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Confectionery “companies are going to extraordinary measures to safeguard themselves in an increasingly competitive industry with ever-increasing stakes. Global brand owners are zealous in their efforts to deny their competitors any advantage, trying to safeguard even the tiniest aspects of their brands. This blog focuses on trademark concerns in the confectionary sector, particularly in the Middle East and North Africa (MENA) area, and how confectioners may safeguard their valuable trademarks.
[Picture Credit: gettyimages]
Important elements to keep in mind whileregistering confectionary trademarks
- Packaging and three-dimensional trademarks:
- A three-dimensional (3D) trademark can typically be registered based on a product’s shape or packaging. A 3D mark can be protected in the same way as any other trademark by filing a simple trademark application. With the exception of a few nations like Lebanon and Morocco, the region’s trademark laws are mostly unified. Almost all articles specifying absolute grounds for registration are nearly identical in content and should be read similarly, with slight exceptions in extent. For example, in Saudi Arabia, the scope is limited to what does not contravene Sharia (Islamic) law. However, problems can develop during the substantive test, where practice varies greatly between countries. Some jurisdictions will accept a trademark application for a product shape without objection if the product look has the required unique character. This means that the more closely the mark resembles the shape that the product in question is most likely to adopt, the more likely it is to be free of any distinguishing characteristics. This form of office action is frequently issued by the trademark offices of Saudi Arabia and Kuwait.”
- Colour marks: The “majority of regulations in the region do not specifically allow for the registration of non-traditional trademarks like colour markings. Libya is one of the few countries to have enacted unambiguous legislation that expands the definition of a “trademark” to include trade names, sound marks, and colour markings. Many concerns about the definition, scope, and enforceability of trademarks, however, remain unresolved. Even if colour marks are legal in a given area, an examiner is likely to reject this type of application because there are few, if any, precedents in the field. Only applications for colour markings that are related with a conventional trademark will be accepted by trademark offices (ie, a word mark, device or combination of the two).
- Slogans: In contrast to the situation in common law nations, brand owners in the MENA area rarely have trouble registering slogans. While European and US authorities frequently deny requests on the grounds that a slogan is either purely descriptive of the products or services it promotes or lacks distinctiveness, most MENA trademark offices (with a few exceptions, such as Iran) grant these types of trademark applications on absolute grounds, provided that the slogan in question is not explicitly descriptive of the products involved. Brand owners are frequently exempt from proving that the slogan they want to keep has gained secondary meaning.”
- Classification: When “it comes to registering marks in Classes 29 and 30, there are no precise prerequisites. In some jurisdictions, an applicant can file an application claiming the entire class of goods without mentioning the individual products. As a result, using class headings entitles you access all of the goods that come under that class, as well as any items that are closely related to the class headings (ie, more than the literal meaning of the class headings). In Qatar, however, there is an exception to this regulation. Applicants must specify the items in Class 29 notwithstanding the fact that class headers are permitted in Class 30; otherwise, the application will be refused on absolute grounds. Other countries, such as Jordan and Sudan, have imposed additional limits, requiring the applicant to specify the commodities in the class in order to avoid the application being refused. In other words, the parameters of the extent of protection granted by a registration will be determined by the actual language of the items stated in the registration.
- Unique & Distinctive Brand Name: For confectionary trademarks registered in the UAE, a distinctive brand name and emblem provide good protection. The UAE Trademark Office may refuse registration if the name is descriptive or generic. Descriptive trademarks are words that directly define a product’s quality, characteristic, or outcome. For example, the descriptive name’sugary sweet’ for a candy product may be denied trademark registration in the UAE. Consider XEROX, Dubizzle, or Google, all of which have powerful trademarks based on invented or imaginative phrases.
- Enforcement of Trademark Law in protection of confectionary products
For certain confectioners, the packaging is everything, thus safeguarding the key characteristics and qualities of this is essential. To arrive at a well-thought-out trademark protection plan, rights holders must be ready and willing to embrace a trademark protection model that integrates both legal and regulatory approaches.”
How Infringement can be claimed?
In “order to prove infringement, the owner must show that: • there is a genuine mark eligible to protection;
- third parties are using this mark without permission in connection with the sale or advertising of goods; and
- this use is likely to cause confusion. Even if there are legal trademark registrations for the product’s shape or packaging, proving risk of misunderstanding is always the priority, which can be difficult to prove.
Courts in some nations, such as Saudi Arabia, the United Arab Emirates, and Kuwait, do not look beyond the word marks at issue, according to custom. Infringement is usually discovered when the word marks are sufficiently similar to cause consumer confusion.” The degree of resemblance between the markings concerned, as well as the degree of distinctiveness and recognition of the mark, are all intimately implicated. “Expert testimony and studies meant to indicate actual consumer confusion may be given weight by the courts, but this is not a given (in cases where the rights holder can present evidence of this).
Unfair competition claim
In terms of launching an unfair competition action, most MENA countries are regulated by civil law, which includes unfair competition regulations. Consumer deception or a threat to business interests are the main targets of unfair competition accusations. Although unfair competition claims may overlap with trademark infringement claims, the standard of proof in an unfair competition action is typically higher than when rights holders seek to prove that their registered marks are being infringed.
Establishment of anti-fraud department
Some countries, such as Saudi Arabia, the United Arab Emirates, Oman, and, more recently, the Kurdish region of Iraq, have official anti-fraud and regulatory authorities that can take administrative action to enforce trademark rights in their respective countries. These organisations usually only look into complaints about counterfeits or lookalikes, and raids are only conducted if the findings are conclusive.” In Saudi Arabia, for example, the Saudi Commercial Anti-fraud Department reported in its most recent semi-annual report that more than 2,000 complaints were filed with the Ministry of Trade and Industry in the second half of 2013 against local companies for the alleged distribution of counterfeit products, including confectionery. “The report also acknowledges the Commercial Anti-fraud Department’s and Customs’ collaborative efforts, which resulted in the recovery of a considerable number of counterfeit items smuggled into the nation. Penalties for the culprits included monetary fines of up to Sr1 million (about $260,000) and legal prosecution leading to up to three years in prison (as outlined by the country’s Trademark Law and Commercial Anti-fraud Law). As a side note, most MENA nations have anti-commercial fraud legislation in place to adopt legal measures and strategies to combat commercial fraud. The latest of these was endorsed in the United Arab Emirates in 2013. Although there is as yet no pan-Arab anti-commercial fraud law, a unified law for the Gulf Cooperation Council is expected to be endorsed once it is approved by all member states.
Due to the extremely competitive nature of the market, confectionery brands must register their trademarks in the Middle East. The market is inundated with both major and small firms fighting for dominance. Confectionary enterprises require efficient enforcement of trademark protection regimes set by the government since a competitive market is prone to hazards of infringement and counterfeiting.”
Author: Anuja Saraswat – a student of B.A.LL.B (Hons.) from NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back to us via email firstname.lastname@example.org or at Khurana & Khurana, Advocates and IP Attorney.