Back to basics - Conducting Intellectual Property work in the Middle East

20 octobre 2020


Our intellectual property team in Dubai has put together this handy alphabetised guide as an introduction to conducting IP work in the Middle East.

The A-Z of Intellectual Property (IP) in the Middle East

A is for Arabic, the official language of the region. Consider developing and protecting Arabic branding to help commercialise your product / services. It is recommended to protect the Arabic branding as well as the non-Arabic branding.

B is for Border Protection…customs recordals can be filed in a few countries including the UAE and Jordan. In other countries informal systems exist, such as the Memorandum of Understanding (MoU) system in Saudi Arabia. However, in most countries in the region, Customs may only act on information from you, but you may require a court order to seize the shipment.

C is for Classification. Most countries will not allow protection for alcohol products or services, or pork and other products considered to be haram (forbidden). Also, Saudi, Kuwait, Oman and Iran use classification systems where only pre-approved terms from adapted versions of the Nice Classification can be used.

D is for Designs. Design protection is available in most countries, but can be costly and also take many years to reach grant. In some countries, such as the UAE, Kuwait and Bahrain, rights holders are looking at 3D and non-traditional marks as viable alternative forms of protection to designs, as the registration is obtained more quickly (and usually much more easily than in other regions) and the enforcement officials have been enforcing these rights. It may also be possible to consider protection through copyright (which can be registered in some countries), if copyright subsists in the works.

E is for Enforcement. Enforcement is possible in countries in the region, though trademark enforcement is by far the most common type of action. Administrative and criminal enforcement options may be available and can be effective, provided you have the registered/granted rights (see R). Civil actions can also be filed through the Courts, though due to the lack of IP experience within the Courts system, these actions can be far less reliable and predictable.

F is for Farsi, the official language in Iran. Whilst the alphabet is highly similar to the Arabic alphabet, it is a different language…think French and English - largely the same letters, but very different languages. Consider protecting and searching your trade mark in Farsi and the original language version of the mark(s).

G is for GCC (Gulf Co-operation Council), the trading bloc of 6 Gulf countries - Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE. Whilst you can obtain a GCC patent covering all countries in one filing, you need to file separately in each country to obtain a registered trade mark for the GCC. The GCC law is in force in Bahrain, Kuwait and Saudi Arabia, but is not yet in force in Oman, Qatar and the UAE. The GCC law brings with it many changes for rights holders.

H is for Helpline…Gowling WLG's IP team in the Middle East are on hand to assist you with any IP requirements you may have. See contact details below.

I is for Iraq. In early 2016 Iraq introduced a two-step filing process, whereby the trademark search must be conducted before a filing date is allocated to the application. The search can take 6 months to complete. Your filing date will be the date you ask to proceed with the application post-search. If issues are raised, you have to file an appeal alongside the application. If you are interested in Northern Iraq / Kurdistan, see K.

J is for Judges. There are very few specialist IP judges in the region. The UAE judiciary has worked with bodies in France and the US to train up a small number of judges and other members of the judiciary in IP matters, which has led to the introduction of specialist IP court circuits.

K is for Kurdistan (Northern Iraq). It is possible to file a Kurdish trademark application or to extend your Iraqi registration to Kurdistan. To obtain registered rights more quickly, a direct Kurdish filing is the way forward.

L is for Legalisation. You may need to provide legalised supporting documents to file your IP rights in the region. It can take time to finalise these and they can be costly, particularly for patent applications where a number of supporting legalised documents are required. In some countries they are needed at the time of filing for trademarks; but can generally be filed later for patents/designs.

M is for Madrid. Some countries are members of the Madrid Protocol. Cost savings can be considerable, but if you are intending to enforce rights, a national filing with a national registration certificate may be the better option. Care designating Israel along with Arab countries - file nationally in Israel to avoid issues.

N is for Name. In the region, the applicant's name must also be translated into Arabic. It is important to ensure that the same Arabic is used for the applicant's name and address (across all IP rights filings), in order to avoid future issues. If different Arabic spellings are used, it appears to officials as if different companies may own the portfolio, and can also lead to difficulties with assignments or licensing across the portfolio.

O is for Online filing. A number of countries including Iran, Lebanon, Morocco, Saudi Arabia, the UAE, West Bank and Yemen have moved to online filing. Many have also adopted online renewals, but other online services such as online searches are not available in almost all countries.

P is for Palestine. IP rights are obtained through separate filings in the Palestinian territories of West Bank and Gaza Strip. The filings are managed and progressed separately, but both are required in order to have effective protection in the Palestinian Territories.

Q is for Quality. To have time to prepare a quality translation for your patent, provide instructions as early as possible, preferably at least 4 weeks prior to the priority filing date, so that there is time to prepare the translation of the technical original language into Arabic.

R is for Registration. Registered/granted rights are important for being able to take action against infringements and counterfeits. Without registered rights, you may not be able to take action, or you may find that your only options are an expensive court case, rather than the potentially more cost effective administrative or criminal enforcement action.

S is for Sensitivities, particularly cultural sensitivities. Will the brand or the marketing campaign work in this region? Are any changes needed in order to avoid causing offence? You may have to change your branding and/or your marketing campaigns in order to respect the local culture in the Arab world.

T is for Translation and Transliteration…important considerations for your Arabic branding, do you want the Arabic word which conveys the same meaning (if one exists), or the Arabic word which sounds the same/similar (usually a made up word in Arabic) to your non-Arabic brand?

U is for Unregistered rights. Whilst the GCC Trade Mark law has introduced the concept of protection of unregistered rights, as well as registered rights, these are likely to require a civil action before the Courts in the case of infringement. Where they are relied on in opposition matters, significant evidence and supporting materials will be required to help demonstrate the existence of any unregistered rights

V is for Verification. A difficult task in the ME as very few countries have online IP registers you are able to check. Searches need to be conducted through the IP officials generally, and you may need to obtain certified copies of the rights in question. Even then it is not uncommon for the official data to be out of date or incomplete in a number of countries. Generally for MENA countries, commercial search databases do not contain full data on TM registers, as the companies do not have complete access to official records. Searches should not be conducted on commercial search databases only.

W is for Working week…which is different in most ME countries where the weekend is either Friday/Saturday or Thursday/Friday. Sunday is a working day, so keep this in mind for deadlines.

X is for Cross. Be aware that countries will raise issues with the use or registration of religious symbols, the most common symbol objected to being the cross. This can cause issues if used to designate a pharmacy, or the Swiss flag or similar on pack or in an application.

Y is for YIKES! Yes it is expensive. The region has some of the most expensive official fees in the world for IP protection and few of the countries allow multi-class trademark filings. However, as registration is key (see R) not having adequate protection in place may be a false economy as you may not be able to stop unauthorised use of your mark(s) or other IP rights.

Z is for Zones, more particularly Free Zones, a special economic area in which it is possible to have a company which is 100% foreign owned, which may not be permitted "onshore" in the MENA country. The Free Zones are usually focussed on commercial areas, such as finance, manufacturing, media, IT and so on. Historically enforcement has proved difficult due to jurisdictional issues, but these have been largely overcome. Some of the free zones (such as the Dubai International Financial Centre), have adopted their own IP laws, though fortunately, these do not introduce new trademark registration systems. However, they offer legal recognition to national rights obtained in the country.

Contact

For more information on IP in the Middle East please contact Jon Parker and/or Rachel Armstrong in Gowling WLG's Dubai office (+971 4 437 5100).


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