Afghanistan
is a member of the Paris Convention, WIPO and Madrid Protocol for the
Protection of Industrial Property; and hence an applicant may file their
applications with claiming priority based on their home applications/registrations.
The latest edition of the Nice Classification will be automatically applied in
terms of Goods and Services for the purposes of the Registration of Marks.
However, the goods under Class 33 are prohibited in Afghanistan.
Persons,
either of private of legal status, who want to register trademarks may approach
the Intellectual Property Department at the Afghanistan Central Business
Registry, Ministry of Commerce and Industries (ACBR-IP) and apply for
registration. Immediately upon the receipt of the prescribed application form
at the ACBR-IP, its contents are entered in the books of the ACBR-IP and
provide the applicant with the Payment Tariff to pay the registration fees at
the authorized bank. The Examiner in-charge of the ACBR-IP shall accept or
refuse the application within 15 days from the receipt of the payment. In case
that the application for registration of a mark is refused by the ACBR-IP, the
reason for it should be clearly stated. In that case the applicant may refer to
the Review Committee within 10 days of the notification.
If
the application for registration of a mark is accepted by the ACBR-IP or the
Review Committee, the ACBR-Ip will issue a Payment Tariff to pay the
publication fees and upon the receipt of the payment receipt of the publication
fees paid, the application will proceed to the Official Gazette publication
department within the Ministry of Justice to publish the details of the
accepted trademarks in the Official Gazette for the awareness of the public. The
following parties may file opposition notices against pending applications and
registered trademarks:
1) Those
who claim the ownership of the trademark and;
2) those
whose trademark is so similar to the applied/registered mark and that could
create confusion among the users.
If
an opposition is filed prior to the registration of the mark, it is required to
notify the applicant within 15 days. If the applicant did not withdraw the
application, the opponent may contact the Review Committee within 60 days.
During this time the registration process shall be suspended. Otherwise, i.e.,
if the opponent did not approach the Review Committee or follow-up on his
opposition; thereafter, the trademark shall be registered in the name of the
applicant. When there is an opposition is filed, the applicant may also contact
the Review Committee to substantiate his claim on the mark. The Review
Committee shall issue its verdict on such complaints on the basis of submitted
documents. The decisions of the Review Committee may be challenged at the
Commercial Court.
The
statutory limitation for hearing of any claim against a registered trademark
shall be three years from its registration. The claim of those who do not file
an objection within the said three years shall be invalid.
A
trademark registration is valid for 10 years as of the date of filing the
application (or from the priority date in case priority is claimed) and the
owner of the trademark may apply for an additional 10 years upon expiration of
the initial 10 years. A renewal application may be filed within the last 6
months of its protection period and no grace period is allowed.
Use
of marks in Afghanistan is not compulsory for filing applications or necessary
for maintaining registrations in force. However, if a registered mark is not
used for a continuous period of three years from the date on which the
trademark is actually entered in the Register of Trade Marks, its registration
becomes vulnerable to cancellation on submission of an application by any aggrieved
party.
In
case of a cancellation action on the ground of non-use, it would be the
responsibility of the owner of the trademark to prove the use of the mark in
Afghanistan. The use of the mark can be proved by submitting copies of the
bills/invoices issued with regard to the product bearing the trademark to or by
Afghan distributors. Further, advertisement of the products bearing the
trademark in any journal or any other medium may also be considered as use of
the mark.
Unauthorized
use of a trademark registered under the law or an imitation of such trademark
applied on goods and services of the same class, or sale, storing for the
purpose of sale, or exhibiting for sale of goods and services bearing a
counterfeited mark, or using a mark duly registered under the law by another
person to serve the purpose of unauthorized promotion of goods or services of
the same class are offenses punishable under the law.
Filing Requirements:
1. Name,
Address and the Legal Status of the Applicant in English;
2. A
list of the goods/services and the corresponding class(s), as per the latest
edition of the Nice Classification;
3. A
Power of attorney duly notarized and legalized up to the Afghanistan Consulate;
and
4. Prints
of the trademark.
Renewal:
1. A
Power of attorney duly notarized and legalized up to the Afghanistan Consulate;
2. Photocopy
of the registration certificate or last Renewal Certificate, if renewed once;
and
3. Prints
of the trademark, (if it is not an ordinary letters).
Recordal of Change of Name:
1. A
Power of attorney in the name of the new name duly notarized and legalized up
to the Afghanistan Consulate;
2. A
certified document showing the change of name issued by the local competent
authority and duly legalized up to the Afghanistan Consulate;
3. Photocopy
of the Registration Certificate or last Renewal Certificate of the trademark;
and
4. Prints
of the trademark.
Recordal of Change of Address:
1. A
Power of attorney showing the new address duly notarized and legalized up to
the Afghanistan Consulate;
2. Photocopy
of the Registration Certificate or last Renewal Certificate of the trademark;
and
3. Prints
of the trademark.
Recordal of Assignment:
1. Powers
of attorney from the Assignee duly notarized and legalized up to the
Afghanistan Consulate;
2. A
deed of assignment executed between the assignor and the assignee duly
notarized and legalized up to the Afghanistan Consulate;
3. Photocopy
of the Registration Certificate or last Renewal Certificate of the trademark;
and
4. Prints
of the trademark.
Recordal of Merger:
1. A
Powers of attorney from the new company duly notarized and legalized up to the
Afghanistan Consulate;
2. A
certified document showing the merger issued by the local competent authority
and duly legalized up to the Afghanistan Consulate;
3. Photocopy
of the Registration Certificate or last Renewal Certificate of the trademark;
and
4. Prints
of the trademark.
Recordal of License Agreement:
1.
Powers of attorney from the Licensee duly
notarized and legalized up to the Afghanistan Consulate;
2.
A License Agreement executed between the
Licensor and the Licensee duly notarized and legalized up to the Afghanistan
Consulate;
3.
Photocopy of the Registration Certificate or
last Renewal Certificate of the trademark; and
4.
Prints of the trademark.
Patent law has not come into force in Afghanistan so far, and it is
expected to come in force in near future. Unfortunately, at present there is a
legal vacuum in this field. Hence, it is not possible to file patent
applications in Afghanistan at present.
At present, as the only available way of protection and to provide
relatively a remedy for the said legal vacuum, we advise all our clients to
publish a Cautionary Notice in the local Newspaper(s) in the English Language.
The Cautionary Notice stating that such and such invention related
to a particular matter belongs to such and such inventors/company. Although the
publications of cautionary notices are not registered in any official
registers, and it is only an advertisement but it could be a base for claiming
priority right in the future when the patent law comes in force in the country.
Therefore the publication should be in detail, and not in a short form. If it
is published in short form, it may not serve the priority purposes.
There are no specific requirements for publication of Cautionary
Notices in Afghanistan, however the basic information needed are as follows:
1. Full
name and address of the applicant(s);
2. Full
name and address of the inventor(s);
3. Softcopy
of the specification;
4. Softcopy
of the drawings;
5. Softcopy
of the claims; and
6. Softcopy
of Abstract.