The Brand
1. Which brand(s) are you looking to protect? Generally this brand must be distinctive and be capable of distinguishing your products or services from others. Avoid generic descriptions such as ‘Middle East Hotel Management Company’.
2. Have you carried out searches (e.g. Google, TM registry etc) to check if the brand name is free to use? Unfortunately in the Middle East not many TM registries have a free online search websites so you have to pay to carry out the searches and sometimes the cost is almost as much as the application fees.
3. Do you want to protect a word mark (e.g. the brand name) in all formats or are you looking to protect a specific stylized logo of the brand (or both)?
4. Is your logo in a distinctive colour? Generally we suggest you register a logo in black and white as this affords protection in all colours however if the colour itself serves as the distinctive part of the mark it could be worth considering registering the colour as well.
5. Have you already registered the brand in any country in the world? If so, many countries in the Middle East are signatories to the Paris Convention (including all GCC countries), which provides you with a right of priority within 6 months from the first filing.
Classes of Goods/Services
6. What good and/or services will you be providing under this brand? The NICE Classification (an international TM classification system) has 45 different classes (34 goods and 11 services) to choose from. Although the 11th version of the NICE Classification was released on 1 Jan 2017, the GCC countries (other than Bahrain) are not signatories to the Nice Agreement so they will not automatically update to the new version. Most GCC countries are currently using the 10th edition but Kuwait only recently took the move to the 10th edition (was due to be effective on 1 Jan 2017) and Qatar is only just moving on from the 7th version with effect from 12 Feb 2017. To further complicate matters, some trade mark offices often refer to their own Arabic translations of the classes which may not fully align with the latest versions.
Also, most countries in the Middle East do not allow multi-class filings therefore each class has to be registered separately. This means you may not simply want to copy your current Community Trade Mark registrations in Europe (where you get effectively get 3 classes for the price of 1).
7. What goods/services might you provide under this brand in the future? Please keep in mind that if the specification is too wide and the brand is not used on those goods/services, it can be open to challenge for non-use in some Middle East countries (e.g. in the UAE if it hasn’t been used for 5 years).
Countries
8. Which countries are you planning on using the brand in? Most Middle East countries (other than Bahrain, Iran, Syria and Oman) are not signatories to the Madrid Agreement for the International Registration of Marks (an international registration system) so individual national applications are required. You would normally start with your home country i.e. where your company is located and then consider which countries you will be active in / targeting for sales. You may wish to consider a phased approach (to help with budgeting) e.g. Phase1 UAE, Phase 2 GCC etc. but take into account the 6 month priority period afforded by the Paris Convention.
TM Owner
9. Which entity will apply for and own the TM’s? We suggest you consult your tax advisors about this especially if there will be any licence fees payable for use of the TM’s. TM’s can always be assigned at a later date but there will be costs involved (in many countries almost as much as registering) and potentially tax implications based on the value of the TM’s at the time of transfer.
Translations and Transliterations
10. Will you be using English, Arabic or both? If you want to use Arabic will you be using a translation or a transliteration (i.e. changing the script from English to Arabic rather than translating the meaning)? In any event you will be required to provide the Arabic meaning of your English brands on the TM application form.
Restrictions to Note
11. In the GCC there are restrictions on registering certain goods such as alcoholic drinks (class 33) as well as the normal international restrictions (e.g. if the brand is descriptive or immoral etc).
Budget
12. What is your budget? Consider your budget not only for TM filings but also to deal with any oppositions or objections. Registration costs in the GCC are some of the highest in the world e.g. approx $4-5k per class in some countries.
If you need any help with your IP strategy in the Middle East please contact joby@thebenchlaw.com.