Is it possible to take effective enforcement action in Bahrain?
In short, the answer is yes, although things are not always as straightforward as they appear.
Historically, the only two options for brand owners seeking to enforce their trade mark rights in Bahrain were criminal and civil. However, in more recent years some administrative procedures have become available which in some clear-cut cases can provide a more straightforward and cost effective solution for intellectual property rights owners.
The majority of enforcement actions in Bahrain are claims for trade mark infringement under either the Bahrain Trade Mark Law (Law No. 11 of 2006) or the GCC Common Customs Law. As is the case throughout the Middle East and North Africa (MENA) region, it is important to obtain trade mark registrations before commencing an enforcement action in Bahrain.
Brand owners have four main options to consider when looking at bringing an enforcement action in Bahrain:
1. Administrative complaints
Administrative complaints in Bahrain are filed with the Industrial Property Inspection Department at the Ministry of Trade and Industry (MOTI).
The complaint will need to be accompanied by:
- copy trade mark certificates showing that the brand owner holds registrations in Bahrain for the marks which are being infringed;
- a legalised Power of Attorney authorising the brand owner’s local agent in Bahrain to act on its behalf;
- evidence of infringing acts (eg a sample of the infringing product and a sales receipt); and
- a document setting out a comparison between the genuine and infringing products (together with genuine and infringing samples).
If the MOTI accepts the complaint, then a MOTI inspector will visit the infringer's premises and issue a violation notice if any infringing goods are identified.
This notice will state that the infringing acts must cease and that all infringing goods must immediately be removed from sale.
In the event that the infringer fails to comply with the violation notice, then the MOTI can refer the matter to the Public Prosecutor to issue criminal proceedings against the infringer.
2. Criminal complaints
If large quantities of infringing goods have been identified by a brand owner, then it may be more appropriate to bring a criminal complaint. A criminal complaint may be filed directly with the Public Prosecutor, who will then investigate the matter and decide whether or not to prosecute the infringer.
Alternatively, if the brand owner has filed an administrative complaint with the MOTI and the infringer has failed to comply with the violation notice, then the MOTI can then refer the matter to the Public Prosecutor for action.
3. Civil claims
A civil claim can be filed in relation to trade mark infringement matters. However, with administrative and criminal options being available for many straightforward cases, brand owners tend only to incur the costs of civil proceedings in non-routine cases (for example involving lookalike products) or where infringing goods have been seized by Bahrain Customs (see below).
As in other civil code jurisdictions there is little oral advocacy in the Courts in Bahrain. Instead, civil litigation is conducted through written Arabic pleadings which are exchanged at hearings set by the Court appointed judge. Once the Court is satisfied that it has received all requisite submissions, it will issue judgment.
In practice, the Courts in Bahrain are generally only willing to award nominal damages for infringement cases and legal costs are largely not recoverable. It important for intellectual property rights owners to bear this in mind before proceeding with this option.
4. Customs complaints
There is currently no formal recordal system for trade marks with Bahraini Customs. However, Customs officials do occasionally proactively notify a brand owner if they suspect that a shipment of goods may be counterfeit. In such cases, the notification will be sent to the brand owner's trade mark filing agent in Bahrain.
If the suspected goods are confirmed as infringing, the next stage is for the brand owner to commence civil proceedings. Once the proceedings have been filed, Customs will detain the shipment, pending the outcome of the civil action. The goods will then be released or destroyed, depending on the decision of the Court and the order issued.
Where the brand owner is aware of an infringing shipment due in to Bahrain, it can proactively apply for a Court order for the seizure and destruction of the goods.
However, given that successful Customs seizures in Bahrain require the brand owner to incur the costs of bringing civil proceedings, it is rare that brand owners choose this option.