Most countries in the Middle East and Africa – with the exception of Lebanon – have clearly applicable statutory provisions in their national laws to protect famous marks. In addition, membership of the Paris Convention has helped significantly when it comes to litigation, as demonstrated by the number of ground-breaking court decisions which have been heard over the last few years. A mark that is identical to a well-known mark shall not be accepted for registration. Well-known trademarks shall qualify for protection even if they are not registered. Further, all countries in the region are either members or observers of the World Trade Organisation (except for Syria), which extends to the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs). Part II of TRIPs addresses each IP right in succession. Article 16(3) of TRIPs states that in relation to registered marks,Article 6bis of the Paris Convention should apply to non-similar goods or services, provided that use of the later mark indicates a connection to the owner of the well-known mark and the interests of this owner are likely to be damaged. However, there are no clear regulations or case law specifically on the prerequisites for claiming protection under Article 6bis. One important aspect that should be taken into consideration when addressing the concept of famous marks in the Middle East and Africa is the principle of first to file versus first to use. As almost all countries in the Middle East and Africa are civil law countries (meaning that the code typically exhaustively covers the complete system of the law), the concept of first to file is given considerable weight (some countries may offer a limited number of common law rights, but this is a matter solely determined by the practitioner handling the case). That said, it is highly recommended that all marks, even famous marks, be registered. Countries in the Middle East and Africa do not allow a rights holder to apply for a declaration that its mark is famous. Mere registration can be used as a basis on which to sue an infringer, although the risks of a non-use cancellation action must be factored into any filing strategy. However, the situation is quite different from that in the United States, where a non-use cancellation action is similar to an opposition action. In most countries, non-use cancellation actions must be brought before the local courts, which can greatly increase the time, costs and unpredictability of such proceedings. What qualifies as a famous mark? Although it is impossible to precisely define a famous mark, examples of famous marks in the Middle East and Africa include PEPSI, COLGATE, NESTLÉ and MCDONALD’S. The extent to which a trademark is considered famous is usually determined according to the international standards for the protection of well-known trademarks (Article 6bis of the Paris Convention),as well as the local standards for well-known trademark protection. Any probative evidence will be accepted and a determination will be based on all of the evidence, including such factors as: the duration and geographic extent of sales; sales figures; advertising figures and samples of advertising; awards, reviews and press reports; the reputation of the mark within relevant trade and consumer groups in the country; and expert testimony and surveys designed to assess the recognition of brand names.

Unlike in the United States, countries in the Middle East and Africa have no express anti-dilution provisions in their trademark laws or elsewhere. Nevertheless, many countries have introduced provisions into their trademark laws on the likelihood of confusion between conflicting marks as part of their implementation of TRIPs. 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. However, are these sections on likelihood of confusion enough? Some courts have reiterated that when dilution is accompanied by confusion as to the source, it will affect the goodwill, reputation and trade name established by the plaintiff.

In general, there are numerous precedents in Arab countries on how prior cases regarding infringement of famous marks have been decided. Such precedents give an indication of how the laws will be interpreted by the courts in cases involving similar circumstances. Iraq’s LAY’S banner/sun logo The Iraqi authorities issued a favorable decision finding that LAY’S banner/sun logo was famous based on the following grounds: Pepsi owned a famous mark that was distinctive; The similarity between the defendant’s mark and the famous mark gave rise to an association between them; and The association was likely to impair the distinctiveness of the famous mark or harm its reputation.

The protection of famous trademarks is a challenging process that requires special consideration and handling. Owners must be ready and able to adopt a model that incorporates both legal and regulatory approaches in order to arrive at a solid trademark protection strategy. Companies have a good chance of establishing sufficient goodwill so that their marks may be recognized as famous and enjoy protection without registration, although registration is always advised. In any case, rights holders should seek sound advice before deciding on the best route to pursue.