The Middle East is currently seeing rapid growth and diversification of industries. As a result, many Australian businesses are looking to the Middle East not only as a transit hub between Australia and Europe, but to expand their offshore operations. If you are looking to grow your business overseas, you should have a brand protection strategy in place. This will prevent other businesses from exploiting your reputation and intellectual property (IP) when you make the move. In this article, we look at how you can protect your brand in the Middle East.
The Problem With the Madrid Protocol
The first step to protect your brand in the Middle East is to register trade marks across the region.
A common and cost-effective way to quickly get protection across multiple jurisdictions is to apply through the Madrid Protocol. This is an international treaty that lets you submit a single application for any number of member countries. You will need to have an existing trade mark in your home country to apply.
However, many Middle Eastern countries are not signatories to the Madrid Protocol. For most markets, the only option is to apply directly to the national trade mark office in the countries you will be marketing, selling, and operating in.
Note: Unlike the European Union, there is no overarching trade protection applying to the six member states of the Gulf Cooperation Council. You would need to apply for trade mark protection separately for each country.
Making Country-Direct Applications
Filing trade mark applications directly to each national trade mark office instead of through the Madrid Protocol can be more complex. However, it does allow for flexibility and adaptation to local processes and requirements. For example, many Middle Eastern countries do not allow any class specifications that include pork or alcohol.
There have been recent steps to harmonise trade mark laws in the region. This means that trade mark application processes are now fairly consistent from country to country. However, each country still has their own examination criteria. It is important to seek specialist advice and assistance when looking to protect your brand in the Middle East, as filing fees are among the most expensive in the world. The smallest errors can mean you have to submit a fresh application and repay the costly official fees.
Many countries also require the applicant to take additional action at various stages to continue their application. This is in contrast to Australia. For example, once a trade mark application has been examined in the United Arab Emirates, you must advertise the trade mark in public newspapers before it can be registered. As a result, some trade mark registrations can take up to three years to be finalised.
If you have already applied for an Australian trade mark, you can claim your Australian priority date (the date of your Australian trade mark application) for most Middle Eastern countries. This means your international application will be treated as though it was filed at the same time as your Australian application. Depending on the country, you will need to apply within 6 or 12 months of filing the Australian mark.
There are some common mistakes you can guard yourself against when applying for trade mark protection in the Middle East. You can save yourself from additional costs, delays and potentially rejected trade mark applications by being aware of the following two issues:
- If you are making a direct country application as a foreign business, almost every Middle Eastern country will require you to have a notarised or apostilled power of attorney. Some countries also require these documents to be:
- in Arabic; and
- authorised by the local consulate office in Australia.
- Registration of an English word or phrase does not provide trade mark protection of that word’s translation in another language.
Protection in Key Countries
The table below sets out:
- whether the relevant Middle Eastern country is party to the Madrid Protocol;
- how long trade mark protection lasts in the country; and
- whether the applicant can claim a priority date.
|Country||Madrid Protocol||Protection Period||Convention Priority|
|Saudi Arabia||No||10 Hijri years (approximately 9 years and 8 months)||Yes|
|United Arab Emirates||No||10 years||Yes|
You should also consider trade mark registration in major Middle Eastern transit hubs to protect yourself against counterfeit goods. Customs officers can then look at registered trade marks when inspecting freight. By doing so, they can prevent the passage of counterfeit goods and prosecute wrongdoers.
Be aware that some countries may offer minimal protection for unregistered trade marks. However, usually, trade mark offices look less favourably on foreign businesses who do not register locally. This is particularly the case for foreign franchisors who look to countries like Saudi Arabia to benefit from corporate tax concessions.
Brand Protection in Disputed Territories
Despite the economic activity, there are still many disputed territories in the Middle East region. This, coupled with the expensive trade mark application fees, means that you must have a clear business expansion strategy.
If you want to enforce your trade marks in disputed territories (like Palestine), be aware that these territories have their own independent trade mark offices. Accordingly, they may not recognise registered marks of other states. For best practice, register your trade mark in each office that governs the territory you want protection in.
The Middle East is a rapidly growing and high-value market to Australian businesses. However, the differences in local laws, customs, and culture can impact your business and its reputation even before you start trading. Brand protection is critical when expanding to the Middle East, and without expert guidance, mistakes can be very expensive.
To protect your brand in the Middle East, or for more information on the trade mark application process, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.
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