A trademark typically comes under the purview of intellectual property consisting of a recognizable design, sign, or an expression that identifies a company’s products or services of a particular source from those of others. In general, the sign representing the trademark must comply with several conditions: it must be distinguishable from its competitors. It must not be contrary to morality or disturb public order. The sign of a registered trademark must not imitate another trademark and it must not deceive the consumer. This article shall focus on a general overview regarding trademarks in the U.S.A., UK, and the MENA region.
The US Patent and Trademark Office is the agency responsible for granting patents and registering trademarks in the US.
Requirements necessary for the mark to be eligible for trademark
In order for a mark to be eligible for trademark protection, two requirements must be gathered: the mark must be in use in commerce and it must be distinctive.
This requirement is based on both the U.S. Constitution (Article 1, Section 8, Clause 3 of the U.S. Constitution, also called “Commercial clause”, it gives the U.S. Congress the competence to regulate international and interstate commerce) and the Lahman Act, (enacted by the U.S. Congress in 1946, it establishes a national system of trademark registration and helps the owner to avoid of a federally registered mark against the use of similar marks if such use might result in dilution of another mark or confusion among the consumers).
Under the U.S. Constitution and the Lahman Act, a trademark is a mark used in commerce or registered with a bona fide intention to use it in commerce (15 U.S.C. § 1127). If a mark is not in use in commerce at the moment of the application, registration may still go through if the applicant establishes, in writing, the intention to use the mark in commerce in the future. (15 U.S.C. § 1051). Exclusive rights to a trademark shall be awarded to the first to use it in commerce.
For a trademark to be considered distinctive, it shall have the capacity to be identified and distinguished. Meaning the particular products must be known to be emanating from one particular party and not another one. According to Zatarains, Inc. v. Oak Grove Smokehouse, Inc. – 698 F.2d 786 (5th Cir. 1983), trademarks are usually divided into four categories of distinctiveness: arbitrary, suggestive, descriptive, and generic. An arbitrary or suggestive mark is considered inherently distinctive and exclusive rights to the mark are determined solely by priority of use. A trademark that is considered descriptive can only be protected as a trademark if it has acquired secondary meaning in the consuming public’s mind. Secondary meaning is also needed to establish trademark protection for a personal name or geographic term. However, generic terms are never eligible for trademark protection because they refer to a general class of goods rather than a single source.
1. Procedure for registration of a trademark
To federally register a trademark, one must submit it to the United States Patent and Trademark Office. The application will be assessed by a U.S. government attorney, who will compare the mark to existing marks to make sure there are no conflicts. Once the application is approved, it will be published for a 30-day period during which a third party can file an opposition to the application. If no opposition is received, the trademark application will be cleared for final registration. Usually, the process of registering a federal trademark takes 8 to 10 months.
2. Trademark violation
A trademark violation can be established under the Lahman Act. According to A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000), three elements must be gathered:
The Intellectual Property Office of the United Kingdom (UKIPO) is the operating name of The Patent Office. It is an official judicial body responsible for intellectual property rights in the UK and is the executive agency of the Department for Business, Energy, and Industrial Strategy.
1. Requirements necessary for the mark to be eligible for trademark
Several conditions must be met. First of all, Under the UKIPO, the trademark must be a sign which can be represented graphically. Signs can include words, logos, symbols, colors, sounds, smells and the shape of goods themselves. In practice sound, smell, color, and shape marks are generally more difficult to protect than word or logo marks. Most of the time these trademarks are considered to be one of the key characteristics of something which already exists as opposed to a distinctive sign, and they are also difficult to represent graphically. Another condition is that the trademark must be able to differentiate the goods and services of an individual undertaking from the goods and services of another. Finally, the trademark must also not be likely to create confusion in the minds of consumers with other similar marks. The consumer may face confusion if a trademark is identical to another trademark and is either used in relation to similar goods or services.
2. Procedure for registration of the trademark
The most common procedure to apply for the registration of a trademark in the UK is submitting an application to the United Kingdom Intellectual Property Office (UKIPO). The application consists in filing a form in which the main information is the representation of the trademark being applied for the goods and services for which registration is sought. The UKIPO will conduct examinations to verify that the application complies with formal requirements. The UKIPO will also search for already approved trademarks that conflict with the application, whereby the applicant shall then have an opportunity to argue against. Once the application gets through the examination phase, it will then be published online by the UK Trade “Marks Journal”. Third parties then have 2 months to object to the application. The trademark registration will last for a period of 10 years, after this period it can also be renewed for additional periods of 10 years. However, if a trademark is not used in the first 5 years of its registration or for a continuous period of 5 years during its registration, then a third party may argue to have the registration canceled for non-use.
3. Trademark infringement, Trademark revocation, and remedies
Several circumstances can constitute a trademark infringement in the UK First, it occurs when an unauthorized third party uses a mark that is identical to a registered trademark in relation to identical goods and services. A mark will be considered identical even if only small modifications have been made because such changes would not be noticed by the average consumer. The second situation is when an unauthorized third party uses an identical registered trademark on similar goods and services in order to create confusion concerning the origin of the goods or services, or an association being made between the two trademarks. Finally, an unauthorized third party uses an identical sign as a registered trademark with a certain reputation in the relevant territory, the use of the sign must take unfair advantage or be detrimental to the reputation of the mark.
If a holder of a UK trademark considers that their trademark has been infringed, they should seek prompt legal advice from an attorney knowledgeable in trademark infringement proceedings. The attorney shall write a “Letter Before Action” to the infringing party, noticing them of the trademark registration relied upon, identifying the acts complained of, and insisting that the use of the infringing trademark must be stopped. This letter can be accompanied by a legally binding undertaking, stating that Defendant must not commit any further infringing acts in the future. In addition, the Claimant can request delivery of the infringing goods, details of customers, and the payment of reasonable damages and legal costs. If one is on the other side and is accused of infringement, it has a variety of defenses available. The first possibility is to challenge the validity of the patent by arguing for instance that the trademark is not valid due to a lack of distinctiveness.
A third party may apply for the revocation of a trademark in 4 situations:
In the UAE, according to Federal Law Number 37 of 1992 on Trademarks, a trademark is “any distinguished form of words, names, signatures, letters, figures, graphics, logos, titles, hallmarks, seals, pictures, patterns, announcements, packs or any other type of marks or group of marks, if they were used to be used either to differentiate goods, products or services from whatever sources, or to indicate that specific services, goods or products that belong to the owner of the trademark, due to their provision, manufacturing, selection of trading. The voice accompanying a trademark can be considered a part of it”. In the U.A.E., the Ministry of Economy is the competent authority to register trademarks. In order to register a trademark, customers can submit an online application through the ministry’s website. Necessary documents are the following: Trademark logo, list of goods and services to be protected, a copy of the commercial license, power of Attorney, confirmation of official fee payment, passport copy, and any other attachments the customer considers can be important. Once the trademark is received, it is valid for 10 years subject to renewal after paying a fee. The registration process usually takes 10 to 12 months. According to Federal Law, Number 37 of 1992 on Trademarks, the persons who can register a trademark are the following: UAE citizens, foreigners practicing any commercial, industrial, professional, or service business in any country on basis of reciprocity and any other artificial person. If you are facing any legal compilations or any queries regarding your trademark you always reach out to well-experienced lawyers in UAE.
In Saudi Arabia, trademark ownership is established by registration with the Saudi Trademark Office. The online registration process, from filing to issuance of the registration, can take up to four months. Pursuant to the Gulf Cooperation Council States Trademark Law (the GCCTrademark Law) adopted in Saudi Arabia, the following are the entities that are entitled to register respective trademarks: Any legal person who is a citizen of GCC Countries and is the owner of a factory or product, craftsman or trader, or owner of a private service project; foreigners residing in any of the GCC States and authorized to carry out commercial, industrial, handicraft or service activities; foreigners who are nationals of a country that is a member of an international multilateral treaty to which a GCC state is a party or persons residing in that country; and public bodies. The Saudi Trademark Office requires a certificate of commercial registration from local entities with the trademark application. Proof of use or a statement of intent to use a trademark is not required. The documentation required to file a trademark application is the legalized power of attorney from a Saudi consulate, and notarization in the case of a Saudi entity; a clear image of the trademark, priority document if priority is claimed and a certificate of commercial registration for Saudi applicants in some cases. According to the online procedure, the first step is to download a power of attorney for trademark examination. After accepting a power of attorney, which is usually very quick, a further process for application can be initiated. The official fee for a single trademark search is US$270 per class. The total official cost of filing for registration of a trademark in a class, without opposition, is US$2405. Attorney fees may vary. Registration of the trademark begins on the date of filing.
Qatar’s relevant authority to submit a trademark registration is the Intellectual Property Department, Trademark Office at the Ministry of Economic. The registration process takes up to 12-16 months to be completed. The trademark registration holds a validity of 10 years, renewable after the end of the 10 years. The necessary documents are the following: Power of Attorney of the business owner, a completed trademark search/registration order form, a softcopy of the trademark design, passport copy (for individuals) and Qatari Trade License copy (for businesses). Five steps need to be followed in order to register a trademark in Qatar: 1) Complete the Trademark Search & Registration Order Form 2) Conduct a pre-filing search to ensure that no other companies have registered anything similar 3) File the trademark application form to the Trademarks, Industrial Designs, Geographical Indication, Commercial Registration and Licensing Intellectual Property departments 4) Once the trademark has been accepted for registration, it will be published in the Trademark Journal 5) If there is no objection from a third party, a registration certificate will be issued.
In Bahrain the Trademarks Office is the competent authority to register trademarks under the supervision of the Foreign Trade & Industrial Property Directorate and the ministry of Industry, Commerce and Tourism. In Bahrain there are two regimes of trademark registration: Nationals and residents of the nation can register a trademark by directly submitting a trademark application to the Trademark Office, while foreigners and non-residents can carry forward with the process of a trademark registration by applying through Intellectual Property Agents or authorized law firms assigned by the Industrial Property Directorate. The necessary documents are the following: soft copy of the trademark in the form of a JPEG, a Power of Attorney signed by the applicant of the trademark, a completed trademark search or registration order form along with goods and services listed within the limit of 6 lines, a certified copy of the priority document when it was claimed, a certified copy of the home registration or any foreign registration of the trademark (with the exception of banned or boycotted countries). In the case of unavailability of the registration certificate, one of the following documents can be used: a certificate of incorporation of the applicant’s company, or a certificate issued by the Registrar of Companies, or an extract of the entry of the applicant company in the Commercial Register, or a certificate issued by the Chamber of Commerce.
The term of protection is 10 Years from filing date and renewable for 10 years within 12 months before expiry or 6 months after expiry with surcharge. Bahrain adopts several actions in terms of infringement measures: prevention of importation of infringing goods by Customs, Raid, Injunction, Damages, Fine and Imprisonment.
To successfully register a trademark in Oman, a trademark application must be submitted to the department of Intellectual Property Department at the Ministry of Commerce and Industry. The application shall thoroughly describe the mark and the list of goods and services needed to register the mark. The trademark must be distinct from other trademarks regarding shape, colors and symbols used and the trademark must not be descriptive. The trademark shall also be straight in describing the product. Plus, the trademark shall not conflict with the policies and morals of the country. The trademark application fee is US$ 139. The necessary documents are the following: a power of attorney from the country of origin and notarized by the embassy of Oman, a copy of the certificate of incorporation of the extract of the entry of the applicant in the commercial register, soft copy of the proposed trademark, name and address of the company wishing to register the trademark and a description of goods.
Once the trademark is assessed, a decision is issued by the I.P. Department explaining its objections in writing if they have any. The applicant has then 60 days to reply to the I.P. Department’s decision. Once the objections have been settled and the trademark application is successful, the applicant pays US$ 278 for the publication notice of the trademark application in the official gazette. The trademark will also be published in a local daily magazine. Publication in the official gazette enables any interested party to oppose the registration of the trademark. The opposition period is 60 days from the date of publication. Once 60 days have passed from the date of publication in the official gazette, and once any opposition has been settled the applicant can proceed in registering their trademark by paying a fee of US$ 139.
According to Omani trademark law, the protection granted by the registration of a trademark is for a period of 10 years from the date of filing the registration application. The trademark owner has the right to renew the registration of a registered trademark within six months following the expiration of the registration. If the six-month period has expired and the trademark owner has not requested renewal, the Trademark Office will remove the trademark from the register. However, in practice, the Trademark Office gives applicants more than six months to renew their mark without removing it from the register.
In Kuwait, the Trademark Control Department, under the supervision of the Ministry of Commerce, Office is the competent authority to register trademarks. The necessary documents are the following:
The trademark applications in Kuwait are examined with formal requirements to ensure their compliance with local law. Once the examination is done, a trademark is published in the Official Gazette. Oppositions can be filed in the 60 days following the publication in the Official Gazette. Official fees for grant must be paid up 30 days after the issuance of the Notice of Allowance. The trademarks registered in Kuwait are valid for 10 years from the filing date and can be renewed indefinitely after the term for successive 10-year periods. However, the Application for renewal of a trademark must be completed within the last year of the present 10-year validity period. Late payment is possible within 6 months after the expiration of the validity term, but surcharge applies. It is pivotal to know that the trademark registration in Kuwait may be subjected to cancellation if the trademark is not used for 5 years from the filing date. The registration process takes up to 10-12 months. It is necessary for foreign applicants to submit trademark registration in Kuwait through a registered Kuwaiti trademark attorney.