Trademark complications: absolute and relative grounds in MENAP countries

Most countries in the Middle East, North Africa and Pakistan (MENAP) region examine trademark applications by considering absolute and relative grounds for refusal. It is critical for would-be trademark registrants to understand these principles to minimize the risk of a rejected application.

An overview of absolute and relative grounds

Absolute grounds for refusal are fairly straightforward. These often include:

• Lack of distinctiveness
• Use of generic terms
• Descriptiveness
• Inability of a mark to effectively represent goods and services associated with it
• Detriment to public order
• Use of government iconography
• Obscenity

Relative grounds for refusing a trademark application are, for the most part, more nuanced. The following conditions constitute relative grounds in the MENAP region:

• If a trademark is identical to an earlier trademark, and the goods or services specified in the mark's application are identical to those associated with the earlier trademark, the later application will be refused for its so-called "double identity."
• Refusal is also all but guaranteed if a trademark is substantially similar to an earlier trademark and the goods or services specified in the mark's application are the same or similar to those associated with the earlier trademark. In such a case, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark.
• A mark similar or identical to an earlier, well-known trademark is another likely candidate for rejection on relative grounds, even if it is to be registered for different goods or services from those of the famous prior trademark.

In MENAP countries, examinations on the basis of relative grounds benefit earlier trademark owners who do not keep an eye on the latest registrations. To illustrate, if not for the standards listed above, a trademark identical or similar to an existing mark could be accepted without the owner of the earlier mark ever knowing of the potential conflict, as they are unlikely to read the official publications of their local trademark office on a regular basis.

On the other hand, some larger trademark offices, such as the European Union Intellectual Property Office (EUIPO), do not examine applications on the basis of relative grounds unless opposition is lodged. From a practical standpoint, it would simply be unfeasible to examine all incoming applications against all existing registrations in multi-territorial, multi-lingual contexts. Instead, many offices allow the relevant market to regulate itself, holding trademark owners responsible for monitoring and enforcing their rights. In this view, market players should judge for themselves whether a new mark creates confusion among the general public and infringes upon their IP rights. In cases before the EUIPO, the older mark's owner has three months from the date of publication to oppose a pending mark's registration.

Weighing this up, there is a certain advantage to trademark offices routinely examining applications on relative grounds as a matter of public interest and for the protection of existing rights. Examination based on relative grounds serves as a filter for newly filed applications. Most importantly, it also gives additional protection to well-known trademarks as defined by Article 6 of the Paris Convention. After this screening process, any persisting conflicts may be addressed by way of an opposition.

In the examination processes undertaken in MENAP countries, trademark officials may also seek to determine the association between a would-be trademark registration and earlier registered marks belonging to the same applicant. As opposed to relative grounds, this standard may be more of a hindrance than a help.

If a cursory survey of local office records is enough to show that an unregistered mark under examination and a registered mark have the same owner, examining trademark associations ultimately seems like a time-consuming, costly and needless practice. In our digital era, this practice is outdated and unwanted.

Should trademark offices accept letters of consent?

The owner of an existing trademark can issue a letter of consent to a trademark applicant whose would-be mark is similar or identical to the older mark. This letter represents an understanding between these parties, effectively saying that the owner of the older mark gives their approval for the new applicant to use the new mark.

Letters of consent do not, by default, guarantee that MENAP trademark offices will change their minds about a refusal if they have already issued the decision. Wider factors must be considered and satisfied.

For example, the Office may want both parties to ensure that concurrent use of these similar or identical marks will not cause significant public confusion. Examiners might also require the letter of consent (and any other related documentation) to detail the differences in how each mark is used. If the existing trademark is well-known enough — e.g., a national or multinational brand — the Office may reject the letter of consent regardless.

However, if both parties to a letter of consent agree to its terms and it is found that neither party's rights nor the public interest are infringed, trademark offices are likely to accept these agreements during the examination process.

Should applicants be allowed to file observations on absolute grounds?

Refusals on absolute and relative grounds can both be appealed in the form of a resubmitted application (alongside all supporting documentation and fees). This ensures the applicants' right to be heard. Nevertheless, some complicated situations can arise as a result of this procedure.

For example, a trademark office might accept an application on absolute grounds despite the dubiousness of the mark (e.g., it is merely descriptive or offensive). Then, the question arises if the general public — or any interested third party — has the right to object to this acceptance. Unlike cases of direct opposition mounted by a holder of an existing trademark, the claimant might not own a similar trademark.

Absolute grounds for refusing trademark registration are related to public policy. The rationale behind this legislation is to protect the legal interests of trademark rights holders as well as the public at large.

Consequently, the public should be given the opportunity to file observations and arguments against the acceptance on absolute grounds of borderline trademarks. As this can only be done after the mark's publication, the relevant trademark office may have to re-open the examination stage. (Public claimants, however, would not be parties in these proceedings.) Then, after inviting the applicant to comment on the observation, the office can issue a new verdict and let the application take its course.