The Middle East and, in particular, the Arabian Gulf region has long been an attractive market for international brand owners. As the region continues to experience economic growth, the interest from international brand owners also continues to rise. With this increasing interest, the need to adequately protect their IP rights in the region remains an issue of core importance to brand owners.
Despite there being a large number of English speakers within the Middle East, Arabic remains the first language across the region. Accordingly, it is important for international brand owners to give careful consideration to the registration of Arabic versions of their trade marks, through either translating or transliterating the original marks in order to reflect their use in local markets.
However, with the cost of securing trade mark registrations in the Middle East being among the highest worldwide, careful assessment of how best to focus resources is crucial. In countries like the UAE (where the official fees for trade mark applications have recently increased by two-fold), this is now more important than ever before.
Local requirements and considerations
In most Middle Eastern jurisdictions it is not a requirement for trade marks to be registered in Arabic. It is possible for trade marks to be registered in Latin script, either alone, or alongside an Arabic translation or transliteration of the original mark, as a combined mark.
Similarly, in the marketplace, international brands which have a presence in the Middle East may use the Latin script alone or alongside an Arabic translation or transliteration of the mark (even if these are not registered). It is less common, however, for international brands to feature the Arabic version alone in the marketplace, although this does occasionally happen in countries such as Saudi Arabia.
Perhaps it is for these reasons that some international brand owners choose to rely solely on their protection for the English language (or Latin script) version of their trade marks. However, problems can arise when it comes to asserting and enforcing these rights (for example in trade mark infringement actions or opposition proceedings) against third parties using or attempting to register conflicting Arabic translation or transliteration marks.
In many Middle Eastern jurisdictions, the English language (or Latin script) trade mark provides some degree of protection for the Arabic equivalent (translation or transliteration). However, it is always easier to rely on and enforce ‘like for like’ language marks. Relying on the English (or Latin script) mark alone is an incomplete brand protection strategy which can result in additional costs being incurred when it comes to enforcement against Arabic language brands.
There is some degree of protection afforded to well-known trade marks under Article 6bis of the Paris Convention, which some Middle Eastern member states (such as Saudi Arabia and the United Arab Emirates) have incorporated into their trade mark laws. Signatories to the Paris Convention are obliged “to refuse or to cancel the registration, and to prohibit the use” of a translation of a well-known mark should it cause confusion. However, Article 6bis only applies to well-known trade marks and there is no definition within the Paris Convention as to what constitutes a well-known mark. Therefore, this provision can be a difficult one on which to rely, leaving many marks exposed to infringement if the translation is not registered within the relevant jurisdiction.
The UAE Trade Mark Law (UAE Federal Law No. 37 of 1992, as amended) extends this protection to earlier registered marks as well as well-known marks, with Article 3.14 stating that it is not possible to register “marks that are considered to be not more than translations of a famous mark or another previously registered mark if the registration of the mark would cause confusion amongst consumers in relation to the products that are distinguished by the mark or similar products”. Article 38 goes on to provide that the use of such a mark constitutes a trade mark infringement.
However, the degree of protection afforded to the Arabic translations of foreign language marks varies from country to country across the region. The most notable issue when it comes to selecting an Arabic version of a trade mark is whether to select the literal translation of the original English language mark (assuming it is a mark with a dictionary meaning, and not an invented word itself) or a phonetic transliteration of the original English language / Latin script mark into Arabic characters.
Translation vs. transliteration
The literal translation of an English language trade mark into Arabic will almost certainly be phonetically different from the sound of the original mark in English. Although there are a few words shared by both languages, these are relatively rare and most translations will sound very different. In addition, there may be more than one possible translation into Arabic for a given word, and so care must be taken to select the most accurate and appropriate translation.
Relying solely on trade mark registrations for English language marks to provide protection for the Arabic translations can be a risky strategy. Although the two versions may share the same meaning, in some jurisdictions, if a third party were to use or apply to register the Arabic translation of a mark, the marks may not be considered confusingly similar based on the visual and phonetic differences.
The other option is to protect the phonetic transliteration into Arabic characters of the original English language / Latin script mark. The biggest problem that can be faced when producing a suitable Arabic transliteration mark is that the Arabic and Latin alphabets are significantly different – not all of the letters present in one are present in the other, and vice versa. For example, the letters ‘G’, ‘P’ and ‘V’ do not exist in the Arabic language.
Therefore, when creating a transliterated version of a mark containing any of these letters, it is normally necessary to substitute the unavailable letter with ‘the next best thing’ – usually a similar sounding letter. An example of this would be a word such as ‘PINEAPPLE’, in which the letter ‘P’ would typically have to be substituted for the Arabic equivalent of the letter ‘B’ – so the transliterated word would be pronounced ‘BINEABBLE’.
One point which is of core importance when considering the option of a transliterated mark is that transliteration is largely subjective and there may be more than one way to transliterate a mark into Arabic characters. For example, in order to convey the sound of the word ‘STICKS’ in Latin characters, it could be written as ‘STIX’, ‘STIC’ or ‘STIKS’. The same principle applies when transliterating words into Arabic characters.
This introduces scope for inconsistencies and it is important from the outset to ensure that care is taken to select the most accurate and appropriate transliteration and that this version is consistently used. If, for example, a brand owner registers one version of an Arabic transliteration, yet uses another in the marketplace, then the trade mark registration could in due course become vulnerable to cancellation for non-use. Further, the use of more than one transliteration could produce uncertainty in the minds of consumers.
Also, by registering and using an ‘official’ Arabic version of a mark, consumers may start to recognise the brand in Arabic and they are less likely to develop their own unofficial (and unprotected) Arabic versions of the brand.
By registering and using a single ‘official Arabic version of its mark, the brand owner can help ensure that consumers will have certainty as to the origin of the goods or services and thereby build valuable brand equity.
Brand owners with an established or intended presence in the Middle East should ensure that their marks are adequately protected and that they reflect their use in local markets. For the most part, there is no strict requirement for brand owners to register Arabic language versions of their marks. However, consideration should be given to obtaining Arabic language protection in order to assist in developing a single ‘official’ Arabic brand and make it more straightforward to maintain exclusivity for this Arabic brand.
Often, particularly with innovative and distinctive trade marks, an Arabic transliteration of the original mark will hold more value and strength than a translation. When selecting an Arabic language version of a mark (whether a translation or a transliteration) it is important to remember that there may potentially be several variants available. Therefore, careful thought and consideration should be given to selecting the most appropriate variant for adoption and protection in local markets.
Arabic is the fifth most used language worldwide, with some 300 million native speakers, and it is the dominant and official language in most countries in the Middle East.
There is a risk that by not protecting the Arabic version of the mark by which a brand owner wishes to be known, Arabic speaking consumers will either develop no real recognition for the brand or develop their own inaccurate Arabic names when referring to the brand. By selecting and registering official Arabic versions of their marks, brand owners will ensure that, not only will they achieve a greater degree of protection for their marks, but that they are also able to build and manage consumer recognition in the region such that the value of their brands is further increased.