The laws of the trademarks in Bahrain, Egypt, Kuwait, and Saudi Arabia require that the trademark must be registered as a prerequisite for granting its protection; the fame of the trademark itself can not grant the right of protection, unless it is registered in these countries. Any unregistered trademark makes it vulnerable to adoption by anyone. Therefore it’s possible that a world-famous trademark could effectively become owned by another person or a local company if it has been registered and used for a number of years.
In spite of all of that, the positive aspects of the protection are not entirely absent, where there are precautions that give the owner of the mark the right to object and to prevent the registration of the trade mark by the interference of a third party .
But in some cases, the trademarks office might prevent the registration of a well known mark by a third party, or other objects that are similar to ones which are labeled under the same trademark. This hostile attitude towards the illegal adoption of a trademark is clearly reflected in Saudi law, and although the laws on this issue in the other three countries are not as clear, the common practice however, is to adopt what is being applied in neighboring countries if there is no explicit provision(s) existent.
Article 2 (10) of the Trademarks Saudi law states explicitly not to accept the registration of a trademark that is identical or similar to a trademark which is internationally known, even if its not registered by the original owner in the kingdom. And that’s because the usage of a famous trademark on identical or similar objects might create confusion for the consumer, which may lead to deception related to the source and quality of those objects. Therefore, the illegal adoption of the trademarks is unacceptable in these countries.
Although it is not a registration requirement; it’s necessary that the fame of any trademark must exist in the country where protection is required. Fame, usage and registration in the original country and others of the world are considered useful tools in preventing the registration of a similar and identical trademark by a third party.
For the trademark to be dealt with as a famous one in relevant countries, it must be used sufficiently in them.
The owner of a well known trademark has a good reason to object to the registration of a trademark for similar or identical objects that are already under his own trademark. When a third party uses a famous brand to register different goods; which means goods existing in a different category altogether, it is possible that this brand can be claimed as his/her property. In this case, the original owner can’t object the usage of his trademark by a third party.
But in cases when the brand is registered and used for a specific category, the owner has the right to prevent others from using it or other identical trademarks on objects of the same category. This is because using a brand name or famous trademark for products in the same category is based on deceiving the consumer of the real source and the quality, concerning similar objects or ones that hold the same brand.
The protection of goods that are different from those which are registered with the famous brand/trademark can’t be guaranteed to the owner of this famous brand/trademark. What this means is that the objects (between those of famous trademark and new trademark in question) must be similar in their nature, for there to be adequate protection for the famous trademark. If this condition is not fulfilled, it’s not possible to claim that the consumer is being deceived, even though the source and quality may not be characteristics of the original trademark. One of the unique practices in the Kingdom of Saudi Arabia that the registrar is not allowed to register the same brand for different owners, even if the original owner agrees to that. With this, the registrar aims to protect the public from any possible confusion.
The protection of the different types of goods; which means the objects that belong to different categories other than those registered with the trademark, is considered ineffective.
As reported earlier, the fame of the brand does not play a role with respect to its registration by the owner. On the other hand, when the trademark is not registered by any party and when taking an action is needed, the mark must be well known.
Although there is a reference in the law of the Saudi Arabia to “worldwide known trademarks”, the degree of the fame of the brand does not exist in the laws of Saudi Arabia, Bahrain, Egypt and Kuwait.
In the cases of objection, the registrar is usually requested to decide whether the brand is well known enough or not, however, this is not applied in Kuwait, where the registrar cannot decide. As a result, the trademark objected to keeps on working, until the concerned parties reach an agreement, or until the court the issue a judgment.
The evidence of the usage and the registration of the trademark in other major countries in the world, in addition to testimonies from the owners of brands and experts in the field of trade, are considered tools for supporting the fame of a trademark and convincing the registrar or the court of such claim.
The issues of the trademarks that study the possibilities of deception revolve around two points:
First: the fact that the third party trademarks are copies of famous ones, thus the deception is apparent and there is no need to make efforts to prove it.
Second: in the situation where the trademark is adjusted or contains a reference to the source of goods that is different from the one of the objects which hold the famous brand. In this case, it is necessary to prove the deception of the public related to the relevant objects’ source and distributor, either by confessions or testimonies in court.
For the purpose of suing strongly a defendant who’s accused of adopting a famous trademark, the defendant’s trademark has to be identical and similar in such a way that it is confused with the famous one, and it also must be in the same category. It could be identical, a photocopy without the name of the brand, or be similar in its shape or pronunciation.
At least in the case of Kuwait, it was necessary to file an application of protection of the verbal registered trademark to convince the judge of the fairness of the case.
It is generally acknowledged that the law does not protect the stupid, and also the factory which is trying to promote lower-quality products under the guise of a famous trademark, is not preferred. Of course, the defendant’s malicious intent is an important element in this case, despite of the fact proving that is not really a major issue.
With the wrong usage of a well-known trademark on similar objects, the defendant is effectively violating the fame of the original brand. The consumers are being deceived by giving them the impression that the products of the third party are the same as the famous brand’s , and who accordingly expect the same quality.
The absence of the malicious intent does not prevent the application of the law in cases where the famous trademark is protected and where the case of the illegal adoption of the trademark takes place. Therefore those involved in these cases are subject to prosecution and punishment.
In cases of the objection of the registration of a famous brand by a third party, there is a probability for discussions depending on the fame of the trademark that can be used effectively.
Where objections arise, the question “who owns the trademark?” must be answered. The local laws in Bahrain, Egypt, Kuwait and Saudi Arabia consider that who registers the brand is its only owner. The property of the trademark is not a matter of debate if the one who asks for the registration is using the brand seriously, continuously and in accordance with the requirements of the law. With respect to fraud, the various laws hold a common view that registration of the mark is one of the requirements that must precede filing a case in court. Thus, the successful case for prevention of trademark abuse, and/or to ask for the compensation due to damages as a result of fraud and trespassing on the rights of the owners of the trademark, cannot be taken into consideration unless the trademark is registered and used long enough.
Unlike Saudi Arabia, where the laws prohibit the registration of trademarks that are known worldwide by a third party, there is no protection in the countries where the brand was not registered or used.
The commercial agent that sells products which carry the brand’s name may be able to ask for the protection of the trademark, by claiming a lawsuit against the imitators of the famous trademark on the basis of unfair competition.
The best way to verify the ownership of the brand without the slightest doubt or controversy ,and to maintain the rights of the trademark owners, regardless of the fact that the brand is famous or not, is by registration and usage of it in accordance with the provisions of law.
The extended protection under the terms of the Paris Conference does not exist in Bahrain, Kuwait and Saudi Arabia because they did not sign the conference’s agreement. The fact that Egypt -one of the conference’s countries- has a system that allows the international registration of the trademarks, means that the well-known brands there have sufficient protection.
In a recent case, the Egyptian registrar rejected the registration of the trademark “Pioneer” which covers sports supplies of category 28.
The rejection was because of the existence of another famous brand called also “Pioneer”, which is registered in Egypt under the category 9 of electrical products. The Registrar did that relying on item 6 (repeated) from the terms of Paris conference. The decisions of the “cross-America”, conference are not applicable in Kuwait, Bahrain, Saudi Arabia and Egypt.
The advice that the owners of the famous brands already know is extensive, but the following are some of the most important points to remember:
-Take the lead to register the brand in the relevant countries as soon as possible. Do not waste time until the trademark is misused; get as many registrations in different categories as possible, so they cover current and future products.
-Do not submit the application of the registration of the brand under the name of the distributor or the commercial agent. Any relationship between the brand and the agent or the distributor must be recognized specifically.
-Any illegal usage of the brand must not be allowed, as this act may encourage the imitator to adopt the trademark, so he/she can win the case and register the brand.
-Do not count entirely on the reputation of the trademark; the fees of registration of any brand are quite insignificant in comparison with the costs and expenses to object and cancel the registration of the trespassing brand in the relevant countries, especially in Saudi Arabia.
- Watch markets utilizing independent parties in order to know the imitators, so you can protect your self, regardless of your dependence on the local agent or the distributor.