Nice Classifications in fine detail: peculiarities in the MENAP region
While all Middle East, North Africa and Pakistan (MENAP) countries follow the Nice Classification (NCL) in one way or another, there are some peculiarities regarding its application throughout the region. This article will examine some of these aspects.
Should goods / services be deemed similar if they fall into the same class and dissimilar if not?
Several countries in the region judge similarity of goods / services based only on the class(es) a trademark application is filed in – if two applications are filed in the same class, they are considered similar, and vice versa. This has some advantages and disadvantages.
Treating goods / services as similar if they fall into the same class
An advantage of this approach is that it makes the examination on relative grounds, which almost all MENAP trademark offices carry out, easier. Instead of going into a deeper comparison of the goods / services, the examiner can immediately make a judgment based on the identical classes. As a result, the trademark examination process is faster, which applicants generally welcome.
However, this method ignores market realities and creates a very restrictive environment. This is because goods / services within the same class may be very different and thus accommodating of similar trademarks. Some examples that come to mind are cosmetics and detergents, both falling into class 03; or baby food and herbicides, both into class 05. It is unlikely that businesses in these sectors are competitors, and using similar trademarks within these disparate industries should generally not confuse customers. Consequently, a more exhaustive look at the actual goods / services the respective trademarks cover is warranted, and a trademark application should not be automatically dismissed based on a similar mark in the same class.
Treating goods / services as dissimilar if they fall into different classes
The intention of this approach is understandable: Applicants should not be too constrained in choosing their trademarks. So, just because someone else is using a similar mark, one should not, by default, be prevented from using one's own for other goods / services in a different class. But again, applying this principle without a thorough look at the similar marks' goods / services causes some concerns.
If trademarks are automatically considered as not conflicting simply because they are filed in different classes, it can lead to applicants "playing around" classifications to avoid rejections. For instance, one might file a trademark for inhalers in class 05 instead of class 10 to steer clear of a similar mark in the latter, or a soft drink bottle in class 31 for the actual contents instead of class 16 for containers. Likewise, items in classes for goods can conceivably be transferred to classes for services. For example, applicants in the clothing industry might be able to circumvent rejections by filing applications in class 35 for the sale of their products instead of class 25 for the physical products, or one might do the same by filing an application in class 42 for software development rather than in class 09 for the completed program. Hence, a more in-depth examination is required rather than a superficial comparison of goods / services solely based on classes.
The new UAE trademark law tackles this issue and explicitly mentions (in Article 8 II) that goods or services shall not be considered similar to each other simply because they are listed in the same class. Nor shall these items differ based solely upon their placement within different classes.
How should applicants choose goods / services?
There are different approaches to choosing the items in the desired classes of the NCL, and one is that applicants have to select the goods / services from a pre-approved list.
The benefit of this is that it simplifies and thereby accelerates the examination of applications. The examiner does not have to scrutinize the list of goods / services, as each chosen item has already been pre-approved. We can see this in the UAE and Saudi Arabia, where examinations are exceptionally fast compared to, for instance, the United States, which is a very positive situation for applicants.
Overall, this method clarifies whether the proposed items will be accepted and office actions – and thereby costs – due to discrepancies in the list of goods / services preempted.
There are also disadvantages to insisting that goods / services are exclusively selected from a pre-approved list. When an applicant's particular product or service is not mentioned explicitly on the trademark office's list, they will be forced to choose the closest item on the list or the class heading where the latter provides comprehensive protection for the whole class. Otherwise, the applicant will have to leave out certain items they intended to include if they are not found on the pre-approved list. In any case, this causes uncertainty, leaving the applicant vulnerable to gaps in protection.
This is further complicated in countries that use older NCLs. As mentioned, all MENAP countries follow the NCL in some manner. But not all of them employ the latest edition. The result is that new products or services might not be mentioned on an older list which again puts applicants in the same predicament when being forced to select items only from a pre-approved list.
It is worth mentioning that this issue correlates with the previous point of judging the similarity of goods / services simply based on whether they fall into the same class. The trademark office will not compare the detailed list of goods / services, making it almost irrelevant to mention the particular item on the pre-approved list if one covers the intended class (by choosing the closest item or the class heading).
As we have seen that pre-approved lists have advantages and disadvantages, considering a middle way is warranted, such as the approach of the European Union Intellectual Property Office (EUIPO) or Singapore and Malaysia. In these jurisdictions, one can choose from a pre-approved list or provide one's own list. At the same time, certain benefits are offered when selecting from the former, acknowledging the aforementioned ease in examination. In Singapore and Malaysia, the official fees are lower when one uses the pre-approved list, while there is also the alternative of submitting one's own list at a higher cost. The EUIPO charges the same fees when selecting items from the Harmonised Database, but applications are examined more swiftly (Fast Track).
In summary, while pre-approved lists of goods / services have advantages for applicants in safer and faster applications, insisting that items can only be picked from them can be too restrictive in some instances. Steering a middle course by also allowing applicants to file their own lists is an approach worth considering.
Should Offices use the single- or multi-class system?
Some countries in the MENAP region have adopted a multi-class system while others only accept single-class applications, with the latter being preponderant in the Gulf Cooperation Council (GCC) region.
An advantage of single-class applications is that an objection for one class does not delay the registration of the mark in another class; there will be a separate, independent application for each class. Even though the risk of delays based on an objection for only one class in a multi-class filing could be mitigated by allowing applications to be divided, if there is an objection against some of the classes, additional time and expense will be needed to ensure the divisional application is registered under the remaining (unopposed) classes. Conducting a trademark search beforehand could present a solution to this issue. If the results are clear, one can then proceed with the multi-class application. Otherwise, at least for the classes for which there are registrability doubts, single-class applications could be filed.
A benefit of being able to file multi-class applications is, again, the obvious cost factor. Official fees, as well as agent fees, are generally lower for additional classes in multi-class applications. In addition, the administrative effort for applicants is lower when they have to docket the data and follow the deadlines for only one application. These cost savings and the ease of handling the trademark remain relevant later on when it comes to renewals and recordals, which always only have to be filed for each trademark independent of the number of classes.
The same can then be said for the trademark offices themselves, who can save time and administrative input, and thereby costs, by only having to handle one application and registration.
In a welcome step for brand owners, the new UAE trademark law introduces the opportunity to file multi-class applications. This is a positive advancement because applicants should have the option to choose, given that both single-class and multi-class filings can have advantages and disadvantages, as discussed above. As such, businesses can decide for each case whether to file a single-class or multi-class application based on factors such as the need for the registration to be issued swiftly, their preference regarding the administration of their trademarks and the possibility of encountering objections in some classes in multi-class applications.
There is evident room for improvement regarding some trademark classification practices in the MENAP region. And while progress has been made, particularly in the UAE with the new trademark law, some modifications might be required to make the classification process more applicant friendly.
The publication of a trademark is an essential step in the registration process, but it does not mean registration has occurred or is guaranteed in the near future.