Trade mark applications worldwide: focus on Gulf Cooperation Council (GCC) countries

We often get asked about trade mark registration around the world: our partners in the US, Australia, New Zealand and the EU regularly assist us with applications in those jurisdictions.

We can apply for trade marks in many other countries under the Madrid Protocol through the World Intellectual Property Organisation (WIPO). However, not all countries are signatories to the Madrid Protocol. In the GCC (which comprises Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and UAE), only the UAE, Bahrain and Oman come under WIPO, but not Saudi Arabia, Qatar and Kuwait.

So – what do we advise when faced with a client who wants to apply for a trade mark in GCC countries?

Costs are high. Unlike the UK or EU where one application can be made in several classes, in the GCC separate applications must be filed for each separate class. For example, the cost of 1, 2 and 3 classes through WIPO for UAE, Bahrain and Oman would be roughly £4,000, £8,000 and £12,000 respectively, whereas, in contrast, in the UK an additional class can be added for £50.

Time to registration is under a year and possibly under six months, assuming no major objections or third-party oppositions.

Applications in Saudi Arabia and Kuwait must adhere to a strict pre-approved list of goods and services. The UAE, Qatar, Bahrain and Oman allow freer drafting. However, a class heading in the GCC covers all goods or services in that class. This means that existing owners have coverage for the entire class and new applicants need to steer clear of anyone with a similar name already registered in that class.

Pre-clearance searches avoid a client wasting money on an unsuccessful application. However, in the UAE, Saudi Arabia, Bahrain, Qatar and Oman, official searches only identify immediate (and not necessarily all) threats. In Kuwait there is no official search option. Publicly available databases (such as the WIPO global brands database) do not have all Middle Eastern countries (eg no Saudi Arabia) and won't cover all potential relevant prior rights, so we’d advise to use these with caution.

Prior use and unregistered rights: prior use is not required for registration in any GCC country. Prior users of marks can challenge later, conflicting, registrations but cannot bring infringement claims.

Document formalities: Saudi Arabia, Bahrain and Oman are signatories to the Hague Agreement on Apostilled Documents. This relaxes certain legalisation formalities. However, Qatar, the UAE and Kuwait require a legalised Power of Attorney at some point in the trade mark application process.

If the business you intend to do in the GCC makes having a trade mark there cost-effective, then we can help guide you through the process. Owning a trade mark across the GCC can be a valuable asset to your business. If necessary we will involve local lawyers and will always try and keep matters to their most cost-effective.

If you would like to discuss trade marks anywhere in the world, please call Brian Levine on 01935 846258 or email him at brian.levine@battens.co.uk