Educational institutions often include geographical locations within their names (normally in the form of “University of X”, “X College” etc). As such, difficulties are frequently experienced by educational institutions when trying to secure trade mark protection for such names as the trade mark laws in many jurisdictions prohibit the registration of geographical locations per se. In practice, this means that it is common for institutions either to be refused protection for such marks (unless they contain other sufficiently distinguishing or distinctive features) or to be asked to disclaim any rights in the portion of the mark which comprises the name of a geographical location.
That said, if an educational institution is able to successfully demonstrate that it has acquired a sufficient degree of fame in its mark, then it may be able to overcome these obstacles and secure the broadest and most robust protection available for its mark. The main issue with this is that the criteria for determining whether a trade mark meets the threshold for being considered well-known is usually highly ambiguous in most countries in the Middle East region. Therefore, it can be very difficult, even for world renowned institutions, to overcome these hurdles.
However, the recent implementation of the GCC Trade Mark Law in Saudi Arabia (in September 2016) could mean that the scope for obtaining protection for such marks in the Kingdom may be about to be significantly increased. This is because the GCC Trade Mark Law goes further than the old Saudi Trade Mark Law (which is silent on this point) by setting out the criteria for determining whether a mark is well-known stating that “the duration and extent of any registrations or use of the mark, the number of countries where it has been registered or recognised as a well-known mark, the value associated with the mark and the extent to which such value helps promote the goods and/or services to which it applies” shall be considered.
his clarity on the requirements for demonstrating that a mark is well-known means that, moving forward, it should become simpler for educational institutions which do meet the threshold to demonstrate this. Accordingly, the chances of securing protection for such marks in Saudi Arabia is also likely to increase significantly.