Generally, legal protection for a trademark can be terminated either by “opposition”, “cancellation” or
“revocation”. However, the ATML does not clearly define these circumstances despite implying that each has its own specifications.
738 - Sheldon W. Halpern, Craig Allen Nard and Kenneth L. Port, Fundamentals of United States Intellectual Property Law.
p. 521.
739 - W. J. Lane, Compulsory Trademark Licensing, Southern Economic Journal, Vol. 54: 3, (1988), p. 643. Available at:
http://www.jstor.org/stable/1059008. Last accessed June 15, 2016.
740 - Mohammad Hamed Hakimi, officer of the CBR trademark registration section. October 24, 2016.
741 - Sheldon W. Halpern, Craig Allen Nard and Kenneth L. Port, Fundamentals of United States Intellectual Property Law.
p. 522.
742 - According to information provided by the CBR office on October 24, 2016.
168 4.8.1. Opposition
Opposition is a formality brought by a third party that aims to impede an applicant from registering a trademark.743 According to Article 25 of the ATML, the opposition or objection procedure will be requested by the owner of a trademark or any person who claims that a trademark to be registered is similar or identical to his mark, which will confuse consumers.744 The procedure for opposition is defined by Articles 11 and 26 of the ATML. The ATML distinguishes between objections against registration of a trademark after the submission of an application, and objections filed after the registration of a trademark in the CBR office has been completed. In the first stage, the CBR office has the authority to review registration applications and to confirm their conformity with the applicable laws and regulations. At this stage, the CBR office is obliged to reach a decision within 30 working days whether it will accept or reject the application. Where an application is rejected, the CBR office should explicitly explain the reasons for the rejection. If the application is correctable, the applicant has 30 working days to rectify and adjust the application, otherwise the mark will not be registered and the application is deemed rejected.745 According to Article 11 of the ATML, if the applicant is not satisfied with the decision of the CBR office, he can refer to the Commercial Court. However, at this stage, the senior trademark owner is not involved in the rejection of an application, because a trademark proprietor will not know about the application that has been submitted to the CBR office. Furthermore, there is no functioning procedural system in place to inform the senior trademark owner.746 However, in the second stage, the CBR office has no objection. In contrast, the previously registered trademark owners or their representatives can submit their objections to the CBR office. At this stage, after a newly registered trademark has been published in the Official Gazette, the senior user of a trademark has to submit his objection to the CBR office. The CBR office examines the objection and informs the junior trademark applicant about the objection. If the objector or senior user of a trademark is not satisfied with how the CBR office resolves the matter, he can refer to the Commercial Court.747
743 -Jeremy Phillips. Trade Mark Law A Practical Anatomy, p. 424.
744 - Article 25 states that: “The following persons may object to trademarks in respect of which registration application is made or registered: 1) Person claiming that the trademark is his/her own. 2) The person that the mark is similar to his/her trademark to the extent that consumers mistake it.”
745- ATML, Art. 26.
746- Article 11 of the ATML states that: “The Central Registration Office (the Trademarks Registration Section) shall be obliged to review the applications from the point of view of their form, nature and their compatibility with the provisions of the present law and shall either accept or reject the application within 30 days from the day of the receipt of the application.”
In case of rejection, the Central Registration Office shall be obliged to clearly mention the reasons for rejection. In such a case, the applicant may, within 15 days seek remedy and resubmit his application to the Central Registration Office (the Trademarks Registration Section) or appeal the rejection to the local commercial court.
747 - ATML, Art. 26.
169 4.8.2. Cancellation
A cancellation proceeding is a situation in which a trademark has been registered but should not have been. Cancellation mostly occurs after the registration of a trademark in the CBR office. The registration might be a consequence of negligence on behalf of the official authorities or ignorance of the interested persons that a given time-period for opposition has passed. For example, by virtue of Article 26 (1) of the ATML, if the interested person was not able to present its objection within 30 days after the publication of a trademark in the Official Gazette, the trademark will be registered in the name of the new applicant.748 During this period, a trademark will be “contestable”. The ATML provides no specific provisions to address the contestability of a trademark. However, the context of Article 30 implies that any kind of dispute regarding the registration of a trademark will not be heard after the passing of one year from the registration of a trademark. This Article is called the “statute of limitation” for trademark disputes. Therefore, an interested party has the right to refer to the competent court and ask the court to cancel or annul the registration of a trademark. If an interested party does not issue a complaint within one year of the registration of a trademark, the newly registered trademark becomes “uncontestable”.749 Nonetheless, it will be difficult to remove a trademark for which the objection period has already expired, as the legal status of the trademark is not in the application stage (before the registration and publication of a trademark in the OG). However, cancelation of a trademark is possible when it is
“inherently unregisterable” or there is “likelihood of confusion” with an already registered trademark or the registration of a mark is based on the “bad faith”750 of an applicant (these issues have already been examined in the previous section of this chapter). At the same time, under certain circumstances cancelation is not contestable. For instance, if an interested party does not submit its objection within one year after the publication of a trademark in the Official Gazette, its registration will not be cancelled. In such a case the trademark will be “uncontestable”.751
4. 8. 3. Revocation
Basically, a trademark is protected so long as the owner of a trademark wants to use it in the course of trade. A trademark is deemed “abandoned” when its use has ceased. The rationale behind this abandonment is to release or return a mark to the “public domain”, obviate the exclusivity of a
748 - ATML, Art. 26 (1).
749 - Article 30 of ATML states that: “The period of time elapse for hearing the lawsuit related to registration of trademark shall be one year, and the claim of those who fail to object thereto within the said period following the registration date of the trademark shall not be valid.”
750 - For instance, a person has stolen another person’s trademark and wants to register it in his own name. In this instance, the application is based on bad faith. See also, Jeremy Phillips, Trade Mark Law A Practical Anatomy, p. 445.
751- Jeremy Phillips, Trade Mark Law A Practical Anatomy, p. 426.
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trademark right of the owner and let people use the mark again.752 Therefore, revocation implies that a registered trademark is not in use. A trademark will be revoked either due to “non-use” or “misuse behaviour”. Misuse behaviour is conduct that causes a trademark to lose its distinctiveness.753 Article 22 of the ATML, under the title of “termination of ownership of the trademark”, lists different issues that can lead to the removal of a legally registered trademark by the CBR office. These instances are as follows:
“1- Cessation of trade, industry, agriculture and services, which may relate to ownership of specific trademarks.
2- Sale or other transfers of the right of ownership to a third party in accordance with provisions of law.
3- Failure to apply for renewal of the trademark registration right within six months of expiration of the registration, according to clause (2) Article (19) of the present law.
4- If it is proved that the trademark has not been used for three consecutive years, the relevant Commercial Court may issue an order concerning termination thereof, unless the owner of the trademark [the first person] provides justification for the non-use thereof within the specified period of time. Under such circumstances, the trademark shall, upon application by the person in whose name the trademark has been registered, be registered taking into account the provision set forth in clause (2) of Article (12) of the present.
5- Issuing the competent court’s order related to revocation of ownership right”. 754
With regard to the non-use of a trademark for three years, situations may arise in which a trademark owner only begins to use the trademark in the last weeks or days before the grace period for revocation or the statute of limitation has expired. In such a case, if the owner is permitted to cut the three years of non-use of a trademark, one or two weeks before the expiring date of non-use of a trademark, then what would the legal status of a trademark be. For instance, the ATML provides no details for situations in which trademark proprietors suddenly understand that they will lose ownership of the trademark on grounds of non-use for more than two and half years and then suddenly initiates its use. Moreover, there are no other instructions or guidelines within the Ministry of Commerce and the CBR office to address this issue. However, according to Jeremy Phillips, this kind of use “will not avail him [trademark owner] unless he started using his mark more than three months before the applicant for revocation commenced his action”.755 Nevertheless, it is still not clear why Jeremy Phillips proposed the
752 - Stacey L. Dogan and Mark A. Lemley, A Search Cost Theory of Limiting Doctrines in Trademark Law, Vol. 97, TMR, (2007), p. 1249. Available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=977320. Accessed on June,17, 2016.
753 - Charles R. McManis, Intellectual Property and Unfair Competition, p. 158.
754 -ATML, Art. 22.
755 - Jeremy Phillips, Trade Mark Law A Practical Anatomy, p. 437.
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three month time frame. The rationale behind this may lie in “bona fide” use, as well as the continuous use of a trademark, which are the principle components of trademark usage. Furthermore, it suggests misbehaviour on behalf of the trademark owner who wants to keep his exclusive rights to the trademark, even though it is not used in practice, in order to prevent others from using it.756.
Another situation that can arise is when three years have lapsed and no one has applied for the revocation of the trademark. In such cases, the trademark will automatically be removed or remain in the CBR office record or the CBR office has the authority to remove the trademark from the list of protected trademarks. The ATML contains no provisions to address the issue of what the procedure and mechanism for such revocation would be. However, according to the CBR office, the CBR will not look beyond each registered trademark to whether the registered trademarks are used by the owner or not.
The CBR office has no authority to remove a registered trademark from the CBR office, even if it knows that the trademark has not been used for three years. According to Article 28 of the ATML, the revocation of a trademark from the registration office falls within the jurisdiction of the Commercial Court.757 Therefore, the CBR office should send a letter to the Commercial Court requesting the revocation of a trademark. According to the CBR office, the CBR office does not have an electronic database to indicate how many trademarks have not been used and should be removed from the registration list of the CBR office.758
Moreover, there is also the question of the re-registration of a trademark after it has been removed or revoked from the CBR office on grounds of continuous non-use for three consecutive years.
The ATML is also silent in this regard and provides no answer to this question. The Benelux Court of Justice759 in 1981 re-registered a revoked trademark in the name of the previous owner of a trademark.760
Concerning non-use of a trademark for three year after its registration, the ATML is consistent with the TRIPS Agreement, as it stipulates: “If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner”.761
756 - Jeremy Phillips, Trade Mark Law A Practical Anatomy, p. 437.
757 - According to the CBR authority, June 2016.
758 - Interview with Mohammad Hamed Hakimi, head of the trademark registration department at the CBR office, October 24, 2016, Kabul.
759 - It was established between Belgium, Netherlands and Luxembourg. The organization was established by a treaty in 1944. For more information see the link: http://www.pict-pcti.org/courts/beneluxCJ.html. Accessed on June 17, 2016.
760 - Jeremy Phillips. Trade Mark Law A Practical Anatomy, p. 443.
761 - WTO. TRIPS Agreement, Art. 19 (1).
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In the aforementioned instances, a trademark will not be registered or, if it has already been registered, it will be cancelled or removed from the CBR office record. As a consequence, the owner of a registered trademark will lose ownership and thus the exclusive right to use the trademark. Likewise, the trademark status at the stage of termination is also important, namely whether the trademark is in a pre-publication stage or post- publication stage. If a trademark is at the pre-publication stage, the CBR office has the authority to reject the application for the registration of a trademark based on reasonable notice.762 If a trademark is at the post-publication stage, the Commercial Court has authority to revoke the trademark from the CBR office record.763
It can be concluded from this chapter that trademark legal protection is mostly associated with the acquisition, the legal assignment and termination of a trademark. The legal protection of a trademark is a basic issue for every legal system. A trademark is generally acquired through the registration of a trademark, use of a trademark, or both. To acquire ownership of a mark, the owner needs to register or use it. Obtaining a trademark right through registration or use are the two main legislative models for granting trademark rights. The registration-based model, in fact, is in according to the “efficiency” and it grants trademark rights based on who registers a mark first. The use-based model is based on the objective facts of trademark use and grants ownership of a trademark to the person entity who first used it. The mixed system applies both the registration and use-based models together.
In civil law countries, to achieve ownership of a mark, the prospective trademark owners are required to register their marks at the related registration office. Trademark registration protects marks against counterfeiters. More importantly, registration can be used to prevent original (senior) marks from trademark infringements and stabilizes the use of trademarks as a form of property. However, the legal effects and consequences of trademark registration are only limited to the country of registration.
The significance of a trademark depends not only on the mark itself, but is also related to the reputation gathered by its use. Therefore, a close relationship between the mark and the products is created by the use-based model. On the other hand, an unused mark is just a pure symbol and not a trademark, in the sense of substantial meaning. Only under the “use-based” system will the establishment of a trademark right receive a “basis of legitimacy”. In order to legally protect a trademark, it should be used, and such use must be sufficient. Moreover, in order for a mark to be legally protected in the use-based system, it needs to be inherently distinctive. Distinctiveness appears in three forms: fanciful, arbitrary and suggestive. If a mark is not distinctive, it should have or embrace a secondary meaning.
762 - ATML. Art. 11. (1).
763 - ATML. Art. 22 and 32. (1).
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Afghanistan’s trademark law has been affected by both use-based and registration-based acquisition systems. This is testified to by Articles 7 and 21 of the ATML, which recognize trademark rights based on both the registration and use-based models. However, in the legal system of Afghanistan, the legal protection for a national and international trademark holder is the same and there is no discrimination between them, apart from a formal and procedural point of view.
One more consequence of the legal protection of trademarks is the assignment and termination of a trademark. According to the ATML, the owner of a mark has the right to transform their mark via selling, donating and any other legal actions. However, one of the most predominant forms of trademark transformation in the current global economic climate is licensing, which plays a significant role for the economic development of a country, particularly in the developed economy. Different types of licensing agreements are concluded between a licensor and a licensee. The ATML does not cover trademark licensing. It is expected that, in the future, by the development of business in Afghanistan it would be vital for the legal system of Afghanistan to provide and define the legal framework for trademark licensing.
Trademark rights, as a sort of property, will not be maintained by the owner of a trademark forever. The legal protection of a trademark can be terminated under certain circumstances. There are three kinds of termination: First, a trademark can be terminated as a result of opposition, which must occur at the registration stage. Second, it can be cancelled at the request of a third party after the registration of a mark and its publication in the official gazette if certain conditions are fulfilled. Third, a duly registered trademark can be revoked by the registration office under certain circumstances, such as non-use of a trademark for more than three consecutive years. Cessation from trade and failure to apply for renewal of trademark registration within six months of expiration of the registration amounts to a de facto trademark revocation.