Introduction
Benefits to protecting your brand
Translation or transliteration?
Comment
While Arabic is the official language of the United Arab Emirates, English features heavily in daily life except for any government or official dealings. This leads to many brand owners limiting protection of their trademarks in the United Arab Emirates to English only. This article briefly explores why this may not always be best practice and highlights some considerations to bear in mind should brand owners decide to protect their trademarks in Arabic.
As a starting point, it should be noted that it is not mandatory under the Trademark Law to register the Arabic equivalent of a trademark registered in English. However, many companies and individuals mistakenly believe that having an English language version secure will automatically extend the same degree of protection to its Arabic version (and vice versa). This is not the case generally and applies only if the mark in question is well known. The issue then becomes, if registration in Arabic is not mandatory, is it recommended?
Benefits to protecting your brand
There are certainly benefits to protecting your brand in Arabic, but given the high registration costs in the United Arab Emirates, additional coverage is often determined by budget. One of the main benefits of protecting a mark in Arabic is that it prevents third parties from getting on the register first (it is important to remember here that the United Arab Emirates uses a "first-to-file" system). Just as having an English language version registered does not automatically protect the Arabic equivalent (either the translation or the transliteration), the UAE Trademark Office will not examine third party applications against different language equivalents. As such, if a third party files an Arabic version of a mark that is already registered in English, it is very unlikely that the examiners would issue a refusal based on the English registration. This then forces brand owners to be more proactive in watching the registers so that they can oppose if necessary.
Having a registration in Arabic is also important when it comes to enforcement in the United Arab Emirates. If a third party uses an Arabic version of a mark but only the English has been protected, a case before the local authorities, such as the Department of Economic Department, may not be as straightforward as it would be had the Arabic version been protected. While it does not render enforcement entirely impossible, it could make it more difficult, particularly if the brand in question is not well known.
Translation or transliteration?
If it is decided to protect an Arabic version, the next consideration is whether the Arabic translation or transliteration should be chosen. In summary, an Arabic transliteration is replacing the letters of the original trademark with letters that sound identical in Arabic; whereas an Arabic translation is using a word with the same direct meaning, but the word itself will have a completely different sound to the original trademark. Both options come with their challenges and it is vital to seek local advice before a final decision is made.
While not an exhaustive list, some things to be wary of are as follows. A Latin trademark may have more than one meaning (translation) in Arabic and careful thought must be taken to choose the most relevant meaning. Added to this, there are multiple Arabic dialects, meaning that two Arabic speakers from different countries could use two different words for one term in English. For example, the word "bread" may be translated as "khobz" or "eish", among other words. The same can be said for transliteration. For example, the word "clock" can be transliterated into "clok" or "klok". Further, it is important to remember that some Latin characters do not have a direct equivalent in Arabic. One such example is the letter "v", which is transliterated as "f" in Arabic.
For these reasons, it is important for brand owners to approve their Arabic version from the outset and implement it across their countries of interest within the region for consistency. Leaving it for the public to interpret the Arabic equivalent according to their own understanding and local practices will no doubt affect the identity of the mark, and it can be difficult to regain control. Consistent usage is also important to avoid non-use risks down the line.
For a mark that may be predominantly used in English in the United Arab Emirates, protecting it in Arabic ultimately remains at the brand owner's discretion. However, if a decision is made to proceed down this path, careful consideration and discussions with local counsel are advised.
For further information on this topic please contact Sahar Tarhini or Renee Nugent at Bird & Bird by telephone (+44 20 7415 6000) or email ([email protected] or [email protected]). The Bird & Bird website can be accessed at www.twobirds.com.