Sarmad Hasan Manto of UTPS explains the necessity and legalities involved in the registration and protection of trademarks in Arabic language in the Middle Eastern countries.
Use and consequential infringement of rights in local languages had always been a challenge for trademark rights holders across the world. Same is the case in the Middle East where most of the multinationals adopt transliteration of their famous marks in Arabic language to cater to the local market and in some cases to comply with the local laws and regulations. Though most of the rights holders get the Arabic transliteration cleared before its adoption to ensure that it does not have any adverse connotation, not all proceed with registering their marks in the Arabic language. This certainly is a cause of concern
Adoption of famous trademarks in Arabic language by third parties is a common phenomenon in the Middle Eastern countries. Such infringements are either done by adopting the exact transliteration or closely similar permutations which could easily deceive the customers. The local administrative authorities tend not to take action against counterfeits unless the trademark is registered in the language it is being infringed. In such cases, the concerned IPR Departments usually refuse to conduct anti-counterfeiting raids on the ground that the trademark is infringed in a different language for which the rights holder has not obtained registration in the concerned jurisdiction. The aggrieved party, in such circumstances, is left with the option of litigation, which certainly is expensive, tedious and protracted.
In the recent past we have observed infringement of famous trademarks, in some of the Middle Eastern countries, which were adopted by third parties in a confusingly similar Arabic script written in a manner which is almost identical to the form used by the trademark owner. These marks were accepted for publication by the Trademark Examiner and were published in the Trademark Journal. The fact that the marks were accepted for publication is enough evidence of oversight of the Examination authorities at the Trademark Registry. The situation of other administrative authorities could well be understood, if the Trademark Registry could commit such mistakes.
It is needless to mention that in the event the trademark is not registered in Arabic language, the use of ® marking on the Arabic version is not allowed or to be precise would be against the law. Hence, in accordance with the prevailing law of the pertinent jurisdiction, the rights holder should ensure that none of the unregistered marks in the local language are marked with the ® sign.
The cost of litigation, filing oppositions and if by any chance an infringing mark is registered, the cost of filing a cancellation action and moreover the probability of an adverse decision by the authorities/ court is a much greater risk and expense than to obtain registration of the rights holder’s extremely valuable marks. Hence, in order to obtain adequate protection of trademarks, it is highly recommend that all trademarks which are commercialised or produced in the Middle East should be registered in the Arabic language.