Paris Convention: Claiming Priority and Protecting Famous Marks

All Arab countries are now members of the Paris Convention, with Kuwait being the latest addition. Priority claim requests in Kuwait will become admissible starting 2015. Also, with the Paris Convention membership, all Arab countries are expected to respect Article 6bis which applies to non-similar goods or services, provided that use of the later mark indicates a connection to the owner of the well-known mark and that the interests of the owner of the well-known mark are likely to be damaged. However, there are no clear regulations or case laws so far that comment specifically on the prerequisites for claiming protection under Article 6bis.

One important aspect that should be taken into consideration when addressing the concept of famous marks in Arab countries is the principle of “first-to-file” versus “first-to-use.” Seeing that almost all countries are in principle civil law countries with the code typically exhaustively covering the complete system of the law, first-to-file is given considerable weight. Needless to say, countries of our region may offer a limited amount of common law rights but this is a matter solely determined by the practitioner handling the case. Therefore, as things stand, registration of marks, even for famous marks, is highly recommended. Mere registration can be a basis to sue an infringer, although the risks of a non-use cancellation action must be factored-in in any filing strategy. However, unlike the United States and most European countries where a non-use cancellation action is similar to an opposition action in applicable law, the situation is not the same in the Arab world. In most countries, non-use cancellation actions must be brought before the local Courts, which can greatly increase the time, costs and even predictability of such proceedings.
Specification of Goods/Services in an application

There are specific considerations applicants should account for when working on the specification of goods/services for trademark applications filed in KSA, UAE, Jordan, Oman and Sudan. Starting with Jordan, Oman and Sudan, claiming class headings is not acceptable at all, and the actual language of the goods or services specified in the registration will define the parameters of the scope of protection of a registration.

On the other hand, pursuant to the introduction of the e-filing system, class headings are acceptable by the TMO of KSA. Even more, the TMO will no longer accept specifications for goods and services that do not exactly match with the Nice specification. Applications with an item that is not explicitly on that list will not be properly docketed into the system, which would basically result in considerable delays.
As far as UAE is concerned, the TMO will no longer issue pre-examination decisions, which can mean that if an examiner is not satisfied with a certain specification of goods, the application will be automatically rejected. This was not the case in the past. The TMO was more flexible in the sense that if anything is seen not to be clear with the specification, the applicant is notified and then given a period of time to make the necessary correction. This being said, applicants should be very careful when specifying the goods/services in a trademark application in UAE, and it goes without saying that claiming class headings would be the safest approach. There is no need to worry about the fact that the exposure risk would be increasing with this wide-ranging claim because the general practice of examiners at the TMO is to look at class-headings as a whole at the time of examination on relative grounds regardless of whether or not there are different trade channels involved.

To wrap up, the process at the UAE TMO is not identical to the one in the KSA. While at the KSA TMO applicants are required to claim class headings and/or use the exact language of the Nice classification, this practice is only a recommendation at the UAE TMO. Applicants may choose their own language in the specification but they may then be more vulnerable to a rejection decision. If for some reason the examiner is not satisfied with the language of the specification, he/she will immediately issue a rejection decision.

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