The international trademark regime, with its vast quantity of systems, languages, laws and cultures, seems intimidating for most GCC brand owners. Fortunately, the existence of several treaties and systems has strengthened the landscape of trademark registration in the GCC region. Such systems help the brand owners streamline their international trademark application and benefit the most from their IP assets in many of the countries in which they do business.
Here is a list of international treaties and agreements that make the GCC trademark registration and protection more robust. Read ahead.
Paris Convention for the Protection of Industrial Property
The Paris Convention is not just limited to trademark registration but includes industrial property in a wider sense. First signed in 1883 and last amended 1979, the Paris Convention treaty covers patents, trademarks, industrial designs, geographical indications, utility models, service marks, trade names and repression of unfair competition.
The treaty is administered by WIPO and states that the patents granted in different contracting countries for the same invention are independent of each other. The Convention doesn’t issue any regulatory conditions for trademarks and states that trademark registration should be determined by domestic laws in each contracting country. The UAE, Kingdom of Saudi Arabia, Kuwait, Sultanate of Oman, Qatar are contracting states to the Paris Convention for the Protection of Industrial Property.
Madrid Protocol
The Madrid System for the International Registration of Marks enables trademark protection in a large number of countries by filing a single international registration. The international registration will affect each member country of the Madrid system. Currently, Oman and Bahrain are the two countries that have contracted to the Madrid Protocol administered by the WIPO. The UAE is expected to be part of the Madrid System of international trademark registration by 2022.
According to WIPO, a trademark is eligible for international registration only if it has already been registered with the trademark office of the Contracting Party, referred to as the office of origin. For instance, conducting trademark registration in Oman will enable brand owners in that country for filing international trademark applications through WIPO. Madrid system is the most cost-effective way to register a mark in multiple jurisdictions. You can seek the help of GCC trademark agents for registering trademarks under the Madrid System without any hassle.
Nice Classification of Trademarks
The Nice Classification is an international classification of goods and services applied for the registration of trademarks. The NICE classification system classifies trademarks into 45 categories of goods and services which makes trademarks easy to distinguish. The brand owners are required to file their goods-related trademarks under Classes 1-34 and the service-related trademarks under 35-45.
Brand owners should register their trademarks under all the applicable classes. Registering In a few classes or registering under the wrong classes would lead to consequences such as competitors taking advantage and brand confusion among the consumers. All the GCC countries have adopted the Nice Classification system of trademark registration. GCC trademark agents will help you identify the right trademark classes and file the application with the relevant trademark office.
Trademark Law Treaty
The Trademark Law Treaty (TLT) is a WIPO-administered treaty that aims to standardise and streamline the procedure of national and regional trademarks including trademark registration in GCC countries. Currently, Oman and Bahrain are the GCC countries party to TLT. The provisions under the TLT consist of three main phases:
- application for trademark registration
- changes after registration
- renewal of trademark registration
The first phase of TLT requires the applicant to follow maxims such as a request, the name and address and other details of the applicant and the representative; various trademark indications such as a specific number of representations; the goods and services under relevant classes of the Nice Classification, and a declaration of intention to use the mark. The second phase is about changes in names or addresses and changes in the ownership of the registration. The third phase has standardised the duration of trademark registration and the duration of renewal to 10 years each.
Geneva Act of the Hague Agreement on Industrial Designs
Oman and Bahrain are the only countries that are parties to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. Design owners can enjoy IP protection in multiple countries by filing a single application with the International Bureau of WIPO. The agreement also minimises the formal requirements of industrial design registrations and also simplifies the management of industrial design registration. Design owners can record any subsequent changes and renew the international registration through a single step.
Consult with the Best Trademark Agents across GCC Region
Understanding which countries are part of which treaties and agreements help the brand owners make better decisions about trademark registration in the GCC region. For instance, the UAE is not a party to the Madrid Protocol but it is expected to join the international trademark registration system in a few months. This knowledge will help brand owners manage their brand portfolios better.
Moreover, the brand owners can get the help of GCC trademark agents like Jitendra Intellectual Property (JIP) to navigate the procedures. JIP has a presence in all the GCC member countries including the UAE, Saudi Arabia, Kuwait, Oman, Bahrain and Qatar. JIP provides bespoke trademark registration services across the GCC at affordable packages. By hiring JIP’s services, brand owners can ensure brand success without any hassle.