Introduction
Selection and protection of Arabic marks
Translation v transliteration
Comment
The Middle East has undergone radical change during the past century, largely as a result of the discovery of oil, which in turn fuelled the rapid development of property-based economies. In particular, the Arabian Gulf region has experienced an unprecedented economic boom that has seen a large number of investment opportunities materialise, which have been exploited with great success.
The initial focus of the developing economies was on the in-licensing of foreign brands, with brand owners seeking to protect their IP rights within these markets. The costs of securing trademark registration across the Middle East are among the highest worldwide. Therefore, when assessing where best to focus their resources, brand owners must establish which markets are key to their business strategy and protect those rights adequately.
There are a significant number of English speakers within the Middle East, particularly in countries where there are large expatriate communities. However, the first language across the region is Arabic. Foreign brand owners should therefore consider the importance of registering Arabic versions of their trademarks, through either translation or transliteration of the original marks, in order to achieve sufficient local language protection.
Selection and protection of Arabic marks
International brand owners tend to register their original trademarks in the country in which they intend to establish their business, and then subsequently extend this protection to other territories into which their business expands. In some regions, this raises the question of whether foreign language equivalents should be registered. However, historically many businesses have been slow to (or chosen not to) register Arabic language equivalents of their trademarks. Whether this has resulted from the high costs of registering trademarks in the region or the perceived complexity of the processes involved is unclear.
In most Middle Eastern jurisdictions it is not a requirement for an international brand owner's trademark to be registered in Arabic only - it is possible for trademarks to be registered in Latin script, either alone or alongside the Arabic translation or transliteration of the original mark as a combined mark. Similarly, in the marketplace, international brands that have a presence within the Middle East may feature the Latin script either alone or alongside the Arabic translation or transliteration of the mark (although these are not always registered). It is less common for international brands to feature the Arabic version alone in the marketplace, except in countries such as Saudi Arabia.
It may be for these reasons that some international brand owners choose to rely on their protection through the English language (or Latin script) version of their trademarks only. However, problems can arise when it comes to asserting and enforcing these rights (eg, in trademark infringement actions or opposition proceedings) against third parties using or attempting to register conflicting Arabic translation or transliteration marks. Although in most Middle Eastern jurisdictions the English language (or Latin script) trademark provides some degree of protection for the Arabic equivalent (whether translation or transliteration), it is always easier to rely on and enforce 'like for like' language marks. Relying on the English language (or Latin script) mark alone can therefore be an expensive and incomplete brand protection strategy.
Some degree of protection is afforded to well-known trademarks under Article 6bis of the Paris Convention, and some Middle Eastern countries (eg, the United Arab Emirates, Saudi Arabia and Iraq) have attempted to incorporate its provisions into their trademark laws. Members have agreed "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 applies only to well-known trademarks and there is no definition within the convention as to what constitutes a well-known mark. Therefore, this provision can be difficult to rely on, leaving many marks exposed to infringement if the translation is not registered within the relevant jurisdiction.
The UAE Trademarks Law 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." (emphasis added)
Article 38 goes on to state that the use of such a mark constitutes a criminal offence punishable by way of a fine and/or imprisonment.
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 trademark is whether to select the literal translation of the original English language mark (assuming that it is a mark with a dictionary meaning, and not an invented word) or the transliteration of the original English language (or Latin script) mark into Arabic characters.
The literal translation of an English language trademark 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 any given word, so care must be taken to select the most accurate and appropriate one.
Furthermore, relying solely on trademark registrations for English language marks to provide protection for the Arabic translations can be problematic, as although the two versions may have 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 second option is to protect the phonetic transliteration into Arabic characters of the original English language (or Latin script) mark. The biggest problem faced when producing a suitable Arabic transliteration mark is that the Arabic and Latin alphabets are markedly different - in particular, 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, the unavailable letter must be substituted with "the next best thing" - usually a similar sounding letter. An example of this would be a word such as 'princess', in which the letter 'P' would typically have to be substituted for the Arabic equivalent of the letter 'B'; thus, the transliterated word would effectively read 'brincess'.
In addition, 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 'bricks' in Latin characters, it could be written as 'brix', 'brics' or 'briks'. The same principle applies when transliterating words into Arabic characters. This introduces a vast scope for inconsistencies - care must therefore be taken from the outset to select the most accurate and appropriate transliteration and to ensure that this version is consistently used. For example, if a brand owner registers one version of an Arabic transliteration but ends up using another in the marketplace, the trademark registration may become vulnerable to cancellation for non-use. Furthermore, the use of more than one transliteration could create uncertainty in the minds of consumers.
There is a risk that by not protecting the Arabic version of the mark by which a brand owner wishes to be known, consumers will either develop no real recognition for the brand or develop their own inaccurate Arabic names when referring to the brand. If a number of groups develop a variety of names for the brand, it will be very difficult for the brand owner then to seek to control the development of brand identity within the market. By registering the correct Arabic version of its mark, a brand owner can ensure that consumers have certainty as to the origin of the goods or services and build valuable brand equity.
Brand owners with an established or intended presence in the Middle East should review their trademark protection to ensure that their marks are adequately protected and 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, by doing so, brand owners can more easily enforce their rights against third parties.
Generally, Arabic transliteration marks tend to hold more value and strength than Arabic translation marks. When selecting an Arabic language version of a mark (whether a translation or a transliteration), it is important to remember that there could be several potential variants. Careful thought and consideration should therefore be given to selecting the most appropriate variant for adoption and protection in local markets.
For further information on this topic please contact Saba Al Sultani at Clyde & Co by telephone (+971 4384 4000), fax (+971 4384 4004) or email ([email protected]).