Publication and opposition issues in MENAP trademark registrations
The publication of a trademark is an essential step in the registration process. For one, it lets the applicant know that the mark is close to being officially registered. But it does not mean registration has occurred nor that it is guaranteed in the near future.
Publication of a trademark application can alert owners of existing trademarks that certain pending registrations may infringe upon their Intellectual Property (IP) rights.
Subsequently, these owners can file motions of opposition to the registration of new marks within a specified timeframe. This period's length varies significantly between countries in the Middle East, North Africa and Pakistan (MENAP) region. For example, in the United Arab Emirates (UAE), oppositions must be filed no more than 30 days after the publication date. By contrast, the Kingdom of Saudi Arabia (KSA) allows 60 days, while Qatar requires opposition filings within four months from the publication date.
Should trademark publication extend to general newspapers?
Given the importance of trademark publication for protecting existing IP rights, publication announcements should be made as accessible to the general public as possible.
Consider this: If a newly published trademark appears solely in the official gazette of a local trademark office, this information may ultimately be limited to people focused on IP news — attorneys, IP professionals and vigilant trademark owners. In comparison, a mark published in a newspaper or another widely accessible medium will be available to the general public, giving more owners a better chance to protect their IP.
That said, publication through more accessible media channels will increase filing costs for trademark applicants. Also, they will be responsible for ensuring the registration-in-progress is published in a newspaper or comparable media outlet. (For many years, the UAE had required trademark applications to be published in at least two newspapers, but this has not been mandatory since February 27, 2022.)
Trademark offices may want to consider publishing trademark applications in newspapers in some instances. For example, if officials believe failing to relay a given application outside of the office's gazette would potentially disenfranchise owners of existing marks, wider publication could be beneficial. However, if the gazette generates sufficient awareness of the application, IP offices should not bother with newspaper publications.
Should immediately refiling canceled trademarks be allowed?
The cancelation of a registered trademark removes an existing mark from the registry and is one way an aggrieved party can seek remedy. Such proceedings are initiated when a party with locus standi files a cancelation action, either with the designated administrative body of the relevant trademark office or the court responsible for handling such matters.
Trademarks can be canceled for a number of reasons, including the following:
- Voluntary cancelation: An owner erases their mark from the registry by choice
- Litigation: A court finds that a trademark is invalid, typically due to infringement
- Non-compliance: An owner fails to comply with local office requirements
If a trademark is canceled on the basis of procedural requirements, the former holder should be allowed to refile an application. The local trademark office can issue its cancelation decision with a note stipulating this option.
On the other hand, if a trademark is canceled as a result of litigation, the office should not allow the owner of that mark to file a new application for the same mark. Permitting this action forces the priorly aggrieved party to initiate another litigation process to stop the applicant, unnecessarily costing them time and money.
There are some situations where the issue of refiling a canceled trademark is quite complicated:
- If the applicant refiles their canceled mark without any change in circumstances, such as a circumvention by judicial or administrative verdict stemming from an appeal, refiling should not be allowed.
- However, if an applicant refiles their mark but changes certain aspects of it — e.g., putting an unused mark into use, applying for the mark's registration in association with different goods and services or altering various distinctive features — refiling should not be blocked solely on these grounds.
- Most importantly, refiling should be permitted if a third party obtained the cancelation for non-use or misappropriation of the challenged sign. While obstructing the original applicant's ability to refile can protect a claimant or even the general public, this is not the case here. The claimant's victory at trial proves that the original applicant had no right to the trademark (or has lost any such right) and establishes that the claimant is, or at least, may be entitled to it. Obstructing a winning party from filing a new application for a mark to which they have proved their entitlement should always be allowed. As such, the two- or three-year ban on refiling canceled trademarks seen in the laws of some MENAP countries remains an oddity.
Should offices charge low or high fees?
The IP offices in MENAP countries — like their counterparts elsewhere around the world — charge fees for processing filings for IP rights. Payments in some of this region's jurisdictions are very high compared to some major markets.
Offices across the region should charge moderate fees to encourage trademark rights holders to formally register their IP.
It can be reasonably argued that offices in less developed countries should charge more as a way of supporting the local economy. Nevertheless, they should be careful to keep these costs from rising too much. An excessive filing fee increase could be discouraging to small- and medium-sized enterprises (SMEs) and independent applicants. The consensus among IP experts is that IP rights ultimately benefit the economy more than the revenue governments collect from registering them. The United States, the European Union and China, all of which have relatively low fees to encourage trademark and patent filings, exemplify this rationale.
Should deadlines include the starting day?
In some countries, deadlines for responses to office actions or trademark renewals are determined by including the starting day, i.e., the date a letter is received or a trademark's registration date. This usually does not cause issues if the deadline is expressed in months or weeks: An official letter from a trademark office dated June 1, setting a term of three weeks or three months, has to be replied to by June 22 or October 1, respectively. Confusion may arise if the office grants 30 days. In that case, is the deadline June 30 or July 1?
Most countries would set July 1 as the deadline because they do not count the first day. As Article 4 C(2) of the Paris Convention states: "These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period."
Including the first day in the calculation of deadlines leads to results that are contrary to common interpretation: If on May 1 someone asks you to come back in two days, you will return on May 3, not the end of May 2. Similarly, if you are told to return in one day, that would mean tomorrow, not today. This unintuitive method of calculating key trademark process deadlines can cause misunderstandings and should thus be abandoned.
Understanding how to trademark a brand and properly leverage marks within your marketing efforts is essential for protecting and expanding a business identity.