Trademark Infringement in Jordan: Routes of Protection and the Penalty
When a trade name built over years appears on a competitor's packaging or in an online store its owner does not know, sales and reputation are drained together, and the merchant accused of imitation may pay a price no smaller: seized goods and criminal prosecution. Trademark protection in this confrontation rests on the Jordanian Trademarks Law No. 33 of 1952 and its amendments, which restricts the right to use a registered mark to its owner, punishes counterfeiting or imitating it in Article 37, and grants fast precautionary measures, conditional on a guarantee, in Article 38. These tools, however, do not work on the same conditions: some are limited to the registered mark, and some turn against the person who requests them if they are used in the wrong place. That is why choosing the route and its timing is a decision made by a lawyer who specializes in trademark cases, after examining the registration, the goods and the evidence, before any warning letter or attachment request.
1. When Use of a Mark Counts as Infringement under Jordanian Law
Article 2 of the Law defines a trademark as any visible sign that a person uses, or intends to use, to distinguish his goods, products or services from the goods of others. Article 25 provides that the right to use a duly registered mark is limited to its owner, who may prevent others from using identical marks, or marks similar to the point of being likely to cause confusion, without his prior consent. The text presumes a likelihood of confusion when an identical mark is used on similar products.
Infringement is not limited to literal copying on the same goods: letters or colors may be changed, a syllable may be added to the name, or the mark may be used on a related class of goods. The dispute then turns on whether the similarity has reached the level of confusion, a question on which the lawyer builds the argument from the overall appearance of the two marks, the nature of the goods and the consumers they are aimed at, and on which comparing the letters is not enough.
The Law sets limits on this right. Article 35 does not prevent anyone from the genuine use of his own name or the name of his place of business, or from a genuine description of the type and class of his goods. A well-known trademark, on the other hand, has wider protection: Article 25 allows its owner, even if the mark is not registered, to ask the competent court to prevent its use on similar or dissimilar products or services, where the use indicates a connection between them and the well-known mark and the owner's interests are likely to be harmed.
2. Registration Is the Anchor of Every Dispute
The first thing the lawyer asks for in a trademark file is the registration certificate, because the Law builds most rights on registration. Article 28 makes a person's registration as owner of the mark evidence of the validity of the original registration in the legal proceedings relating to it. Under Article 20 the term of protection is ten years from the registration date, renewable for equal periods. If the owner does not request renewal, the mark is deemed struck off the register after a period set by Article 21, and others may then apply to register it in their own name.
Article 33 sets a restriction that many business owners are unaware of: no one may bring an action for compensation for infringement of a trademark that is not registered in the Kingdom. The owner of a name who built a market reputation without registering it does not have this action, and is left with a narrower route: asking the Registrar to annul the registration of a mark registered in the Kingdom by someone who does not own it, after it had been registered abroad, if the claim rests on the grounds in paragraphs 6, 7, 10 and 12 of Article 8. Article 36 also preserves the right to bring an action against anyone who markets goods as belonging to another person.
Registration also works in the opposite direction. Article 22 allows any interested party to ask for the cancellation of a mark registered to someone else if it was not actually and continuously used during the three years preceding the request, unless its owner proves that the non-use was due to special trade circumstances or justifiable reasons. So the owner of a mark who files an infringement case may find himself facing a counter-request to cancel his own mark. Assessing the strength of the registration before acting, in terms of the registered class, actual use and renewal date, is itself a legal question that deserves a consultation.
3. The Routes of Trademark Protection and the Legal Basis of Each
The following table compares the routes available under Jordanian law, what each achieves, and the restriction that governs it:
| Route | Legal basis | Authority | What it achieves | Restriction or risk |
|---|---|---|---|---|
| Opposition to the registration application | Article 14 of the Trademarks Law | The Registrar of Trademarks, whose decision is open to judicial challenge | Preventing the registration of a similar mark before it gains the Law's protection | Limited to a period that starts from publication of the application, and its grounds are set out in the notice of opposition |
| Request to cancel the registration or rectify the register | Articles 22, 24 and 33 | The Registrar or the courts, depending on the case | Removing a mark registered to another person for non-use, for being unregistrable, or for being registered by someone who does not own it | Some grounds are limited to a period counted from the registration date (Article 24) |
| Civil infringement action | Articles 25 and 38 | The competent court | Stopping the use, claiming compensation, and confiscating and destroying the goods and the printing tools | No compensation action is accepted for a mark not registered in the Kingdom (Article 33) |
| Criminal complaint | Article 37 | The Public Prosecution and the criminal court | Imprisonment from three months to one year, or a fine from 100 to 6,000 Jordanian dinars (JOD), or both | Requires intent to deceive, and prior knowledge on the seller's part |
| Precautionary measures | Article 38 | The court | Stopping the infringement, precautionary attachment of the goods wherever they are, and preserving the evidence, even before the case is filed and without notifying the opposing party | A bank or cash guarantee; the measures are void if the case is not filed within the set period, and the opposing party may claim fair compensation |
| Border measures | Article 41 of Customs Law No. 20 of 1998 | The competent court or the Director of Customs | Suspending the clearance and release of infringing imported goods | A guarantee, sufficient evidence and a detailed description of the goods, and compensation to the importer if the request is unjustified |
The table does not set the order of the routes or how to combine them. The criminal complaint requires proof of intent to deceive, the compensation action requires an existing registration in the Kingdom, and precautionary attachment stops the goods quickly but exposes the person who requested it to a compensation claim if his entitlement is not proven. Choosing the route, or combining more than one, is decided by the lawyer after examining the whole file.
4. Criminal Liability for Imitating a Trademark
The penalty for imitating a trademark in Jordan is set in Article 37 of the Trademarks Law, which punishes with imprisonment for not less than three months and not more than one year, or a fine of not less than one hundred dinars and not more than six thousand dinars, or both these penalties, anyone who, with intent to deceive, commits one of the following acts: counterfeiting a registered mark or imitating it in a way that misleads the public; affixing a counterfeit or imitated mark within the Kingdom on the same class of goods; using a mark owned by another without right on the same class of goods; or selling goods bearing such a mark, possessing them for sale or offering them for sale with prior knowledge of this. The same penalty applies to anyone who attempts any of these acts or aids or incites their commission.
The second paragraph of the same Article provides, notwithstanding the first paragraph, that persons who sell, offer for sale or possess for sale goods bearing a mark whose use is an offense are punished by a fine of not less than fifty dinars and not more than five hundred dinars. Distinguishing the merchant who falls under the first paragraph from the merchant who falls under the second turns on prior knowledge and on his role in the supply chain, a delicate question the lawyer examines in the files of sellers and distributors.
Article 32 adds a separate offense: anyone who presents a mark as registered when it is not, for example by using the word "registered" or anything that indicates it expressly or implicitly, is punished by a fine not exceeding fifty dinars for each offense.
Intent to deceive is an element the first paragraph expressly requires, so the complainant needs facts that reveal it and the respondent needs facts that negate it, such as earlier use in good faith or a real difference in class or appearance. It is the lawyer who assesses which facts can serve as evidence of this element and which cannot.
5. Precautionary Attachment and Customs Measures, and Their Consequences for the Requesting Party
Article 38 allows the owner of a mark registered in the Kingdom, when filing his civil or criminal case or while it is being heard, to ask the court to stop the infringement, to order precautionary attachment of the goods in respect of which the infringement was committed wherever they are, and to preserve the evidence, provided that the request is accompanied by a bank or cash guarantee that the court accepts. The request may be made before the case is filed and without notifying the opposing party, if the applicant proves his ownership of the mark and that the infringement has occurred or is imminent, and that irreparable harm is likely or that evidence may disappear or be destroyed. These are measures specific to the Trademarks Law, and their conditions differ from the general rules on urgent proceedings under Jordanian law.
The text balances this speed with two restrictions. If the owner does not file his case within a short period set by the Law from the date his request is granted, all the measures are deemed void. And if the outcome of the case shows that the plaintiff was not entitled, or that he did not file his case within the set period, the opposing party may claim fair compensation. On the other side, the court may order the confiscation of the goods, the packing and advertising materials, the seals and the tools used to print the mark, and may order them destroyed or disposed of for non-commercial purposes.
Imported goods are governed by Article 41 of Customs Law No. 20 of 1998, which prohibits bringing in goods that infringe intellectual property rights, including trademarks. The right holder may ask the competent court, with a bank or cash guarantee, sufficient evidence and a detailed description of the goods, to suspend their clearance and release. The Director of Customs or his delegate may suspend clearance on his own initiative if he is convinced, on apparent and clear indications, that infringement has occurred in trademark and copyright cases. The court may order the applicant to compensate the importer if it turns out that the request was unjustified.
Practical note: The guarantee the Law requires for an attachment request, the voiding of the measures if the case is not filed on time, and the opposing party's right to compensation if infringement is not proven mean that an ill-considered attachment request can turn from a means of pressure into a liability for the person who made it. That is why the lawyer prepares the evidence of ownership and infringement and drafts the case before the request is filed. Balancing the speed of attachment against its consequences differs from one file to another, and calls for a review of the facts or consulting a specialist lawyer.
6. The Position of the Merchant Accused of Infringement
A company that receives a warning letter or has its goods attached has defenses in the same Law that may change the course of the dispute. Article 35 protects the genuine use of one's own name and the genuine description of one's goods. The company's own mark may also be registered, or the other party's mark may be open to cancellation for non-use under Article 22. Confusion may be excluded because the class of goods differs, or the intent to deceive that Article 37 requires may be absent. And where it is proven that the party who requested the attachment was not entitled, Article 38 gives the company the right to claim fair compensation.
In these files the lawyer starts by identifying the precise characterization of the facts: whether the dispute concerns the validity of the registration, confusion, intent, or the seller's knowledge. The response is built on that characterization. Do not sign an undertaking to stop using the mark or an admission of imitation before a specialist lawyer has examined the file, because what is written at this stage may later be used as evidence in both the civil case and the criminal complaint. The dispute may also go back to a registration that was neglected at formation, and the article the role of a corporate lawyer in Jordan sets out where trademark registration sits among a company's first decisions.
7. Frequently Asked Questions
What is the penalty for imitating a trademark in Jordan?
Article 37 of Trademarks Law No. 33 of 1952 and its amendments punishes anyone who, with intent to deceive, counterfeits, imitates or uses a registered mark without right with imprisonment from three months to one year, or a fine from 100 to 6,000 dinars, or both penalties. Those who sell or offer for sale the imitated goods are covered by a separate provision with a fine from 50 to 500 dinars.
Can I sue someone who uses my mark if it is not registered?
Under Article 33, no compensation action is accepted for infringement of a mark not registered in the Kingdom. The Law does preserve other routes, including a request to annul a mark registered by someone who does not own it in specified cases, protection of a well-known mark even if unregistered, and an action against anyone who markets goods as belonging to another. Which of these routes is available in a particular file is determined by the lawyer from the facts.
How long does trademark protection last in Jordan?
Ten years from the registration date under Article 20, renewable for equal periods. Neglecting renewal may lead to the mark being deemed struck off and open the way for it to be registered in someone else's name.
Is a merchant punished for selling imitated goods without making them?
Yes. Selling, offering for sale and possessing for sale are acts punishable under Article 37. Which provision applies depends on the seller's prior knowledge of the imitation and his role in distribution, a point settled by examining the file.
Can imitated goods be stopped before they enter Jordan?
Yes. Article 41 of Customs Law No. 20 of 1998 allows a request to the competent court, with a guarantee and sufficient evidence, to suspend the clearance and release of infringing goods, and the Director of Customs may suspend them on his own initiative where there are apparent and clear indications of infringement.
Can a trademark registered in someone else's name be cancelled?
Yes, in cases set by the Law, including where it was not actually and continuously used during the three years preceding the request (Article 22), where it was not registrable in the first place, or where it was registered by someone who does not own it. Some of these grounds are subject to time limits, and assessing the strongest ground is a matter the lawyer examines before the request is filed.
Legal Consultation
Trademark disputes bear directly on the value of a business: on the side of the mark's owner, the right to compensation may be lost or the attachment forfeited through an error in registration or timing, and on the side of the party accused of infringement, a similarity in name or packaging may turn into attached goods and a criminal complaint. The Law ties every protection tool to conditions, time limits and guarantees, so that the party who takes the wrong step bears its cost. For specialist legal consultation in company and trademark cases, or to see how this matter connects with the rules on copyright protection under Jordanian law and civil compensation under Jordanian law, you can contact Alabwini Law Firm & Legal Consultancy.
