Worldwide: Intellectual Property Newsletter - June 2015

MIDDLE EAST & NORTH AFRICA REGION

The start of the holy month of Ramadan on or around 18 June 2015 will signal a month of fasting by Muslims during daylight hours (from dawn to sunset).

During this period, many countries in the Middle East will operate shorter working hours, including in many government offices. Intellectual property rights owners with an interest in the region should be aware that many of the Trade Mark and Patent Offices in the region will close earlier in the day than normal, which can have an impact on last minute filings.

In this edition of our newsletter, we look at Arabic branding and consider how this can assist brand owners in building brand equity, consumer recognition and with enforcement issues.

In addition, we report on a number of key market updates from around the region, including news that Saudi Arabia and the UAE have conducted raids to seize counterfeit goods worth millions of US dollars.

Arabic branding

Saba Al Sultani considers the benefits that Arabic language branding can provide for international brand owners.

Market updates from around the region

For further information, please speak to your usual contact in the Clyde & Co IP team, or email us at ip@clydeco.com.

UAE Trade Mark Gazette

The latest edition of the UAE Trade Mark Gazette was published on 1 June 2015. This month's opposition deadline is 30 June 2015.

If you identify any marks that are of potential concern, or if you have any queries, then speak to your usual contact in the Clyde & Co IP team, or email us at ip@clydeco.com.

The timeframe for arranging the legalisation of a Power of Attorney (which will need to be filed at the same time as any opposition) is generally around three weeks. With this in mind, please contact us as soon as possible if you identify any marks which you may wish to oppose.

MARKET UPDATES

ARABIC BRANDING

By Saba Al Sultani, Associate and Rob Deans, Partner

Introduction

The Middle East and, in particular, the Arabian Gulf region has long been an attractive market for international brand owners. As the region continues to experience economic growth, the interest from international brand owners also continues to rise. With this increasing interest, the need to adequately protect their IP rights in the region remains an issue of core importance to brand owners.

Despite there being a large number of English speakers within the Middle East, Arabic remains the first language across the region. Accordingly, it is important for international brand owners to give careful consideration to the registration of Arabic versions of their trade marks, through either translating or transliterating the original marks in order to reflect their use in local markets.

However, with the cost of securing trade mark registrations in the Middle East being among the highest worldwide, careful assessment of how best to focus resources is crucial. In countries like the UAE (where the official fees for trade mark applications have recently increased by two-fold), this is now more important than ever before.

Local requirements and considerations

In most Middle Eastern jurisdictions it is not a requirement for trade marks to be registered in Arabic. It is possible for trade marks to be registered in Latin script, either alone, or alongside an Arabic translation or transliteration of the original mark, as a combined mark.

Similarly, in the marketplace, international brands which have a presence in the Middle East may use the Latin script alone or alongside an Arabic translation or transliteration of the mark (even if these are not registered). It is less common, however, for international brands to feature the Arabic version alone in the marketplace, although this does occasionally happen in countries such as Saudi Arabia.

Perhaps it is for these reasons that some international brand owners choose to rely solely on their protection for the English language (or Latin script) version of their trade marks. However, problems can arise when it comes to asserting and enforcing these rights (for example in trade mark infringement actions or opposition proceedings) against third parties using or attempting to register conflicting Arabic translation or transliteration marks.

In many Middle Eastern jurisdictions, the English language (or Latin script) trade mark provides some degree of protection for the Arabic equivalent (translation or transliteration). However, it is always easier to rely on and enforce 'like for like' language marks. Relying on the English (or Latin script) mark alone is an incomplete brand protection strategy which can result in additional costs being incurred when it comes to enforcement against Arabic language brands.

There is some degree of protection afforded to well-known trade marks under Article 6bis of the Paris Convention, which some Middle Eastern member states (such as Saudi Arabia and the United Arab Emirates) have incorporated into their trade mark laws. Signatories to the Paris Convention are obliged "to refuse or to cancel the registration, and to prohibit the use" of a translation of a well-known mark should it cause confusion. However, Article 6bis only applies to well-known trade marks and there is no definition within the Paris Convention as to what constitutes a well-known mark. Therefore, this provision can be a difficult one on which to rely, leaving many marks exposed to infringement if the translation is not registered within the relevant jurisdiction.

The UAE Trade Mark Law (UAE Federal Law No. 37 of 1992, as amended) extends this protection to earlier registered marks as well as well-known marks, with Article 3.14 stating that it is not possible to register "marks that are considered to be not more than translations of a famous mark or another previously registered mark if the registration of the mark would cause confusion amongst consumers in relation to the products that are distinguished by the mark or similar products". Article 38 goes on to provide that the use of such a mark constitutes a trade mark infringement.

However, the degree of protection afforded to the Arabic translations of foreign language marks varies from country to country across the region.

The most notable issue when it comes to selecting an Arabic version of a trade mark is whether to select the literal translation of the original English language mark (assuming it is a mark with a dictionary meaning, and not an invented word itself) or a phonetic transliteration of the original English language/Latin script mark into Arabic characters.

Translation vs. transliteration

The literal translation of an English language trade mark into Arabic will almost certainly be phonetically different from the sound of the original mark in English. Although there are a few words shared by both languages, these are relatively rare and most translations will sound very different. In addition, there may be more than one possible translation into Arabic for a given word, and so care must be taken to select the most accurate and appropriate translation.

Relying solely on trade mark registrations for English language marks to provide protection for the Arabic translations can be a risky strategy. Although the two versions may share the same meaning, in some jurisdictions, if a third party were to use or apply to register the Arabic translation of a mark, the marks may not be considered confusingly similar based on the visual and phonetic differences.

The other option is to protect the phonetic transliteration into Arabic characters of the original English language / Latin script mark. The biggest problem that can be faced when producing a suitable Arabic transliteration mark is that the Arabic and Latin alphabets are significantly different – not all of the letters present in one are present in the other, and vice versa. For example, the letters 'G', 'P' and 'V' do not exist in the Arabic language.

Therefore, when creating a transliterated version of a mark containing any of these letters, it is normally necessary to substitute the unavailable letter with 'the next best thing' – usually a similar sounding letter. An example of this would be a word such as 'PINEAPPLE', in which the letter 'P' would typically have to be substituted for the Arabic equivalent of the letter 'B' – so the transliterated word would be pronounced 'BINEABBLE'.

One point which is of core importance when considering the option of a transliterated mark is that transliteration is largely subjective and there may be more than one way to transliterate a mark into Arabic characters. For example, in order to convey the sound of the word 'STICKS' in Latin characters, it could be written as 'STIX', 'STIC' or 'STIKS'. The same principle applies when transliterating words into Arabic characters.

This introduces scope for inconsistencies and it is important from the outset to ensure that care is taken to select the most accurate and appropriate transliteration and that this version is consistently used. If, for example, a brand owner registers one version of an Arabic transliteration, yet uses another in the marketplace, then the trade mark registration could in due course become vulnerable to cancellation for non-use. Further, the use of more than one transliteration could produce uncertainty in the minds of consumers.

Also, by registering and using an 'official' Arabic version of a mark, consumers may start to recognise the brand in Arabic and they are less likely to develop their own unofficial (and unprotected) Arabic versions of the brand. By registering and using a single 'official Arabic version of its mark, the brand owner can help ensure that consumers will have certainty as to the origin of the goods or services and thereby build valuable brand equity.

Key issues

Brand owners with an established or intended presence in the Middle East should ensure that their marks are adequately protected and that they reflect their use in local markets. For the most part, there is no strict requirement for brand owners to register Arabic language versions of their marks. However, consideration should be given to obtaining Arabic language protection in order to assist in developing a single 'official' Arabic brand and make it more straightforward to maintain exclusivity for this Arabic brand.

Often, particularly with innovative and distinctive trade marks, an Arabic transliteration of the original mark will hold more value and strength than a translation. When selecting an Arabic language version of a mark (whether a translation or a transliteration) it is important to remember that there may potentially be several variants available. Therefore, careful thought and consideration should be given to selecting the most appropriate variant for adoption and protection in local markets.

Comment

Arabic is the fifth most used language worldwide, with some 300 million native speakers, and it is the dominant and official language in most countries in the Middle East.

There is a risk that by not protecting the Arabic version of the mark by which a brand owner wishes to be known, Arabic speaking consumers will either develop no real recognition for the brand or develop their own inaccurate Arabic names when referring to the brand. By selecting and registering official Arabic versions of their marks, brand owners will ensure that, not only will they achieve a greater degree of protection for their marks, but that they are also able to build and manage consumer recognition in the region such that the value of their brands is further increased.

UAE TRADE MARK GAZETTE

The latest edition of the UAE Trade Mark Gazette was published on 1 June 2015 and we have made a copy of this Gazette available online. This month's opposition deadline is 30 June 2015. Click here to access the Gazette.

Checking the Gazette

The link provided is the original Arabic language Gazette without an English language translation. This Gazette is in the form of an Adobe pdf file and it is possible to carry out key word searches in order to identify potentially conflicting trade mark applications.

Please note that due to the size of the Adobe pdf file, it may take several minutes for the Gazette to load. However, once loaded, it should be possible to review and search the Gazette without experiencing any delays.

Contacting us

If you have any marks that are of potential concern, or if you have any queries, then please email us at ip@clydeco.com with:

  • the trade mark(s) of interest; and
  • the relevant page number(s) of the Gazette.

 We can then check the Gazette and provide you with full details of the application so that you or your client can decide whether to file an opposition before the deadline and put in place a legalised Power of Attorney if necessary.

In order to have any chance of meeting the non-extendable opposition deadline where a legalised Power of Attorney is required, we will need your urgent feedback on marks of potential concern.

Should you require urgent assistance, we will need to conduct conflict checks to ensure we are free to assist.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions