News & insights

Kurdish Region of Iraq: Local Protection – Black, White and Shades of Gray

July 26, 2013

The Trademark Office (TMO) of the Kurdish region of Iraq adopted the currently applicable schedule of fees of the TMO of Baghdad by virtue of Ministerial Resolution no 3306 dated April 1, 2013. This decision became effective as of June 1, 2013.

As a matter of fact, there are two TMOs currently operating in Iraq: the TMO of Baghdad and another one established only recently in Erbil for the Kurdish region. In principle, the scope of the registration at the TMO of Baghdad covers the whole country including the Kurdish region. Nevertheless, with a TMO for the Kurdish region, trademark owners now have the option of seeking additional local protection in this territory. Owners may either choose to file new applications or to validate the registrations that they already have in Baghdad before the Kurdish TMO. One fundamental premise of having trademarks protected in the Kurdish region (other than providing a central registry in this territory) is that the Kurdish TMO may start placing the marks on watch at the Customs, allowing for an ex-officio border system.

The question of which route to consider in the Kurdish region (validation or a new application) mainly depends on the particulars of the trademark portfolio in Iraq. Needless to say, if the marks at the TMO of Baghdad are already registered, it would be logical to assume that validation at the TMO of the Kurdish region is the better option. This process would entail the submission of a certified copy of the Iraqi registration as documentary evidence. However, seeing that more than one step would be involved in the process and both the TMO of Baghdad and the TMO of the Kurdish region are engaged in the implementation, delays are expected. Therefore, in some instances, even if the marks are already registered at the TMO of Baghdad, choosing to file directly at the TMO of the Kurdish region can have its advantages.

The bottom line is that seeking local protection in the Kurdish region of Iraq cannot be assessed in black-and-white terms. There are no clear-cut answers to the questions of whether or not protection is necessary, or even the question of which route to pursue. This will all depend on the circumstances involved and on the level of risk that the business is willing to take. In short, protection in the Kurdish region may be advisable in certain situations noting that the more solid the portfolio is, the better the position of the trademark owners will be in bringing an infringement claim in the future. Trademark owners should of course seek sound advice before they decide on the best route to pursue.

Should you have any questions, or require any additional information, please contact us at info@sabaip.com