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Facing up to the Middle East challenge

Peter Ollier previews a regional update on the Middle East, India and Pakistan that will look at well-known marks, Customs practices and geographical indications

The countries of the Middle East and the Indian subcontinent present some unique challenges for brand owners who want to obtain well-known status and then use that to enforce their marks. While India, with its booming economy, has been on the radar of brand owners for a while, countries such as Saudi Arabia and the UAE may have been overlooked. It doesn’t help that information on how to register and enforce IP is often hard to obtain and court decisions are rarely published. 

But things are changing. A series of laws have been revised and the successful launch of an Arabic international domain name has focused attention on the region. Faisal Daudpota of Al Tamimi & Company Advocates & Legal Consultants in the UAE, who will moderate today’s session, will briefly explain how the system will work and why brand owners should consider getting involved in the landrush period. “It’s a huge market,” he says. 

Well-known marks

The bulk of today’s session will deal with practical issues such as well-known marks and Customs enforcement. The UAE is open for trade and has a diverse and numerous foreign populations. Sara Holder of Rouse in Dubai, who will be speaking at today’s session, says that this makes it an interesting battleground for rights owners. “Sometimes regional brands gaining reputation in the region may conflict with a mark from another place in the world which may be well-known,” she says. 

The UAE—a Federation of seven Emirates—recognizes well-known trade and service marks in its Trademark Law and provides some limited guidance how to define these kinds of marks. Factors that the courts will consider when assessing well-known status include use and long standing registrations in several foreign countries; spillover reputation may also be taken into account. But one single kind of evidence is unlikely to be enough. 

In Pakistan, protection for well-known marks is well-established, although exact definitions remain vague. “The law provides for protection of a well-known mark, but doesn’t give criteria of what a well-known mark is,” says Mohammed Fazil Bharucha of Bharucha & Co. But a body of case law has developed to guide brand owners. 

India is perhaps the most advanced of the jurisdictions being discussed today. Protection for well-known marks is strong, but the courts could still be more consistent in their decision making. Rajendra Kumar of K&S Partners will outline this protection, as well as looking at India’s thriving geographical indication system. 

Customs and counterfeits

Maren Hanson of the Gulf Consultants for the Protection of Intellectual Property will provide an update on Saudi Arabia, which has also recently updated its Trademarks Law and is working hard to cut down on the increasing problem of counterfeiting. This has been shown by large number of events that have been held on this topic, most notably the Arab Consumer and Brand Protection Forums in 2009 and 2010. 

One thing that unites the diverse jurisdictions within this region is the need for more consistent decision making from the courts. To achieve this Daudpota believes that specialist IP courts are “the need of the hour” in the countries of the Gulf Cooperation Council (United Arab Emirates, Bahrain, Saudi Arabia, Oman, Qatar and Kuwait).  

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