MENA: Enforcement Measures in an Emerging Region

Brand owners have become increasingly aware of the importance of extending their trademark portfolios to the rapidly developing Middle East and North Africa (MENA) market. A combined, relatively young population of half a billion, growing at double digit rates, plays a significant role in making the region one of the fastest-growing markets in the world with a five-year compound annual growth rate outlook of 9 to 30 percent depending on the field or sector.

Given that there is no unitary registration system in place for the entire MENA, and the fact that each country has its own laws, legal system, jurisprudence, and practices, it is not possible to provide a unified opinion regarding the enforceability of a trademark across all the countries and jurisdictions of the region. Nevertheless, the below article addresses the main considerations for any successful enforcement strategy in the MENA region.

As most countries in the MENA apply the civil law system, common law rights are not always recognized or well defined. As such, having a trademark registration on the registry is an essential condition to facilitate the enforcement of rights especially when taking administrative or criminal actions. Still, even with no registered trademark, it might be possible to pursue civil actions based on unfair competition claims, although obtaining a favorable outcome proves to be a more cumbersome task. Moreover, in most of the countries and jurisdictions of the MENA region, a trademark that is not registered can be protected if the trademark is proven to be famous. Another important point worth noting is that having a valid trademark registration would no doubt be vital for recording a trademark before the Customs authorities (where applicable) or taking the required measures with the Customs to prevent entry of a shipment of suspected counterfeit products.

Brand owners should also be aware that infringers could always attempt to register a trademark in bad faith to benefit from its fame and recognition by the consumers. Such infringing registrations negatively affects the brand owner’s ability to act against infringing products and would also impact their ability to import and trade their genuine products.  Given that knowledge, we advise owners to file their trademark in all the relevant classes, set up or subscribe in efficient watch services to monitor publications, and to take the proper action against infringers.

We have seen many cases in the MENA region in which an infringer would file for a trademark, similar or identical to a famous trademark, in different classes. In other terms, the infringing applications would be filed in classes that are not related to the authentic mark to benefit from the good faith it has amassed.

As the MENA region begins to attract the attention of a growing number of industries, the importance of securing legally valid IP rights and the ability of adequately enforcing those rights necessitate the identification of local representatives with both the capabilities and abilities to understand not only the legal aspects of these rights, but also their merits and validity to withstand cancellation and/or possible acts of infringement. This will also necessitate a review of the budgets relating to IP for the MENA region.