News & insights

IP Highlights – Recordal of Licenses in the MENA Region

November 1, 2013

This article sets forth basic information on the recordal of license agreements in the countries of the MENA region. Noticeably, the common practice and / or the implementing regulations of the trademark laws of some countries require the recordal of trademark licenses, but there are no relevant penalties for failure to record. The interpretation indicates that the failure to record a license agreement can undermine attempts by the licensee to enforce rights against infringers that are claiming to be using the mark in good faith. Presumably, however, the failure to record a license would not prevent a licensee from bringing action against a counterfeiter or another party who infringes a mark in bad faith. Similarly, failure to record a license agreement can undermine attempts by the licensee to enforce rights against any cancellation action brought by a third party based on non-use. For these reasons, the recordal of a license agreement is always recommended in any country of our region regardless of whether this type of recordal is mandatory or not.

Bahrain:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; and license agreement, legalized. A license can be recorded for trademark registrations only.

Egypt:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney from licensor, legalized; power of attorney from licensee, legalized; license agreement, legalized; and certificate of incorporation of the licensee, legalized. A license can be recorded for trademark registrations only.

Iraq:
License recordal is compulsory in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; and license agreement, legalized. A license may be recorded for trademark applications pending examination.

Jordan:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; and license agreement, legalized with Arabic translation. A license may be recorded for trademark registrations only.

Libya:
License recordal is compulsory in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; license agreement, legalized, with sworn Arabic translation; and certificate of incorporation or extract from the commercial register, legalized, with sworn Arabic translation. A license may be recorded for trademark applications pending examination.

Morocco:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, simply signed and sealed; and license agreement, notarized with French translation. A license may be recorded for trademark registrations only.

Kuwait:
License recordal is not compulsory but advisable in order to be effective against third parties. If the licensor or licensee is a Kuwaiti national, the license agreement must be recorded at the commercial registry and not the Trademark Office. A legalized extract from the commercial register would then be duly recognized by the Courts should a conflict arise. A license may be recorded for trademark applications.

Lebanon:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, simply signed; and license agreement; legalized. A license may be recorded for trademark applications.

Sudan:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney from the licensor, legalized; power of attorney from the licensee, legalized; license agreement, legalized; certificate of incorporation of licensee, legalized; and the original registration certificate of the mark(s) for endorsement. A license may be recorded for trademark applications .

United Arab Emirates:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; and license agreement, legalized and a copy of registration certificate of the mark. A license may be recorded for trademark registrations only.

Yemen:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; and a license agreement, legalized. A license may be recorded for trademark registrations only.

Syria:
License recordal is compulsory in order to be effective against third parties. The license agreement must be recorded within 3 months from effective date otherwise a surcharge is levied. Documents required for recordal: Power of attorney, legalized; and license agreement, legalized. A license may be recorded for trademark registrations only.

Tunisia:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, simply signed; and license agreement, legalized with French translation. A license can be recorded for trademark applications .

Oman:
License recordal is compulsory in order to be effective against third parties. Documents required for recordal: Power of attorney, with an Apostille certification; license agreement, with an Apostille certification; and copy of certificate of incorporation. A license may be recorded for trademark registrations only.

Qatar:
License recordal is compulsory in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; license agreement, legalized; and copy of certificate of incorporation of licensee. A license may be recorded for trademark applications.

Saudi Arabia:
License recordal is not compulsory but advisable in order to be effective against third parties. Documents required for recordal: Power of attorney, legalized; license agreement, legalized; and original Saudi registration certificate of the mark for endorsement. A license may be recorded for trademark registrations only.

Should you have any questions, or require any additional information, please do not hesitate to contact us at info@sabaip.com