14 novembre 2023
Brands Update - November 2023 – 6 de 6 Publications
Here, Munir Suboh, our new trade mark lead for MENA, considers trade mark laws in the Middle East with a particular focus on the GCC countries - Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE.
Munir has been based in the Middle East and North Africa since 2006. He has been practicing IP, with a focus on trade mark and copyright, for more than 18 years and assisted clients in numerous contentious and non-contentious trade mark matters in more than 15 countries in the region. He is currently based in the UAE and leads the IP and media practice at Taylor Wessing for the Middle East and North Africa from its Dubai office.
GCC is The Cooperation Council for the Arab States of the Gulf, also known as the Gulf Cooperation Council (or GCC). GCC Trademark Law was issued in 2006 and revised in 2014. It is a unifying (but not unitary) law covering the protection, enforcement and commercialization of trade marks in all GCC countries - Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE.
However, it has not been implemented in the UAE or Qatar (and it might be that it is never implemented in these countries).
Clearance is a very critical step that all brand owners are urged to take before using or applying to register a mark in the region.
In many Middle Eastern countries, trade mark records are not publicly available, which means that the only option is to request the relevant national office to conduct an official search on behalf of the brand owner (if such a search is offered). Indeed, an official search is mandatory in certain countries such as Iraq. However, such searches are often not comprehensive or accurate. For example, official searches in the UAE, Saudi Arabia, Bahrain, Qatar and Oman will only identify immediate (but not all) threats.
Saudi Arabia took promising steps early in 2023 and launched its own accessible and searchable trade mark portal which includes a reasonable amount of information about existing records. The portal does not include all marks, but the plan is to make one that does. Similar steps are expected in other countries but there is no clear time frame for this to happen.
In other countries, such as Kuwait, it is not even possible to conduct an official search and so the main options are to examine lists of published marks or attend in person to conduct a manual search of the official register.
While the above continues to be the case, we recommend that official searches be undertaken (where mandatory or of value) and that they are supplemented by additional searches by local lawyers such as of trade directories, domain names, company name registrations, the internet and (where possible) the trade mark register itself (either directly or through commercial providers).
Publicly available databases (such as the WIPO global brands database) do not have all Middle Eastern countries (eg Saudi Arabia is not covered) and won't cover all potential relevant prior rights so should be used with caution. They can, however, be useful to check for any "knock-out" prior rights. Commercial databases (of the type Taylor Wessing subscribes to) can also be helpful tools but are not necessarily up to date or complete.
It is common in the Middle East for a similar/identical earlier mark to be cited against an application on the basis that they are in the same class. It often does not matter if the goods/services of the application are similar or related. For example, a sunglass manufacturer and a software developer could not register the same (or a similar) mark in class 9, even though they are unlikely to be confused.
This is largely because the class heading is still considered to cover all goods/services in the class, which means that many owners have coverage for the entire class. Objections of this nature can be difficult to overturn. Options vary from region to region but can include filing arguments about the differences between the marks and/or goods/services, submitting evidence of registration/use in other countries or prior use in the country of application, letters of consent and attacking the prior mark.
Prior use is not required for registration in any of the GCC countries and generally in the Middle East.
Prior users of marks can often challenge later conflicting registrations but cannot bring infringement claims. Registration therefore remains the best tool to try to secure ownership of marks.
Unfair competition is a developing area in legislation and many countries do not have sufficient provisions or standalone regulations to protect unregistered rights. Jordan is one of the few countries with a standalone unfair competition law which helps owners of unregistered trade mark rights to initiate claims and enforcement proceedings. We therefore recommend that key brands are protected by registration in key territories.
A legalized Power of Attorney from applicants is one of the documents that most countries require either at the time of filing or during the prosecution process.
Some countries, such as Saudi Arabia, Bahrain and Oman, are signatories to the Hague Agreement on Apostilled Documents, which relieves brand owners of legalization formalities. However, registration systems in most Middle East countries, including Qatar, the UAE, Kuwait, Jordan, Egypt, West Bank, Syria, Yemen, Sudan, Iraq and Lebanon, require a legalized Power of Attorney at some point in the trade mark application process. Many of the North African countries, such as Tunisia, Algeria and Morocco, have more relaxed formalities and their systems accept local attorneys filing the application based on simply signed powers of attorney.
While many Middle Eastern countries follow the Nice classification system, most are not using the most recent version. Some applications – such as those in Saudi Arabia and Kuwait - must be filed by reference to a strict and preapproved list of goods/services. Conversely, countries such as the UAE, Qatar, Bahrain and Oman allow free drafting of specifications, but these should be carefully drafted/proposed to avoid rejection and/or office actions.
In addition, in many Middle Eastern countries, it is not possible to register marks for alcoholic beverages in Classes 32 or 33 or pork products in any class. Registering marks for other goods/services might also be prohibited if those goods/services are deemed to be contrary to public policy or morality. There are often ways to protect marks in other classes to give some protection. Local advice is always recommended before the filing is actioned.
In many Middle Eastern countries, it is not possible to file multi-class applications – separate applications must be filed in each class (increasing costs and making management more difficult). This is the case for all GCC countries, in spite of the fact that internal regulations in those countries allow for multi-class applications (a practice that remains not implemented).
While trade mark costs are not viewed as expensive when compared with the cost of other public services in the Middle East, they remain an issue for international brand owners and costs are high when compared with fees in other countries. Many countries, such as the UAE and Saudi Arabia, have taken steps in the last few years to reduce their fees, while others, such as Qatar, have increased them.
It is important for brand owners to take local advice about their registration strategy and how costs can be minimised.
In the GCC countries, applications are usually accepted for registration in well under a year and – in some - in well under six months (assuming no major objections and/or third-party oppositions are raised).
Joining the International system is an area being explored by lawmakers and decision makers in many key markets. Of the GCC countries, the UAE, Bahrain and Oman are part of the Madrid System, Saudi Arabia, Qatar and Kuwait are not.
After the UAE accessed the Madrid system in the beginning of 2022, other countries, such as Qatar and Saudi Arabia, are considering doing the same. Kuwait's plans are still unknown, but we expect to see some progress there, too. Joining the Madrid system requires a lot of work (including upgrades to the trade mark offices, court systems and law enforcement performance) and so the time frame is usually long.
Bad faith filings worldwide have increased significantly over the past decade. Many cases involving the Middle East have been shared with the public to show how the issue has escalated, such as thousands of marks registered by one individual using discrete/inactive companies.
In reality, many jurisdictions faced with bad faith filings are ill-equipped to handle this abusive conduct effectively and hence more awareness and advocacy efforts are needed to bring this issue into the spotlight. Furthermore, the domestic laws of Middle Eastern countries need to be enhanced to enable claims based on bad faith.
In a recent review of bad faith practices across jurisdictions in the Middle East, we identified many legislative and judicial practice loopholes that need to be addressed and explained how brand owners can take preventive steps to mitigate the risks.
Options and available remedies vary from one jurisdiction to another but there has been a lot of effort to address the issue from trade mark professionals, brand owners and international associations, such as INTA. In spite of this, there is still:
No relief, statutory damages, or recovery of fees for brand owners.
The limited scope of recognition results from the fact that there is no express provision on bad faith in the GCC Trademark Law (mentioned above). This creates a situation where bad faith claims need to be brought under general absolute or relevant grounds as available under the applicable law.
In some countries, such as the UAE, however, the court system has developed some good precedents to accept traditional forms of bad faith arguments (such as bad faith filings by former agents or franchisees of the brand owner). In other countries, such as Saudi Arabia, fraud, deception or false information grounds can be argued to challenge bad faith filers.
Trying to argue bad faith within traditional absolute or relative grounds continues to be a challenge and has resulted in many cases being dismissed. That is not to say that classic bad faith scenarios would never be found by local courts or trade mark offices, but it is not always easy. Advocacy is needed in this domain for the region.
For trade mark and related advice in the Middle East, please contact your usual Taylor Wessing representative or Munir Suboh.
14 November 2023
par Louise Popple
10 November 2023
14 November 2023
14 November 2023