Application process

The application form was originally drafted by the CBR office and is accessible for applicants for a fixed price of 500 Afs, equal to 7.5 USD. The application comprises a registration request, necessary information about the applicant and the specification of the products/goods or services on which the requested mark will be used.¹³³ The specifications of the requested mark include the drawing, colour, size and a specimen of the requested mark. All of this information should be prepared in hard copy. The application can only be filed in Dari and Pashto, the official languages in Afghanistan.¹³⁴ The CBR office has no capacity to receive applications and the necessary documents via internet or electronically.

According to Article 10 of the ATML, the application will be submitted to the CBR office by legal or natural persons, either by themselves or by a legal representative.¹³⁵ All of the requirements pertaining to the filing and registration of trademarks are governed by the Trademark Registration Guideline (TMRG), or Tarzulamal.¹³⁶ The application should be signed by the owner of the business or by a legal representative. In the latter case, the representative should provide all necessary supporting documents to prove the power of attorney or legal representation for the registration of the trademark.¹³⁷

For foreign applicants, no particular application form is provided in other languages – not even in English – apart from Dari and Pashto. A foreign applicant should fill out the application in consultation with a trademark lawyer. The owner or legal representative of a foreign company should provide valid translations of all necessary documents. In addition, for a foreign company, approval from the country of origin and the Afghan Ministry of Foreign Affairs (MoFA) is also required.¹³⁸ Another issue that is important for the registration of a mark is the citizenship of the applicant, which should be stated in the application. For a natural person it would be enough to mention that he or she is a citizen of

133- Ministry of Commerce and Industry, Trademark Registration Guideline, (2015), Art. 30. [hereinafter TMRG].

134 - Afghan Constitution, Art. 16.

135- The ATML, Article 10 states: “Legal and real persons may apply for registration of a trademark either personally or through their respective legal representatives. The Central Registration Office (the Trademarks Section) shall be obliged to enter the contents of trademarks into the registration book and give or send a receipt to the applicant.”

136 - In terms of hierarchy of legal sources and documents, the Guideline, or Tarzulamal, comes after the regulations and laws. Each central governmental institution can enact some sort of guideline or Tarzulamal to illustrate the procedures required to fulfill the requirements of the laws and regulations. The Tarzuamal was enacted in 2015 by the Ministry of Commerce and Industry to regulate the registration process as well as the obligations and authority of the CBR office.

137 - TMRG, Art. 9 (2).

138 - TMRG, Art. 19.

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Germany or the United States of America, for example. For corporations, companies or other business entities, the country of origin should be stated.¹³⁹ It is noteworthy that there are different kinds of application forms, for instance: application for the registration of a trademark; application for the renewal of a trademark; application for the assignment of a trademark; application for the merger of a trademark; application for changing a trademark; application for changing the name and address of a trademark. It should be noted that, in the application, all necessary information for identifying the products and services that will fall under the trademark must be provided, as well as an illustration or drawing display of the requested mark intended for use on the stated goods and services.¹⁴⁰

1.6.2.1. Identification of products/goods and services

One of the issues that need to be clearly stated in the application form is the specifications of goods and services. In this regard, the applicant should identify the goods and services for which a mark will be used for identification. For this purpose, the International Classification of Goods and Services Nice Agreement needs to be considered.¹⁴¹ While Afghanistan is not a member to the Nice Agreement, and the ATML does not explicitly refer to the Nice classification of goods and services, in practice the Nice Agreement has nonetheless been applied by the CBR office.

According to Article 11 of the TMRG, trademark registration applicants are required to clearly state the name of the goods and services as well as the number of classes used for these goods and services. One application may cover different goods and services which might be related to different classes. Each good and service should be named in the application. However, for each class of goods and services, an amount of 200 Afs (equal to 3 USD) will be charged in fees. With respect to determining the registration fee, Article 34 of the ATML states that “the owner shall be obliged to pay the trademark registration fee the amount of which shall be determined by the Council of Ministers”.¹⁴² However, in practice, the amount of the fee is determined by the TMRG, which stands in direct conflict with what is stated in Article 34 of the ATML. The total fee for registering a trademark for one class of

139 -Deborah E. Bouchoux. The Law of Trademark, Copyrights, Patent and Trade Secrets. Fourth Edition, New York, Delmar Cengage Learning, (2013), p. 58. [hereinafter Deborah E. Bouchoux, The Law of Trademark, Copyright, Patent and Trade Secrets].

140 - TMRG, Art. 19.

141 - “The International Classification of Goods and Services for the Purposes of the Registration of Marks was established by an Agreement concluded at the Nice Diplomatic Conference, in 1957, was revised at Stockholm in 1967, at Geneva in 1977, and amended in 1979.” For more information see

http://www.wipo.int/treaties/en/classification/nice/summary_nice.html

142 - ATML, Art. 34.

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goods and services, considering the entire process, is 7,500 Afs, which is equivalent to 113 USD.¹⁴³ The fee for publication of a trademark in the OG is not included in this sum.

Only those trademarks and those classes registered with the CBR office shall be afforded legal protection. According to Article 21 of the TMRG, an applicant will receive one application.

Applications that contain more than one trademark shall be rejected by the CBR office.¹⁴⁴ If an applicant wants to use one mark for more than one class of goods and services, he or she files one application and lists the names of all goods and services and classes thereof that he or she wants to use the mark for.

According to Article 18 of the TMRG, the CBR office will provide one application for one mark. If a person wants to use and register different marks for the same goods and services, or different marks for one good and service, the CBR office will demand one application for each trademark. For each mark a single application is needed.¹⁴⁵ At the same time, the CBR office issues a separate trademark registration certificate for every single successful trademark application.

1.6.2.2. Illustration and appearance of the requested mark

One more issue for the application process is to display and draw/illustrate the trademark for which registration is being sought. Since the CBR office keeps the record of the drawing mark and the public will refer to the recorded template, it should be in accordance with the actual and real mark that will be used for the products and services. This drawing/illustration will also be used for the publication of a trademark in the OG, and is displayed on the original registration certificate. Consequently, it needs to be in the same design and format. According to Article 9 of the TMRG, the application for the registration of a trademark should be “composed of coloured, black and white picture of the logo, size, design and any other attributes”.¹⁴⁶ The same specifications should be reflected in other official documents, in particular the OG and the registration certificate.

Originally there are two sorts of drawing and display of a trademark: the first is a “standard character drawing”, and the second is a “special form of drawing.” A standard drawing is “a typewritten

143 - According to Article 34 of the TMRG, the costs for registering a trademark are as follows: 1- Fee for an application for newly registering, assigning, renewing a trademark or changing the address of a trademark is 500 Afs. Afs, or Afghani, is the name of the Afghan currency). Currently (January 2018), in the Kabul money exchange market, 68 Afs is equal to 1 US dollar. 2- The fee for the registration is 3,000 Afs. 3- The fee for each class of goods and services is 200 Afs. 4- The fee for renewing a trademark is 3,000 Afs. 5- The fee for changing and modifying a trademark is 3,000 Afs. 6- The fee for exclusive or monopoly rights on a foreign company’s goods and services is 3,000 Afs. 7- The fee for receiving a copy and replica of the trademark registration documents is 500 Afs. 8- The fee for certifying the documents is 500 Afs.

144 -TMRG, Art. 21.

145 -TMRG, Art. 18.

146- TMRG, Art. 8.

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display of the mark.” For instance, the word ACKBF is deemed a standard trademark, even though what is displayed is technically not a drawing. As a matter of fact, a standard drawing is composed of “words, letters, or numbers with no pictorial elements.” In the application, the applicant should mention that the mark is as standard word or composed of characters. In such circumstances, the application should list the size, shape, font, colour and other attributes of the mark, such as uppercase and lowercase. A

“special form of drawing” is a mark that has a “two or three dimensional shape, colour, word, letter, number or combination” of them in a specific style or size.¹⁴⁷

To avoid duplications of trademarks, in most countries there are research facilities that can help applicants to select a mark that has not already been registered. In Afghanistan there are no such pre-research facilities. The CBR office registers all trademarks in hard copy and has no electronic copies. In addition, the CBR office does not upload registered trademarks to the CBR website. Another problem is that, when a trademark is published in the OG, the Gazette does not put a soft copy of the registered trademark on the Ministry of Justice (MoJ) website. The MoJ only provides a serial number and the OG date of issue. If someone wants to conduct research or inquiry before selecting a mark so as to avoid any duplication of or similarity to other trademarks, that person will not have access to the trademarks that have already been registered. In like manner, the classification of the drawings/illustration of trademarks into “standard” and “special” types has not been articulated in such fashion in the pertinent legal sources. The ATML contains no provisions on the drawing, illustration or pictorial display required for registering a mark. Articles 8 and 24 of the TMRG only require the applicant to provide a picture or drawing of the logo as well as colour, form and any other attributes of the trademark during the submission of an application.