The Importance of Industrial Property Protection in Arab Countries
Conference of the International Society for the Protection of Industrial Property
Budapest – September 1988
Ladies and Gentlemen,
There have been profound changes after 1974 which have had a significant impact on the
protection of industrial property in the world, and the main factor behind these changes,
was the increase in oil prices which led to liquidity transfer in global financial markets to
the members of the Organization of Petroleum Exporting Countries (OPEC). It is
noteworthy that the Arab member nations of OPEC constitute the majority of that
organization.
As a result of this overall change in global economy, consumer and industrial markets in
the Arab countries have witnessed unprecedented development.
This has resulted in many companies and industrialists worldwide fiercely competing in
order to obtain a share in the marketplace. This rapid industrial movement has created
markets where a famous name for a particular commodity can make the difference in
making a product marketable, as a special mark/brand gives its owner a certain
precedence in the marketplace.
Therefore, producers will lose considerably in the event that they do not exercise their
right in registering first, and should ensure the continuing protection of their property by
registering it.
Trademark and Patent Rules in Arab Countries:
The rules of trademarks/patents that provide protection with registration, exist in most
Arab countries.
The countries that have trademark laws are:
Kuwait, Lebanon, Jordan, Bahrain, Saudi Arabia, UAE (Ras Alkhaima), Qatar, The
Democratic Republic of Yemen (Southern Yemen), The Arab Republic of Yemen
(Northern Yemen), Egypt, Algeria, Iraq, Libya, Morocco, Somalia, Sudan, Syria, Tunisia,
and Mauritania.
The countries that have patent laws are:
Kuwait, Lebanon, Jordan, Bahrain, The Democratic Republic of Yemen (Southern
Yemen), Egypt, Algeria, Iraq, Libya, Morocco, Somalia, Sudan, Syria, Tunisia, and
Mauritania.
As for the prerequisites to register a trademark, they vary from one Arab country to the
next. Where some Arab countries only require an agency, others require a copy of the
company’s registration. The same applies to registering a company and registering
patents, in addition to the request for an agency and a copy of specifications.
Most Arab nations follow the international categorization of goods and services, with the
exception of Iraq, where there is a local categorization. Some Arab countries accept
applications for the registration of alcoholic beverage trademarks, whereas others do not.
In Kuwait, Category 34 of the international categories was deleted, and registration of
smoking paraphernalia occurs in Category 33. Also, in Northern Yemen, smoking
paraphernalia is registered under Category 33, and Category 34 is used for
“miscellaneous” items. In the categorization used in Ras Alkhaima, there is no Category
33.
Applications for registration of service marks are accepted in the following Arab
countries:
Algeria, Bahrain, Egypt, Lebanon, Libya, Morocco, Mauritania, Qatar, UAE (Ras
Alkhaima), Saudi Arabia, Sudan, Syria, Tunisia, The Democratic Republic of Yemen
(Southern Yemen), and The Arab Republic of Yemen (Northern Yemen).
As for the Arab nations that signed the Paris Agreement, they are:
Algeria, Bahrain, Egypt, Iraq, Lebanon, Libya, Morocco, Mauritania, Syria, and Tunisia.
Some countries obtained membership in the World Intellectual Property Organization
(WIPO), and they are:
Jordan, UAE, Tunisia, Algeria, Libya, Sudan, Iraq, Qatar, Egypt, Morocco, Saudia
Arabia, and the Arab Republic of Yemen.
Upcoming Legislation in Arab Countries:
Regulations for trademarks and patents will be put in place and executed in all Arab
countries at the appropriate time. As for the Arab countries that don’t have these
regulations, WIPO and the Industrial Development Centre for Arab Nations and the Arab
Society for Protection of Industrial Property are assisting in putting them in place.
Publishing Cautionary Notices in Arab Countries:
In Arab countries where trademark/patent laws do not exist, the only way to protect
industrial property is through the advertisement of cautionary notices in local
publications.
Cautionary notices define the rights of the trademark owner for his/her trademark that is
publicized, and informs the public about the owner and warns the public about any
potential misuse of the mark.
With the absence of trademark & patent laws where an official registration can be
obtained, the cautionary notice is considered the only method of providing supporting
evidence in the case of a legal dispute.
In Arab countries where this is applicable, advertising these notices in both Arabic and
English languages provides the maximum protection and advertising in Arabic is, of
course, due to the fact that it is the official language and that which is understood by
businesspeople and the public. Also, advertising in English is important as well, to
inform consultants, businesspeople, and other non-Arabs.
The current cost to advertise in both languages is justified by the extra protection this
ensures trademark and patent owners.
Re-advertising Cautionary Notices:
Cautionary notices are ineffective when it comes to such issues as registration, and are
usually not filed or stored by any governmental department. Accordingly, it is advisable
to re-advertise time and again, because doing so reminds the public of the (owner’s)
rights and also warns against misuse for those who didn’t see the first ad.
There is no law that specifies a period in which the notice must be re-advertised, but it is
advisable to do so once every two years, and this of course is up to the discretion of the
mark’s owner.
Arab Countries Where Cautionary Notices are Published:
Below is the list of countries where advertising a cautionary notice is considered the only
method of protecting industrial property:
UAE (Dubai, Abu Dhabi, Alsharqah, Ajman, Alfujeira, Um Alquwein, Ras Alkhaima.
Also, cautionary notices are only related to patents in Ras Alkhaima), Sultanate of Oman,
Qatar (related to patents only), Saudi Arabia (for patents), and the Arab Republic of
Yemen (for patents).
The Issue of Boycotting Israel:
As a result of the ongoing conflict between Arabs and Israel, numerous procedures have
taken place that effectively prevent normal people and institutions to deal directly or
indirectly with people or companies that are either headquartered in Israel or work for
Israel’s benefit inside or outside Israel. These preventive procedures apply to numerous
aspects of industrial property including registration of patents and trademarks or
industrial designs, and other procedures that are also related to registration renewal or
waivers of properties and licenses.
For the purpose of supporting the boycotting of Israel, law with multiple dimensions has
been enacted, and an office for boycotting Israel and applying boycott procedures is
being implemented through the office’s branches in numerous Arab countries. This way,
those individuals or institutions that violate these boycott regulations will be placed on a
boycotted list. The result is the illegality of dealing with them, in addition to applying
penalties on them for their violation(s). Those placed on this list are permitted to appeal
this decision with the boycott office if they feel that they’ve been unjustly treated, or if
they have ended their dealings with Israel. As a result of this, American organizations
and individuals placed on this list are not prevented from removing their names from it,
which represents a first step towards their re-qualification.
Before applying for registration of industrial property rights in Arab countries, the
registration agent is asked to submit the application on behalf of his/her client, to obtain
the approval of the boycott office. The procedures for the application’s approval by the
boycott office take place in the respective Arab countries, except for Iraq, and require the
applicant’s name and address. These procedures therefore do not contradict the antiboycott regulations such as those that are applied in the USA. The application for the
approval of the Iraqi embargo office comes in the form of a questionnaire of 8 points that
are inclusive of the agency granted to the registration agent by the applicant. As for the
other Arab countries, these questions are only required of marks’ owners that are on the
boycott list, whose status is uncertain or are applying for the first time.
Information such as the number and date of deposit in any Arab country is considered
satisfactory at the Jordan boycott office, with no need for the owner to forward the
regular boycott declaration. Further, the placement on or off the embargo list for
individuals or entities is published frequently in numerous Arab nations, due to the
continuous changes to this list, and the industrial property registration agent must obtain
the boycott office’s approval at every new registration.
Imitation Prevention Procedure in Arab Countries:
Foreign companies can take legal procedures against those who copy/imitate their
trademark/patent, if said trademark/patent is registered in countries that do not have
industrial property laws, and that is through publishing cautionary notices.
Due to the tendency of imitators to place copied products under a well-known brand
name by using the mark in Arabic, it is advisable to register the trademark in Arabic and
in Latin as well.
The trademark owner can sue the imitator in a court of law on the basis of ownership of
the trademark that includes a registration certificate or copy of the published cautionary
notice, and forwarding a model for the original and imitated products, along with a
receipt from the seller that mentions the trademark name.
A chemical analysis must be conducted related to perfumes, shampoo, and other beauty
products, or a technical report for machinery parts, car parts, locks, etc.., to determine the
inferior quality of the imitated products.
The court may issue a judgment that prevents importing more products, in addition to
forcing the importer to compensate the plaintiff for his/her loss in sales or the damage
arising from the discrediting of his/her trademark.
If the plaintiff however fails in convincing the court that imitation has taken place, and
primarily failed in proving that the imitated products are of inferior quality, then the court
may judge in favor of the defendant, in which case he/she can continue to import and sell
these products.
Latest Developments in Trademark Regulations:
The publication of issue 369 dated October 15, 1987 of the official Omani newspaper
contained Omani law for trademarks and brand names, which was issued based on the
Sultanate’s request # 68/87 dated October 5, 1987 and became enacted officially.
The law provides trademark protection via official registration, to replace the current
method of publishing cautionary notices. And although the new law took effect when it
was published officially on October 15, 1987, the executive procedures related to the
prerequisites of trademark registration in the Sultanate of Oman are still under review.
Therefore, it is strongly advisable that trademark owners continue to protect themselves
via advertising with cautionary notices during this transition period, until the new law is
finalized. This is due to the difficulty in predicting when depositing registration
applications will commence in the Sultanate of Oman.
Qatar and the Arab Republic of Yemen are some of the countries that have recently
enacted trademark law. It took a couple of years to get this law implemented in Qatar as
well as the Arab Republic of Yemen, which leads to the assumption that a similar
timeframe may be needed in Oman. Based on this, the publishing/advertising of
cautionary notices remains the only way to ensure trademark protection during the
transition period.