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Advice on protecting unregistered marks in India, Pakistan and the Middle East

The speakers on tomorrow’s panel on India, Pakistan, and the Middle East will talk about protecting unregistered trademarks, and the groundwork that brand owners need to lay down to defend their marks. Peter Leung reports.

It’s a problem that keeps IP attorneys up at night: someone has registered your trademark in an unfamiliar market. What’s worse, your mark, even if is well-known all over the world, is unregistered there.

That is the topic of tomorrow’s panel on the protection of unregistered trademarks in the Middle East, Pakistan, and India, moderated by Shwetasree Majumder. Sara Holder, managing partner at Rouse in Dubai, Sana Shaikh Fikree, an associate at Vellani & Vellani in Karachi, and Justice G S Sistani, sitting judge at the Delhi High Court, will discuss recent developments in their respective regions. Justice Sistani will also report on the state of Indian courts in handling IP matters, using data showing trends in case disposal and system efficiency.The panelists will discuss the challenges of enforcing unregistered trademarks, providing practical tips for brand owners on protecting their rights, and compare the different jurisdictions’ approaches to this developing area.

It’s nice to be well known, but even better to be registered

While Pakistan, India, and the Middle East jurisdictions recognize unregistered trademarks, protection is (as Holder puts it) “an uphill battle”. All three regions give additional protections to well-known trademarks, even if they are unregistered, but Holder believes it can be expensive and difficult to prevail without registration. She points out that getting well-known recognition in court can be costly, not only in gathering the evidence, but because the documents will often need certification, translation, and other legalization requirements.

Fikree also believes that having registration is preferable in Pakistan. In order to succeed in an infringement claim, the brand owner must register the trademark and show that the defendant is unfairly using the mark. If the trademark is unregistered, the brand owner must make a passing-off claim and establish that the mark is well known. “Brand owners with well-documented evidence of local and worldwide use have a good chance of succeeding in a passing-off claim,” says Fikree. She points out that ideally, a brand owner will have both registration and good evidence to bring the infringement and passing-off claims together, but there are still options even if the trademark is unregistered.

Because of these challenges, there are “significant advantages” to having a registered trademark, says Holder. “In many countries in the Middle East, the level of understanding of intellectual property rights is still developing, so there is a lot of emphasis in simply having this piece of paper,” she says. Holder also points out that business regulations in the region often require documentation such as proof of trademark registration anyway, so it makes sense to take the time to register.

Preparing yourself

The panelists have a number of practical tips for brand owners and attorneys. If possible, Holder recommends that brand owners keep robust portfolios with the logos/labels registered separately, which allows for more flexibility in defending their marks. Good record keeping is also important for establishing a trademark as well known. For this purpose, Fikree says that a wide variety of documents can be used, such as advertisements, product registries, and even invoices that clearly refer to the trademark.

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