Trademarks: Exclusivity in a Digital Age

Noor Al Wari – Associate ([email protected])

The digital age has opened doors for numerous business opportunities through the internet; increased competition presents a challenge for brands to maintain exclusivity and brand recognition. Hence, establishing a strong brand presence is vital to the success of a business. However, it is not uncommon for business owners to think it is unnecessary to protect their brand, and in today’s digital age, brand infringements pose a serious challenge to the integrity of a brand. For this reason, registering your trademark is an essential strategy for brand protection since it keeps competitors from imitating your brand and gives you complete and exclusive rights to your trademark. A registered trademark goes a long way in setting a company apart from its competitors.

What are Trademarks?

A trademark is the legal identity of your brand and registration provides you with legitimate brand protection through enforcement of laws that aim to combat counterfeiting and infringement. The Bahraini Court of Cassation defined a trademark in Challenge No. 328 J.Y. 2013 stating that it is “A means of distinguishing products and commodities, erasing any ambiguity for the consumer. A mark that constitutes a copy, imitation or translation of a well-known mark or a mark owned by others for use in distinguishing goods or services similar or similar to those that use the well-known mark cannot be registered”.

Trademarks refer to anything that takes its own unique or distinctive form such as names, words, signatures, characters, codes, numbers, titles, seals, drawings, images, inscriptions, packaging, figurative elements, shapes, or combinations thereof. It is often used to identify a particular manufacturer or a seller’s product and distinguishes it from the products of another. It may also be any other sign or group of signs if used or intended to be used to distinguish goods or services. Other forms of unique trademarks may be a sound, scent, or color.

Background

The Gulf Cooperation Council Trademark Law (the “GCC Trademark Law”) is a unified law that tackles the protection, enforcement, and commercialisation of trademarks across each of the GCC member states (Bahrain, Kuwait, Oman, Saudi Arabia, Qatar, and the UAE). The GCC Trademark Law was ratified in the Kingdom of Bahrain on 27 February 2014 by Law 6/2014 Ratifying the Gulf Cooperation Council Trademark Law (the “Trademark Law”) and supplemented by Resolution 65/2016 of the Minister of Industry, Commerce and Tourism Issuing the Implementing Regulations of the GCC Trademark Law (the “Implementing Regulations”).

The GCC Trademark Law does not provide a single unitary GCC registration system, meaning that trademark owners seeking protection must file separate trademark applications within each GCC state and pay separate fees.

Why Register Your Trademark?

Registration of trademarks is voluntary but advisable. A registered trademark is: (i) a valuable commercial asset which is commercially exploitable; (ii) relatively easy to protect and enforce; (iii) a deterrent to infringers; and (iv) renewable indefinitely.

The GCC Trademark Law affords exclusivity to the registered trademark owner expressly states in Article 17(2) that “The owner of a registered trademark shall have the exclusive right to use its mark and to prevent third parties from using its mark, or any identical or similar mark“.

The GCC Trademark Law enforces a host of penalties for trademark violations and infringements. It aims to combat the counterfeiting of trademarks, both registered and unregistered. The penalties for infringement of trademarks set out in Article 42 of the GCC Trademark Law include:

A term of imprisonment for a period not less than one month and not more than three years and a fine not less than five thousand Saudi Riyal and not exceeding one million Saudi Riyal (or the equivalent in other GCC currencies) or both, for (i) misrepresenting or imitating a registered mark so as to mislead or confuse the public, or using in bad faith any misrepresented or imitated mark; or (ii) identifying goods or services in bad faith with a mark owned by others. (Article 42(a)).
A term of imprisonment for a period not less than one month and not more than one year and a fine not less than one thousand Saudi Riyal and not exceeding one hundred thousand Saudi Riyal (or the equivalent in other GCC currencies), or both, for: (i) knowingly selling, offering for sale or trading, or possessing with the intention of trading any goods bearing false or imitated marks; or unlawfully uses such marks or offers services under this mark; (ii) uses a non-registered mark in cases provided for in Article 3(2) to 3(11) of the GCC Law; (iii) unlawfully inscribing upon one’s mark, papers or commercial documents anything that might lead to the belief that the mark has been registered; (iv) deliberate failure, in bad faith, to indicate one’s registered trademark on goods or services; and (v) Knowingly possessing tools or material intended to be used in the imitation or fraud of other registered or trademarks. (Article 42(b)).

The Trademark Law restricts the use of trademarks that would indicate a similarity with the goods or services of the holder of a registered mark and which would damage or diminish the value of the associated goods or services (Articles 42, 3(11) and 3(12)). Registering a trademark will also add significant value and credibility to a business or company. It can also be utilised to increase equity for a business. It also gives the owner the option of selling the trademark.

Trademark licensing is permitted under the GCC Trademark Law where the trademark owner (Licensor) may grant permission to another (Licensee) to use the trademark without restrictions except those arising from the registration. However, the GCC Trademark Law allows the license to contain the following restrictions: (i) determination of the territory and term for the use of the mark; (ii) conditions governing effective control over the quality of the goods and/or services; and (iii) commitments imposed on the Licensee to refrain from any acts detrimental to the trademark.

Trademark Registration

In accordance with the GCC Trademark Law any person who registers a trademark in good faith acquires ownership of it. Registration of trademarks in Bahrain takes place through the Ministry of Industry, Commerce, and Tourism (the “MOICT”) online portal which offers two different procedures for Bahraini nationals and foreigners as further described below:

Bahraini Nationals and foreign residents: those under this category may register a trademark by submitting a trademark application to the online portal of the MOICT.
Foreigner Non-residents: foreign applicants who are not residing in Bahrain may also register trademarks in Bahrain. However, they must do so through an intellectual property agent or an authorised law firm and may not register the mark on their own.

The MOICT will in all cases decide on an application within ninety days from the date of its submission. The process of registration is divided into three stages as follows:

Application: the initial stage which requires general information about the mark including the type of mark (visual, or non-visual mark), commercial registration extract of the owner, 10x10cm image of the mark, certified Arabic translation and proof of identity.
Publication: during the publication stage, following the payment of the publication fees, the mark is published in the Official Gazette after the payment of the publication fee, and if within sixty days, there are no objections to the mark, it moves to the next stage of the final completion.
Completion: during the last completion stage, the final payment must be made within thirty days from the end of the objection period. Otherwise, the applicant will be considered to have waived his/her application.

Protection Period

Pursuant to Article 20 of the GCC Trademark Law, the protection period of a trademark is ten years from the date of application in the Kingdom of Bahrain. If the applicant wishes to continue with protection for several similar periods, a renewal application can be filed during the last year of each protection period.

Disputes

Whomever registers a trademark in good faith is considered the owner and so ownership of the same mark may not be disputed if it has been registered and used for a period of at least five years without the existence of a judicial dispute.

In the case where there are disputes arising in relation to two or more simultaneous registration of the same mark, all requests will be suspended until a waiver is signed by the disputing party and certified by the MOICT in favor of one applicant, or until a final ruling in the dispute is issued.

For more information, please contact us on [email protected].