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Morocco

Contributing firm
Cabinet Aksiman

Authors the Hague Agreement concerning the of a registered mark or a beneficiary of an


El Mostafa Aksiman and Mohamed Amine International Registration of Industrial exclusive right of exploitation, suspend the
Aksiman Designs; free circulation of goods that:
the Lisbon Agreement; are suspected of being counterfeit; and
Legal framework the Nice Classification; bear a mark that is identical or similar to
Industrial property in Morocco is regulated the Brussels Convention relating to the the applicants registered mark, causing
by the Industrial Property Law (17-97), as Distribution of Programme-Carrying confusion with authentic goods.
amended and supplemented by Law 31-05. Signals Transmitted by Satellite;
Decree 2-00-368 of June 7 2004 sets out the the Moroccan Office for Industrial The application must:
conditions of the laws implementation. The Property Convention relating to the be supported by appropriate elements
other applicable acts are: World Intellectual Property proving that an infringement of the
the Copyrights and Connected Rights Organisation; protected rights has taken place; and
Law (2-00); and the Nairobi Treaty on the Protection of provide sufficient information about the
the Protection of New Plant Varieties of the Olympic Symbol; suspected goods to enable Customs to
Plants Law (9-94), as amended and the Trademark Law Treaty; and establish whether they are counterfeits.
supplemented by Law 34-05. the Patent Cooperation Treaty.
The applicant, petitioner or owner of the
Morocco is a signatory to the following Border measures goods shall be informed, without delay, of
international conventions and treaties: The Industrial Property Law provides for two the suspension measure taken by Customs.
the Paris Convention for the Protection types of border measure: The application for suspension is valid
of Industrial Property; the customs detention procedure; and for a year or for the period during which the
the Berne Convention for the Protection the seizure procedure. trademark registration on which it is based
of Literary and Artistic Works; remains valid, whichever is shorter.
the Madrid Agreement for the Customs detention procedure
International Registration of Marks; The Customs and Indirect Tax Administration Seizure procedure
the Madrid Protocol; may, upon an application filed by the owner When Customs knows or suspects that goods

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Cabinet Aksiman

Goods suspended from free circulation and


identified, according to a final court decision, as
counterfeit shall be destroyed, barring exceptional
circumstances

that are imported or in transit are decision, as counterfeit shall be destroyed, prejudice for possible damages.
counterfeit, it automatically suspends them barring exceptional circumstances. When an infringement action is brought
from circulation. Customs then advises the If the goods prove to be genuine, the to court, the court president may issue an
rights holder without delay about the importer may apply to the court for an order interim measure:
measures taken and provides, upon request, requiring the plaintiff to pay damages to provisionally prohibiting the alleged
the name and address of: compensate for any harm caused. infringing activity; or
the sender; allowing the defendant to continue the
the importer; and Criminal prosecution activity on condition that it undertakes
the owner of the goods or their Counterfeiting is a criminal offence and is to compensate the rights holder or its
addressee. subject to penalties, including fines and licensee for any damage caused during
imprisonment. that time should the claim prove
Customs also informs the rights holder Penalties may range from one to six successful.
of the quantity of goods at issue. months imprisonment and between 5,000
The declarant or holder of the goods is and 50,000 in fines, depending on the The prohibition or the guarantee
also informed of this measure without delay. nature of the infringement. The court may constitution will not be admissible unless:
The suspension procedure will be lifted also order the destruction of counterfeit the civil action seems serious; and
10 working days after the rights holder has goods that are the property of the the civil action is filed within 30 days of
been notified of the measure unless, within counterfeiter and all equipment used to the rights holder being notified of the
that period, it has: manufacture the counterfeit products. facts on which the action is based.
provided evidence to Customs of
measures taken or actions initiated Civil enforcement Should the infringement action prove
according to the law; and Any party that infringes a manufacturers groundless, the court will order the plaintiff
filed a suit as prescribed by law. mark, trademark or service mark may be to compensate the defendant for any
prosecuted ex officio by the public possible damages and prejudice it has
Legal actions prosecutor, without the need for the rights suffered as a result of the action.
The rights holder may choose between two holder or a third party to file a complaint.
types of suit: Remedies
an application for preliminary measures, Preliminary measures Following a successful civil action against a
which should be filed with the court that In case of infringement, the holder of an counterfeiter, the infringing goods and any
has jurisdiction over the location where exclusive right may ask the court to issue a equipment used in their manufacture will be
the goods were imported. The president descriptive seizure order. Such orders are destroyed, barring exceptional circumstances.
of the relevant court will then issue a enforced by bailiffs, who will be authorised The rights holder can also apply for:
decision; or to search for and detail any evidence of damages covering the actual damage
a full lawsuit, which requires the counterfeiting. caused by the infringement; or
payment of a bond in case the suspected The enforcement of such an order a discretionary award of between 500
goods turn out to be genuine. depends on the payment into court by the and 2,500, depending on what the
applicant of a bond that will cover any court feels is appropriate.
To bring these proceedings, the damage suffered by the defendant should
applicant must obtain from Customs the the action prove groundless. Anti-counterfeiting online
names and addresses of the sender, importer The rights holder must file an No specific regulations apply to online trade
and consignee or holder of the products, as infringement action with the court within in Morocco at present. Rights holders must
well as the quantity of goods at issue. 30 days of execution of the seizure order. use the standard measures provided under
Goods suspended from free circulation Failing to file an infringement action will the current legislation to deal with online
and identified, according to a final court result in the seizure becoming void, without infringements.

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Morocco

In case of infringement, the holder of an exclusive


right may ask the court to issue a descriptive seizure
order. Such orders are enforced by bailiffs who will be
authorised to search for and detail any evidence of
counterfeiting

Preventive measures/strategies household goods, tyres and automotive


In addition to the provisions available to spare parts.
fight counterfeiting, the Moroccan This illegal trade has had a major impact
government recently launched a new on the Moroccan economy and contributed
industrial property and anti-counterfeiting to the closure of several industrial and
body the National Committee for commercial companies in the north of the
Industrial Property and Anti-counterfeiting. country, which lost sales as a result of the
This body is tasked with: rise in cheap knockoffs.
raising awareness among consumers, The border with Algeria is becoming a
businesspeople and companies about hotspot for counterfeit goods and other
rules and regulations applicable to illegal trade, in particular drugs, food
industrial property; products (eg, coffee) and fuel. A recent
assisting in training staff at the investigation conducted by Cabinet Aksiman
competent authorities; uncovered a large-scale trade in counterfeit
reinforcing the legislative framework; perfumes of large US and EU brand owners.
and This trade has now developed to such an
assessing the impact of counterfeiting extent that shops selling counterfeit
on the economy. perfumes are flourishing all over the
country.
The production of counterfeits on a Another important problem is the
commercial scale is relatively rare in proliferation of pirated DVDs, CDs and other
Morocco and is limited in scope. This is due audiovisual products. Customs regularly
mainly to the fact that technology is not seizes and destroys these products publicly.
available locally to reproduce even simple Nevertheless, such symbolic actions appear
industrial goods. Counterfeiters in Morocco to have no real deterrent effect.
would struggle to manufacture products Unfortunately, the tools available to
such as car spare parts because they do not fight counterfeiting are insufficient and
have access to the machinery necessary to inappropriate. They cannot meet the real
produce them. The local production of needs of local markets and neither can they
counterfeits is limited to the best- meet those of international rights holders.
performing local industries namely, Counterfeiting and piracy are comparatively
agribusiness, textiles (mainly the clothing small-scale activities in Morocco, but unless
industry), leather manufacture and adequate measures are taken, they could be
audiovisual goods. catastrophic for the local economy. WTR
The key issue with regard to
counterfeiting and piracy in Morocco is the
import of foreign goods. The main traffic in
contraband comes from Spain through
Ceuta and Mellila two Spanish enclaves in
northern Morocco. These two cities have
become hubs for the import and transit of
counterfeits from Spain and Asia, consisting
mainly of clothing, food products,
cosmetics, electronics, domestic appliances,

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Cabinet Aksiman
Biographies 60 Boulevard Ibn Tachfine
1st Floor no. 3
Cabinet Aksiman 20310 Casablanca, Morocco
Tel +212 5 22 31 05 50
Fax +212 5 22 31 04 53
Web www.aksiman.com

El Mostafa Aksiman Mohamed Amine Aksiman


Founding partner Industrial property counsel
info@aksiman.com info@aksiman.com

El Mostafa Aksiman became active in the Mohamed Amine Aksiman joined the
field of intellectual property after he office in 2008 after completing several
discovered a passion for innovation and training courses. Previously, Mr Aksiman
creativity when he filed his first patent undertook training in industrial property
application in the 1970s. In 1981 Mr Aksiman matters in France. He is currently industrial
created the Association of Inventors and property counsel in charge of oppositions
Innovators of Morocco and the Arabic and relations with the patent
World, of which he became president. He administration office.
founded Cabinet Aksiman in 1982.
Mr Aksiman has played an important
role in the development of the profession
of IP counsel in Morocco. He is recognised
for his expertise and was accordingly
awarded the Belgian medal of Chevalier de
lOrdre du Mrite de lInvention.
Mr Aksiman has conducted a number of
studies on the role of industrial property in
the resolution of problems such as
unemployment, business creation and
technology transfer. He was designated by
the Counterfeiting Intelligence Bureau as
the exclusive representative in Morocco of
the Counterforce Network.

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