The Trademark Registration Department in Egypt often stipulates that an applicant requesting the registration of a trademark should obtain the permission of the owner of a similar trademark that was priorly registered or applied for. Such stipulation contradicts not only the provisions of Article 9 of Law No.57 (1939) but also those of Article 77 of Law No.82 (2002). This latter article states: “the Registration Department is authorized to ask the applicant to introduce necessary amendments to the trademark subject of his/her registration application, in order to define it and avoid the possibility of being confused with any other mark that had been registered or applied for.”
The above statement shows that the legislator has granted the Registration Department a discretionary authority entitling it to ask the applicant to perform necessary amendments on the mark, providing that such amendments are restricted to the removal of any possible source of confusion.
On the other hand, by conditioning the registration of a new mark upon the approval of the owner of a prior trademark, the Trademark Registration Department is committing a violation of the concept and prerequisites of discretionary authority, for the following reasons:
Obtaining the permission of the owner of the prior mark will not result in avoiding confusion. Being irrelevant to the identity of the new mark, this stipulation is unproductive and does not fulfill the demand of introducing amendments to that mark.
The discretionary authority granted according to the above Article (No.77) is directly related to the identity of the mark subject of application, for it demands the addition of the company name next to its trademark or the deletion of a letter or a part of the mark so as to avoid any confusion with a similar mark that had been registered before. However, demanding the approval of the owner of that prior mark is outside the jurisdiction of that authority, being irrelevant to the cause of avoiding confusion for which this authority was granted.
Stipulating the consent of the owner of a prior similar mark is not an adequate measure and it can pave the way for bargaining and extortion by giving the owners of the prior mark the better negotiational position, making their consent a prerequisite of the registration of the new mark.
The stipulation is against the principle of neutrality with which new applications should be treated. It allies the Department with the owners of earlier marks instead of standing for the interest of the consumers.
Finally, owners of prior marks already have provisions that guarantee their prerogatives. Article 80 states that any concerned party can within 60 days following the publishing of a mark, file an opposition to the registration of that mark. The Registration Department can accept the opposition or require the fulfillment of certain conditions before registering the mark.