PATENTS
No. For the time being, and in the absence of specialized courts and judges, legal matters such as patent infringement cases are handled in courts of first instances or civil courts depending on the country. An expert or a panel of experts is appointed by the court to provide both a legal and technical opinion on an ongoing case. The court will take into account arguments presented by both parties as well as the expert opinion prior to issuing a decision. The expert opinion may be challenged during the proceedings and further experts brought in.
Depending on the country, applications will be examined in either language. For example, patent applications in Egypt, Oman, Qatar and Saudi Arabia are always examined based on the Arabic translation of the specifications. The search reports and opinions are also issued in Arabic and the responses has to also be submitted in Arabic.
The UAE Patent Office has entered into agreements with various patent offices, such as most recently the South Korean Intellectual Property Office. Accordingly, examination takes place in English, although all documents have to be provided in both English and Arabic for archiving and publication purposes. Another example is the GCC Patent Office. While the GCC Patent Office examines some applications locally in Arabic, the office also outsources others to foreign patent offices. Accordingly, it is possible to see search reports and opinions issued in either language.
One application filed with the GCC Patent Office automatically designates all 6 GCC member countries, and no further validation is required upon grant. The resulting patent is automatically enforceable in all 6 countries. Annuity payments are due annually during the first quarter of each year and are paid centrally to the GCC Patent Office, and not to each individual country.
While there is not a regional patent office covering the whole region, there is a regional patent office which extends protection to the GCC member countries. The GCC Patent Office is located in Saudi Arabia, and operates independently from the Saudi Arabian Patent Office. The GCC Patent Office is not a signatory of the Paris Convention nor is it a member of the PCT. Nevertheless, the office accepts patent applications claiming up to a 12 month priority.
TRADEMARKS
When the trademark 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.
When it comes to the treatment of trademarks in a multi-lingual context, trademark 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 trademark 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. However, 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 trademarks 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.
There is some element of harmonization with common standards available across the different Arab countries, though each country has the primary responsibility for the regulation of the trademark matters within its jurisdiction and consequently each has its own trademark laws with slight differences in the procedural aspects. The standard definition of a trademark is common and the absolute grounds of registration are relatively the same with some minor differences. In Saudi Arabia, for example, the trademark law is to be used in conjunction with the Shari’a law (the body of Islamic religious law).
With the exception of Morocco and Lebanon, ex-officio examination on relative grounds is performed in all countries. Also, nearly all countries except Lebanon and Algeria provide opposition proceedings prior to registration. Apart from Tunisia, decisions of TMOs in opposition proceedings are binding. The length of protection of a trademark and the method of renewing a trademark is almost the same – 10 years in nearly all countries (with the exception of Lebanon, West Bank, Gaza and Saudi Arabia).
Marking is not compulsory in the Middle East and North Africa. However, using any of those symbols on a trademark is advisable because it will give notice to the public about the owners’ rights.
In principal, the ™ symbol may be used when trademark rights are claimed in relation to a mark that has not been registered at the Trademark Office of a particular jurisdiction, meaning that, the use of the ™ symbol does not mean a legally enforceable trademark. The registration symbol ®, however, does carry legal weight. It should only be used when the mark is registered with the Trademark Office of a particular jurisdiction. Using the symbol ® illegitimately may be treated as fraudulent marking in most of the countries in our region.
It is necessary to file applications in the MENA in respect of certain goods or services. All jurisdictions have adopted the Nice Classification with some having their own requirements as to what type of specification of goods or services will be permitted. For example, in Iran, Kuwait, Libya, Qatar, Saudi Arabia, Sudan, United Arab Emirates, and Yemen, class 33 and alcoholic goods in class 32 cannot be registered. Also, pork meat in class 29 cannot be registered in Kuwait and Saudi Arabia.
Furthermore, in some countries, the applicant can file an application claiming the whole class without specifying the particular goods/services. The Trademark Offices do not object to the use of any of the class headings as being too indefinite or non-specific (such is the case in Egypt and the UAE, for example). Even more, in Saudi Arabia a claim other than a class heading or an item from a class heading will not be accepted. In other countries, such as Jordan and Sudan, the applicant must specify the goods/services in the class, otherwise the application will not be accepted. In other words, the actual language used in the specification of the goods/services in the registration will define the parameters of the scope of protection of a trademark registration.
It is possible to register a trademark in the MENA without actually using it. So it will not be necessary to provide detailed information in trademark applications regarding the existing use of the trademark. However, trademark rights should be maintained through actual use. Trademark registrations in most jurisdictions may be vulnerable to cancellation in the event of non-use, usually within a period of either three or five years.
Most countries in this region are in general first-to-file countries. Therefore, trademark owners with plans to eventually expand into the MENA should consider filing trademark applications before someone exploits the brand’s fame that has been established in the home country and files the same trademark abroad.
