Sponsored roundtable discussion: Arab trade marks

There is some element of harmonisation with common standards available across the different Arab countries, as evidenced by the introduction of a GCC trademark law published in 2006 (still not ratified by all member states). The law outlines the general directives and rulings governing trademark registration, renewal, assignment, and cancellation in all 6 GCC countries. As for the remaining Arab countries, each has the primary responsibility for the regulation of trade mark matters within its jurisdiction and consequently each has its own trade mark laws with slight differences in the procedural aspects.

The standard definition of a trade mark is common and the absolute grounds of registration are relatively the same with some minor differences. In Saudi Arabia, for example, the trade mark law of 2002 is to be used in conjunction with the Shari'a law (the body of Islamic religious law). Unsurprisingly, the country demonstrates greater sensitivity to religious tradition. In accordance with Shari'a law, trade marks covering alcoholic goods and related retail or wholesale services are prohibited within the kingdom. Trade marks associated with other prohibited products and practices, including references to such products and practices, would also not be registrable. These would include gambling devices and pork products.

"In accordance with Shari’a law, trade marks covering alcoholic goods and related retail or wholesale services are prohibited within the kingdom"

With the exception of Morocco and Lebanon, ex officio examination on relative grounds is performed in all countries. Also, nearly all countries except Lebanon provide opposition proceedings prior to registration. The length of protection of a trade mark and the method of renewing a trade mark is almost the same – 10 years in nearly all countries (with the exception of Lebanon, West Bank, Gaza and Saudi Arabia).

Arab countries are in general first-to-file countries. Therefore, trade mark owners with plans to eventually extend into the Middle East should consider filing the trade mark applications before someone exploits the brand equity that has been established in the home country and files for the same trade mark abroad.

When it comes to the treatment of trade marks in a multi-lingual context, the trade mark laws of Arab countries are traditionally designed to avoid conflicts between marks across different languages, and to provide specifically for the protection of the transliteration of marks. Accordingly, the registration of a trade mark in its Latin (original) script in any Arab country should, in general, provide protection against the registration of another confusingly similar transliteration liable to create public confusion. Furthermore, most Arab countries are member states of at least one of the following international agreements that address the protection of trade marks: the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), the Trade mark Law Treaty, and the Madrid Agreement Concerning the International Registration of Marks and related Protocol. These systems provide for the protection of rights across different languages and different character scripts as part of the protection against unfair competition.

While the transliteration of the mark is protected, likelihood of confusion is easier to prove when comparing marks in the same language. Having said that, registering trade marks in transliterated Arabic script, in addition to their original format, is advisable considering that most Arab countries are in principal governed by civil law – that is, the concept of first to file carries considerable weight. While some countries may offer a limited number of common law rights, registration is highly recommended and can be used as a basis on which to sue an infringer. Needless to say, the risks of a non-use cancellation action must be factored into any filing strategy. It is important to note that in most Arab countries non-use cancellation actions must be brought before the local courts, which can greatly increase the time, costs and even predictability of such proceedings.

Over the past several years, Arab economies have opened up and more and more brand owners are looking into the Middle East to market their products. Therefore, it is now increasingly important for trade mark owners to take into account considerations of language and culture. The process of transliteration of a trade mark into its local character or language is important for trade mark owners seeking to promote or sell their products in that market because many consumers will identify goods by their local-character trade mark.

Also, in many countries, use of a mark in Arabic may not be a matter of choice but is a statutory requirement governed by local regulations. These include resolutions and directives by the national FDAs, Ministries of Health or Trade, Consumer Protection laws as well as municipal or civic guidelines regulating the use of trade marks in advertising, print on packaging, publications, signboards, etc. To elaborate, many Arab countries call for the compulsory use of the Arabic script of a mark on certain products and in certain industries. For example, marks on signboards in Kuwait, Qatar, Saudi Arabia, and the UAE must appear in Arabic in compliance with the local regulations. Therefore, it is advisable to register the transliteration in the local script. On a side note, the Gulf – with the UAE in the lead – has major new retail space under development perhaps more than anywhere else in the world. This will ultimately lead to a higher demand for signboard permits with a display of marks in Arabic.

There is also a similar regulatory language requirement for pharmaceutical packaging in almost all Arab countries by virtue of which trade marks used on pharmaceutical products should be bilingual with Arabic always being one of the languages used. This is specifically the case in Algeria, Egypt, Morocco, Qatar, Saudi Arabia, Tunisia and the UAE.

In countries where use in Arabic is not a requirement, there are a number of variables brand owners need to factor in to decide whether or not to use and register in Arabic and register their trademarks in Arabic including:

1) Nature of mark: Trade mark practitioners should work together with the business to establish a clear and consistent process in order to decide which of their marks need to be in Arabic script. House marks and trade marks of key products should be the first set of marks to file for in Arabic.

2) Duration: Marks used in the long run should definitely be prioritised over marks with a short-term initiative.

3) Importance of market and cost considerations: It is important to select countries in a way that would enable trade mark owners to eventually establish a solid portfolio in order to enforce their rights.

4) Extent of dilution: Unlike the United States, Arab countries have no express anti-dilution provisions in their trade mark laws. Nevertheless, many countries have introduced provisions into their laws on the likelihood of confusion between conflicting marks as part of their implementation of the TRIPs Agreement. In principle, the reference to certain provisions of the laws on the likelihood of confusion should provide a basis for actions in cases of dilution. With this in mind, trade mark owners may choose to register in Arabic as a part of an overall offensive strategy against the threats of dilution.

Clearly, a key disadvantage of choosing an Arabic trade mark is the additional costs of clearance and registration. However, in our opinion, the benefits of using and protecting a mark in Arabic outweigh the associated costs.

At a glance: Arabic trade marks in the region
Country	Use of Arabic compulsory	Local authority	Law/Regulation
Algeria	Yes	Ministry of Health	Decree of December 14 2008
Bahrain	No
Egypt	Yes	Ministries/Municipalities	Commercial laws and Municipal regulations on signboards
Gaza & West Bank	No	Jordan	No
Kuwait	Yes	Kuwait City Municipal Council	Law 172/2006 and Decree 463/21/2005 on signage
Lebanon	No
Morocco	Yes	Ministry of Health and Ministry of Trade	Resolution 17-04 of 22 Nov 2006 and Decree 2-01-1016 on foodstuffs
Oman	No
Qatar	Yes	Ministry of Health Doha Municipality	Resolution no 3 of 1938 and Regulations on signage
Saudi Arabia	Yes	Riyadh Municipality	Regulations on signage
Syria	No
Sudan	No
Tunisia	Yes	Tunis Municipality	Decree of August 6 1957
UAE	Yes	Dubai Department of Economic Development	Consumer Protection Law 24 of 2006 and Federal Law no 4 of 1979
Yemen	No

Transliteration into the Arabic script is not without challenges, as certain consonants and vowels have no equivalent in the Arabic language such as the letter V and the letter P. Common practice is either to substitute, for instance, the letter with the next best option (for example, the Arabic letter for B is used to transliterate Pepsi which so as to read Bebsi, and the Arabic letter for F is used to transliterate Old Navy so as to read Old Nafy) or to borrow letters from the Persian alphabet, closest to Arabic, and which would be widely understood by the public (this practice is used by the owners of the trade mark Virgin to represent the letter V).

When the trade mark in question can be transliterated in different phonetic renditions, a vast scope of inconsistencies may come as a result of this. Careful thought and consideration must therefore be taken from the outset to select the most accurate and appropriate transliteration and to ensure that this version is consistently used. For example, if a brand owner registers one version of an Arabic transliteration but ends up using another in the market place, the trade mark registration may become vulnerable to a non-use cancellation action. Furthermore, the use of more than one transliteration could create uncertainty in the minds of consumers.

"If a brand owner registers one version of an Arabic transliteration but ends up using another in the market place, the trade mark registration may become vulnerable to a non-use cancellation action"

Another factor to account for is the coined of marks such as Nike, Kodak or Lexus which crucially differ from generic or descriptive marks in that they require a high degree of advertising, promotion and quality control for the consumer to relate the goods or services to the marks, and create the required association. There is a risk that by not protecting the Arabic rendition of a mark, consumers will not be able to develop recognition of the brand or may even develop their own inaccurate Arabic names when referring to the mark resulting in a weak brand identity. Therefore, by registering the correct Arabic version of a mark, a brand owner can ensure that consumers have clear visibility as to the origin of the goods or services and eventually be able to build up brand equity.

An additional challenge would arise when marks would have a negative connotation when transliterated into Arabic, which would justifiably cause outrage or would be subject to censure for undermining current religious, family or social values. Generally speaking, a trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality. Needless to say, the two exceptions would relate to the intrinsic qualities of the sign, rather than the manner in which it is used. Trade mark owners dealing with this obstacle would eventually choose not to transliterate. Also, performing a connotation analysis should always be a preliminary step before any name is selected.

Examination is the same – that is, the standard distinctiveness terms apply for Arabic marks as well. Generally speaking, the trade mark is usually examined as a whole and certain elements of the mark may be disclaimed (where allowed), but it is the overall level of distinctiveness that must determine whether the mark is registerable. Disclaimers may be given voluntarily by the applicant in its application to register the mark provided the mark as a whole is not disclaimed. Also, examiners in some countries such as Sudan may ask for the disclaimer of any component of a trade mark which is not independently registerable.

As we have already established, problems can arise when it comes to enforcing trade mark rights against third parties using or attempting to register confusingly similar Arabic transliterations. It is always easier to enforce marks in the same language. We can even expect problems of a wider scale when trying to enforce against confusingly similar translations. The translation of a trade mark into Arabic will certainly be visually and phonetically different from the original mark in English. In addition, there may be more than one possible translation into Arabic for any given word and relying solely on registration of a trade mark in English to provide protection for its Arabic translations can be problematic.

It is worth pointing out that some degree of protection is afforded to well-known trade marks under Article 6bis of the Paris Convention against translations liable to create public confusion. However, as its definition clearly implies, Article 6bis applies only to well-known trade marks and the extent to which a trade mark is considered famous in Arab countries is usually determined according to the international standards for the protection of well-known trade marks as well as the local standards. Any probative evidence will be accepted, and a determination will be based on the totality of the evidence, including such factors as: (i) the duration and geographic extent of sales; (ii) sales figures; (iii) advertising figures and samples of advertising; (iv) awards, reviews and press reports; (v) the reputation of the mark within the relevant trade and consumer groups in the country; and (vi) expert testimony and surveys designed to assess the recognition of brand names. The bottom line is it can be difficult to rely solely on the provisions of Article 6bis leaving many marks exposed to infringement if the translation is not registered within the relevant country.

Hisham Zahrm director of operations Saba Intellectual Property

Hady Khawand country manager – UAE Saba Intellectual Property