the freedom to conduct a business and competition, this freedom is presumed to be exercised without prejudice to the interests of third parties. Any violation of this limit shall be considered unlawful and shall give rise to liability if damage results from the act, whether intentional or unintentional. The rules on unfair competition are laid down in Articles 184 and 185, which set out certain acts of unfair competition and related actions. On the other hand, the legal basis for such acts and the procedures to be followed are subject to the general rules, with the exception of the subject-matter jurisdiction, which falls to the Commercial Court under Article 15 of Law No 17/97.