News & insights

IP HIGHLIGHTS: First to File Countries

May 26, 2014

Almost all countries of our region are civil law countries with the code typically exhaustively covering the complete system of the law. This being said, the first-to-file concept is given considerable weight. Despite the fact that some countries may offer a limited amount of common law rights, enforcement is relative and solely determined by the practitioner handling the case. Therefore, registration of marks in the Arab world is highly recommended and the 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 where a non-use cancellation action is similar to an opposition action in applicable law, the situation is not the same in the MENA region. In most countries, administrative procedures for canceling a trademark are not available and so cancellation actions must be brought before the local Courts, which can greatly increase the time, costs and even predictability of such proceedings. Another issue is related to the burden of proof. In most countries in our region, the burden of proof in a cancellation proceeding will usually be on the plaintiff in order to prove that the registered trademark should not be registered. This of course renders non-use cancellation actions expensive since a negative must be proven, namely, that a mark is not in use.

In short, protection of trademarks in the Arab region is an important yet challenging process that requires special consideration and handling. Even more, there is no pan-Arab registration, similar to the Community trademark, which relatively complicates the registration procedures. Therefore, owners must be able and ready to adopt a model that incorporates both legal as well as regulatory approaches in order to arrive at a solid trademark protection strategy. Fortunately, the trademark laws across the region are harmonized to a large extent, except for few countries including Lebanon and Morocco.  In almost all the articles that define the absolute grounds of registration, the directives are equivalent in content and have to be interpreted in the same way, while the minor differences is in the scope only. In Saudi Arabia, for example, the scope is limited to what basically does not violate the Shari’a (Islamic) law. The difficulty would basically arise at the time of substantive examination, where practice differs between the countries. Needless to say, trademark owners should seek sound advice before they decide on the best route to pursue.