Publication and Opposition Issues in MENAP Trademark Registrations – Trademark
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Publishing a trademark is an essential step in the registration process. On the one hand, it allows the applicant to know that the mark is about to be officially registered. But this does not mean that registration has taken place or that it is guaranteed in the near future.
The publication of a trademark application can alert existing trademark owners that certain pending registrations may infringe their intellectual property (IP) rights.
Subsequently, these owners can file requests to oppose the registration of new marks within a specified period. The length of this period varies considerably between countries in the Middle East, North Africa and Pakistan (MENAP) region. For example, in the United Arab Emirates (UAE), objections must be filed no later than 30 days from the date of publication. In contrast, the Kingdom of Saudi Arabia (Saudi Arabia) allows 60 days, while Qatar requires opposition filings within four months from the date of publication.
Should the publication of trademarks be extended to generalist newspapers?
Given the importance of the publication of trademarks for the protection of existing intellectual property rights, announcements of publication should be made as accessible as possible to the general public.
Consider this: if a newly published trademark only appears in the official gazette of a local trademark office, this information may ultimately be limited to people who focus on IP news – lawyers, IP professionals and watchful brand owners. By comparison, a mark published in a newspaper or other widely accessible medium will be available to the general public, giving more owners a better chance of protecting their intellectual property.
That said, publishing through more accessible media channels will increase filing costs for trademark applicants. Additionally, they will be responsible for ensuring that the current recording is published in a newspaper or comparable media. (For many years, the UAE had required trademark applications to be published in at least two newspapers, but this is no longer required as of February 27, 2022.)
Trademark offices may consider publishing trademark applications in newspapers in some cases. For example, if officials believe that not relaying a given application outside the office gazette would potentially deprive owners of existing marks, wider publication could be beneficial. However, if the gazette publicizes the application sufficiently, IPOs should not bother with publication in newspapers.
Should the immediate filing of canceled marks be allowed?
Cancellation of a registered mark removes an existing mark from the register and provides a means for an aggrieved party to seek redress. Such a procedure is initiated when a party having locus standi files an action for nullity, either with the designated administrative body of the competent trademark office, or with the competent court in the matter.
Trademarks can be voided for a number of reasons, including the following:
- Voluntary cancellation: An owner deletes his trademark from the register by choice
- Dispute: A court declares a trademark invalid, usually due to infringement
- Noncompliance : A landlord fails to comply with local office requirements
If a trademark is canceled based on procedural requirements, the former owner should be allowed to file a new application. The local trademark office can issue its cancellation decision with a note stipulating this option.
On the other hand, if a mark is canceled following a litigation, the office should not authorize the owner of this mark to file a new application for the same mark. Allowing this action forces the previously aggrieved party to initiate further legal proceedings to arrest the plaintiff, which unnecessarily costs the plaintiff time and money.
There are some situations where the issue of filing a canceled trademark is quite complicated:
- If the applicant re-files their canceled trademark without any change in circumstances, such as circumvention by a judicial or administrative verdict resulting from an appeal, the re-filing should not be permitted.
- However, if an applicant re-files their mark but changes certain aspects of it — for example, bringing an unused mark into use, applying for registration of the mark in association with different goods and services, or changing various distinctive features — the new deposit should not be blocked only on these lands.
- More importantly, the re-filing should be allowed if a third party has obtained cancellation for non-use or misappropriation of the contested sign. While hampering the original applicant’s ability to file a new application may protect an applicant or even the general public, that is not the case here. Plaintiff’s victory at trial proves that the original plaintiff had no right in the mark (or has lost such right) and establishes that plaintiff is,or at least, Perhaps Preventing a prevailing party from re-applying for a mark to which it has proven entitlement should always be permitted. As such, the two- or three-year ban on re-filing canceled trademarks in the laws of some MENAP countries remains an oddity.
Should offices charge low or high fees?
Intellectual property offices in MENAP countries, like their counterparts elsewhere in the world, charge fees for processing intellectual property filings. Payouts in some jurisdictions in this region are very high compared to some major markets.
Offices in the region should charge a moderate fee to encourage trademark rights holders to formally register their intellectual property.
It is reasonable to say that offices located in less developed countries should charge more in order to support the local economy. However, they must ensure that these costs do not increase too much. An excessive increase in filing fees could discourage small and medium-sized enterprises (SMEs) and self-employed applicants. The consensus among intellectual property experts is that intellectual property rights ultimately benefit the economy more than the revenue governments collect by registering them. The United States, the European Union and China, all of which have relatively low fees to encourage trademark and patent filings, illustrate this logic.
Should the deadlines include the start day?
In some countries, response times for office actions or trademark renewals are determined by including the start day, i.e. the date of receipt of a letter or the date of registration of a Mark. This is usually not a problem if the deadline is expressed in months or weeks: an official letter from a trademark office dated June 1, setting a deadline of three weeks or three months, must be answered before June 22 or October 1, respectively. . Confusion may arise if the office allows 30 days. If so, is the deadline June 30 or July 1?
Most countries would set July 1 as the deadline as they do not count the first day. As stated in Article 4 C(2) of the Paris Convention: “These deadlines run from the date of filing of the first application; the day of filing is not included in the deadline.”
Including the first day in the calculation of deadlines leads to results contrary to the common interpretation: if on May 1st someone asks you to come back in two days, you will come back on May 3rd and not the end of May 2nd. Likewise, if you are told to come back in a day, that would mean tomorrow, not today. This non-intuitive method of calculating processing times for key brands can cause misunderstandings and should therefore be abandoned.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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