News & insights

MENA: Stitching the Seams to Protect the Fashion Industry

October 2, 2014

Innovation and creativity are penchants of the fashion industry; an industry that dictates style worldwide. A fashion item may even transcend its physical form and be hailed as a trend setter and an inspiration for decades. The process of production in the fashion industry relies on a substantial investment of both inventiveness and capital. This feature offers trademark owners in the fashion industry relevant information on trademark protection in the Middle East and North Africa region.

Classification

There are no specific requirements when it comes to the registration of marks in classes that the fashion industry may be interested in, such as classes 3, 9, 14, 18 and 25.  Concerning the specification of goods, some Trademark Offices, will accept an application claiming the whole class without specifying the particular goods. The use of class headings of a particular class constitutes a claim to all of the goods falling within this particular class and implicitly covers any goods directly related to the class headings – that is, covers more than the literal meaning of the class headings. Other TMOs, such as those of Jordan, Oman, and Sudan, request the applicant to specify the goods in the class wherein the actual language used in describing the goods will define the parameters of the scope of protection of a registration.

Search and Examination

Search among related classes, such as class 18 and classes 9, 14 and 25, is not performed on an ex-officio basis. When it comes to examination, a mark is not usually rejected on relative grounds based on the existence of a prior mark in a related class unless the mark is considered to be well-known in the country.  Unlike common-law countries, MENA countries have no express anti-dilution provisions in their trademark laws. Nevertheless, many countries have introduced provisions to their trademark laws on the likelihood of confusion between conflicting marks as part of their implementation of the TRIPS Agreement.

Enforcement

Trademark owners should be willing and ready to adopt a trademark protection model that incorporates both the legal and regulatory approaches in order to formulate a well-established trademark protection strategy.

Legal Approach

To claim infringement, the trademark owner must establish that perpetrators are using their registered mark in connection with the sale or advertising of goods without consent and that this use is likely to cause confusion.  Infringement is usually proven if the marks are sufficiently similar that consumer confusion can be established.

Administrative Approach

It is possible in some countries to apply administrative procedures in the fight against infringements. This is done by filing a complaint with the competent authorities such as the Commercial Anti-Fraud Department in Saudi Arabia, and the Dubai Economic Department in the UAE. All these bodies usually consider complaints against counterfeits or look-alikes only, and raids are carried out if the findings are conclusive.

Border Measures

Customs recordal procedures are available in Algeria, Morocco, Sudan, Tunisia, and the UAE. This process allows customs officials to be on the lookout for counterfeit goods and take, ex officio, prompt and proactive action to confiscate them, thus avoiding judicial action delays.

Signboard Requirements and Protection of Marks in Arabic

An important aspect to consider is the signboard requirements in countries of the region. Egypt, Jordan, Saudi Arabia, UAE, Oman, Qatar and Syria require that trademarks appear on signboards in Arabic – either by law or by common practice. This implies that the use of an Arabic mark will become necessary and registration is recommended. If a trademark has been registered, then it is much easier to demonstrate and to enforce rights through an infringement action.

The table below lists where registering an Arabic trademark is advisable, despite not being a requirement by law.

 Country

Does the law require Arabic to be on the signboards? 

Is registration in class 35 in Arabic advisable? 

 Lebanon

 No

 No

 Bahrain

 No – can be in Arabic, Latin, or a combination of both

 No

 Egypt

Arabic and Latin 

Yes 

 Jordan

 Yes – the mark in Latin can also be displayed along with the Arabic mark

 Yes

 UAE

 Yes – the mark in Latin can also be displayed along with the Arabic mark 

 Yes

 Oman

  Yes – the mark in Latin can also be displayed along with the Arabic mark

 Yes

 Qatar

  Yes – the mark in Latin can also be displayed along with the Arabic mark

 Yes

 Kuwait

 No

No 

Syria 

Yes 

Yes 

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