Trademark Complications: Absolute and Relative Grounds in MENAP Countries
Registering a trademark is a long, sometimes exhausting process that requires a lot of patience. The examination stage of a trademark application, which determines whether it will be rejected or progress to registration, involves specific procedures that must be strictly followed.
Most countries in the Middle East, North Africa and Pakistan (MENAP) region examine trademark applications on the basis of absolute and relative grounds for refusal. It is essential that future trademark owners understand these principles in order to minimize the risk of a rejected application.
An overview of absolute and relative patterns
The absolute grounds for refusal are quite simple. These often include:
- Lack of distinction
- Use of generic terms
- Inability of a brand to effectively represent the goods and services associated with it
- Violation of public order
- Use of government iconography
The relative grounds for refusing a trademark application are, for the most part, more nuanced. The following conditions constitute relative bases in the MENAP region:
- If a mark is identical to an earlier mark and the goods or services specified in the trademark application are identical to those associated with the earlier mark, the subsequent application will be refused for its so-called “double identity”.
- Refusal is also almost guaranteed if a mark is substantially similar to an earlier mark and the goods or services specified in the trademark application are the same or similar to those associated with the earlier mark. In such a case, there is a risk of confusion in the mind of the public, including the risk of association with the earlier mark.
- A mark similar or identical to an earlier well-known mark is another likely candidate for rejection on relative grounds, even if it is to be registered for different goods or services than the earlier well-known mark.
In MENAP countries, examinations based on relative grounds benefit holders of earlier marks who do not keep an eye on the latest registrations. To illustrate, if not for the standards listed above, a mark which is identical or similar to an existing mark could be accepted without the owner of the earlier mark ever being aware of the potential conflict, since it is unlikely that he reads the official publications of his local brand. office on a regular basis.
To avoid rejection on relative grounds, applicants should conduct a thorough search of existing trademarks before filing their own applications. A professional trademark attorney can help you with this process and help you identify potential risks.
On the other hand, some larger trademark offices, such as the European Union Intellectual Property Office (EUIPO), do not examine applications on relative grounds, unless an opposition be formed. From a practical point of view, it would simply be impossible to examine all incoming requests against all existing registrations in multi-jurisdictional and multilingual contexts. Instead, many offices allow the relevant market to self-regulate, holding trademark owners responsible for monitoring and enforcing their rights. From this point of view, market participants should judge for themselves whether a new brand creates confusion among the general public and infringes their intellectual property rights. In cases before EUIPO, the holder of the old mark has three months from the date of publication to oppose the registration of a pending mark.
In view of this, there is some benefit to trademark offices regularly reviewing applications on relative grounds in the public interest and for the protection of existing rights. Relative grounds examination serves as a filter for newly filed applications. More importantly, it also grants additional protection to well-known marks as defined by Article 6 of the Paris Convention. After this selection process, any remaining conflict can be resolved by way of opposition.
In examination processes undertaken in MENAP countries, trademark officials may also seek to determine the association between a potential trademark registration and prior registered trademarks owned by the same applicant. Unlike relative grounds, this standard can be more of a hindrance than a help.
If a cursory study of the registers of local offices is sufficient to show that an unregistered mark under examination and a registered mark have the same owner, the examination of mark associations seems ultimately to be a time-consuming, costly and unnecessary practice. In our digital age, this practice is outdated and undesirable.
Should trademark offices accept letters of consent?
The owner of an existing trademark can issue a consent letter to a trademark applicant whose potential trademark is similar or identical to the old trademark. This letter represents an agreement between these parties, in effect indicating that the owner of the old mark gives its approval for the new applicant to use the new mark.
Consent letters do not, by default, guarantee that MENAP trademark offices will change their mind about a refusal if they have already issued the decision. Larger factors must be taken into account and satisfied.
A letter of consent still does not guarantee that registration will be granted. The decision whether or not to register a trademark is made by the relevant MENAP office on a case-by-case basis, taking into account all relevant factors.
For example, the Office may wish both parties to ensure that the simultaneous use of these similar or identical marks will not cause significant confusion to the public. Reviewers may also require the consent letter (and any other related documentation) to detail the differences in how each mark is used. If the existing mark is sufficiently well known — for example, a national or multinational mark — the Office may still reject the letter of consent.
However, if both parties to a letter of consent agree to its terms and it is found that none of the parties’ rights or the public interest are infringed, trademark offices are likely to accept such agreements during of the review process.
Should claimants be allowed to file submissions on absolute grounds?
Refusals on absolute and relative grounds can both be appealed in the form of a new application (along with all supporting documents and fees). This guarantees the claimants’ right to be heard. Nevertheless, some complicated situations may arise as a result of this procedure.
For example, a trademark office may accept an application on absolute grounds despite the questionable character of the mark (eg, it is merely descriptive or offensive). The question then arises whether the general public — or any interested third party — has the right to object to this acceptance. Unlike direct opposition cases brought by an owner of an existing mark, the applicant may not own a similar mark.
The absolute grounds for refusal of registration of a trademark are related to public order. The rationale for this legislation is to protect the legal interests of trademark rights holders as well as the general public.
Therefore, the public should be given the opportunity to file observations and arguments against the acceptance on absolute grounds of boundary marks. As this can only be done after publication of the mark, the competent trade mark office may have to reopen the examination phase. (Public plaintiffs, however, would not be parties to this proceeding.) Then, after inviting the plaintiff to comment on the submission, the office can issue a new verdict and let the claim proceed.