Over the last century, the Middle East has seen much change – largely resulting from the discovery of oil, which in turn fuelled the rapid development of property-based economies. The Arabian Gulf region, in particular, has experienced an unprecedented economic boom which has seen a large number of investment opportunities materialise and exploited with great success. As the initial focus of the developing economies was on the in-licensing of foreign brands, those brand owners have sought to protect their intellectual property rights within those markets. It is a well-known fact that the costs of securing trade mark registration across the Middle East are amongst the highest in the world. In assessing where best to focus their resources, brand owners need to 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, Arabic is the first language across the region and foreign brand owners should consider the importance of registering Arabic versions of their trade marks through translating or transliterating the original marks to achieve sufficient local language protection.
Selection and Protection of Arabic Marks
Largely, international brand owners tend to register their original trade marks within the country where they intend to establish their business and subsequently start extending this protection to other territories into which their business expands – which, in some regions, raises the question of whether foreign language equivalents should be registered. Historically, however, many have been slow, or chosen not to register the Arabic language equivalent. Whether this has been as a result of the high costs of registering trade marks 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 trade mark to be registered in Arabic only – it is possible for trade marks to be registered in Latin script 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 alone or alongside the Arabic translation or transliteration of the mark, - although these are not always registered. It is less common , however, for international brands to feature the Arabic version alone in the marketplace, except in countries such as Saudi Arabia.
Perhaps it is for these reasons that some international brand owners choose to rely on their protection for the English language (or Latin script) version of their trade marks only. However, problems can arise when it comes to asserting and enforcing these rights (e.g. in trade mark infringement actions or opposition proceedings) against third parties using or attempting to register conflicting Arabic translation or transliteration marks. Whilst in most Middle Eastern jurisdictions, the English language (or Latin script) trade mark provides some degree of protection for the Arabic equivalent (translation or transliteration) – it is always easier to rely on and enforce "like for like" language marks. Relying on the English (or Latin script) mark alone can therefore be an expensive and incomplete brand protection strategy.
There is some degree of protection afforded to well-known trade marks under Article 6bis of the Paris Convention, which some Middle Eastern countries (such as Saudi Arabia, Iraq and the United Arab Emirates) have tried to incorporate into their trade mark 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 only applies to well known trade marks and there is no definition within the Paris 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 Trade Marks 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". 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 trade mark is whether to select the literal translation of the original English language mark (assuming it is a mark with a dictionary meaning, and not an invented word itself) or the transliteration of the original English language/Latin script mark into Arabic characters.
Translation vs. Transliteration
The literal translation of an English language trade mark 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.
Another problem with relying solely on trade mark registrations for English language marks to provide protection for the Arabic translations is that, 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 other option is to protect the phonetic transliteration into Arabic characters of the original English language/Latin script mark. The biggest problem that can be faced when producing a suitable Arabic transliteration mark is that the Arabic and Latin alphabets are quite different – 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, it is normally necessary to substitute the unavailable letter 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" – so the transliterated word would effectively read "BRINCESS".
The other major issue is that 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 and it is important from the outset to ensure that care is taken to select the most accurate and appropriate transliteration and that this version is consistently used. If, for example, a brand owner registers one version of an Arabic transliteration yet ends up using another in the marketplace, this could call into question whether the trade mark registration could become vulnerable to non-use cancellation. Furthermore, the use of more than one transliteration could produce 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 wants to be known, consumers will either not develop any real recognition for the brand or will 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 to then seek to control the development of brand identity within the market. By registering the correct Arabic version of its mark, the brand owner will ensure that consumers will have certainty as to the origin of the goods or services and build valuable brand equity.
Key Issues
Brand owners with an established or intended presence in the Middle East should review their trade mark 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 should be able to enforce their rights against third parties more easily.
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. Therefore careful thought and consideration should be given to selecting the most appropriate variant for adoption and protection in local markets.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
