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MENA: No Smokescreens for Big Tobaccoâ€™s IP Protection
July 11, 2016
The Middle East and North Africa (MENA) is a lucrative but competitive market for the tobacco industry, with cases fought over the tiniest elements of packaging. Global brands should familiarize themselves with the similarities – and differences – between local regimes before diving in. So what trademark issues specific to the MENA region should the tobacco companies be aware of when it comes to protecting their valuable trademarks?
With tobacco companies venturing into the electronic cigarette market, obtaining the proper protection in this innovative industry is an aspect worth considering. While class 34 covers the goods for tobacco products, classes 9 and 11 cover goods for electronic cigarettes and vapor cigarettes. No specific requirements are stipulated for the registration of trademarks in these three classes. Despite that, some trademark offices allow the filing of application claiming the whole class without specifying the particular goods. The TMOs will not object to the use o f any of the class headings as being too indefinite and not specific. Further restrictions are introduced by countries such as Jordan and Sudan. The applicant must specify the goods in the class or else the application will be rejected.
Unlike in common-law countries, tobacco brand owners in the MENA do not usually face significant difficulties in registering slogans. As United States and European authorities often refuse requests on the grounds that a slogan is purely descriptive of the products or services it promotes, or lacks distinctiveness, these types of trademark applications can easily pass examination on absolute grounds by most of the TMOs of our region—with some few exceptions including Iran—as long as the mark in question is not explicitly descriptive of the products involved. In fact, brand owners are often not required to prove that the slogan they wish to protect has acquired a secondary meaning on its own.
It will take some time, if any at all, for plain packaging to reach the MENA region. Hence, tobacco companies have more freedom in the MENA in terms of marketing and registering the products.
In principle, when it comes to the TMOs of our region, it may be possible to register aspects of the shape of the product or its packaging as 2D trademarks. A 2D mark can receive similar protection under the laws of the region as any other trademark, and a simple trademark application can be filed for this purpose. In fact, trademark laws across the region are harmonized to a large extent, except for Lebanon and Morocco. In almost all the articles that define the absolute grounds of registration, the directives are equivalent in content and have to be interpreted in the same way, while the minor difference is in the scope only. In Saudi Arabia, for example, the scope is limited to what basically does not violate Sharia law.
Difficulty would basically arise at the time of substantive examination, where practice differs considerably between countries. In some countries, the application for a product shape as a trademark will be accepted without any objection as long as the pr oduct appearance has the requisite distinctive character for registration. In few other countries, a product shape will not be accepted as a trademark if the print includes no core word marks. The most probable reason is to maintain a balance between trademark laws and design laws, the latter being used to protect products having some patentable function.
A typical clearance search at the TMO is possible in all countries of our region. Trademark search is a crucial step before registration, although not being a pre-requisite for any trademark application except for Iraq. Given that almost all countries of our region are civil law countries—meaning that the code typically exhaustively covers the complete system of the law—the principle of first-tofile is given considerable weight. This means that clearance at the TMO will in principle also mean clearance as to use in the marketplace.
Registration of marks is highly recommended and the mere registration can be a basis to sue an infringer, although the risks of a non-use cancellation action must be factored-in in any filing strategy. However, unlike the U.S., where a non-use cancellation action is similar to an opposition action in applicable law, the situation is not the same in the MENA. In most countries, non-use cancellation actions must be brought before the local Courts, which can greatly increase the time, costs and even predictability of such proceedings.
In short, protection of tobacco trademarks is a challenging and labor intensive process that requires special consideration and handling. Trademark owners must be able and ready to adopt a model that incorporates both legal as well as regulatory approaches in order to arrive at well-established trademark protection strategy. Needless to say, trademark owners should seek sound advice before they decide on the best route to pursue.
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