An overview of legislative procedures in the GCC
As the World Cup approaches, local and international brand owners are preparing to capitalise on the unrivalled exposure a global sporting event can bring. However, there are many considerations for businesses before embarking on a promotion campaign or ramping up activity in Qatar. In the first of a series of articles on IP rights leading into the World Cup, we set out what brand owners need to know about using and registering their trade marks in Qatar.
It is expected that over 1.7 million visitors will visit Qatar during the tournament, and it is therefore no surprise that local and international sports, hospitality, clothing and F&B brands (amongst others) will use this opportunity to showcase their brands to spectators around the world.
One of the most common mistakes brand owners make is not doing the right due diligence ahead of new marketing activity. With increased exposure naturally comes an increased risk of infringement, particularly if Qatar is a new market for your brand. It is therefore important to clear your brand for use.
Trade mark searches should be carried out prior to use or promotion in Qatar to ensure that there are no infringement risks or obstacles to securing your own trade mark protection. The Qatar Trade Mark Office does not operate a publicly accessible trade mark register and so searches can only be conducted by way of paying an official fee of USD 275 per trade mark / class of interest. Internet searches are also important but alone they are unlikely to give an accurate indication of any risks, and with the penalties for infringement including imprisonment of up to two years and fines of QAR 20,000 / USD 5,500, clearance searching is vital. Early identification of a potential obstacle will enable a business to be nimble in its approach and to decide how best to proceed.
The Qatar Trade Mark Law does not formally recognise unregistered trade marks, and while a very well-known trade mark may be afforded some protection, exclusive rights to use and enforce a brand can only be obtained by way of trade mark registration. If your intention is only to use your brand during the World Cup, then you may consider that the due diligence and clearance searching is enough to ensure that you are not infringing any third party rights. However, longer term market entrants who wish to secure enforceable rights of their own will need to register their brand by applying for trade mark protection.
Some key considerations for trade mark registration in Qatar are outlined below:
The Qatar Trade Mark Office operates a single class filing system, meaning that each class of goods or services must be filed as a separate application.
This means an increase in official fees as compared to some other jurisdictions, and if your business covers several categories, you may need to consider a filing strategy that balances budget with need.
The Trade Mark Offices throughout the GCC require international brand owners to provide a notarised and legalised Power of Attorney enabling their chosen trade mark attorney or legal advisor to represent them before the Trade Mark Office. If you want to register your trade mark then this formality is a must as there is no scope for late submission.
The length of time it takes to complete the legalisation process can vary from jurisdiction to jurisdiction. Brand owners should therefore plan ahead, and ideally, grant their local trade mark attorneys a general, broad Power of Attorney which can be used for any future applications or enforcement actions.
Arabic is the official language in Qatar and although English is readily spoken by locals and expatriates, securing protection for Arabic versions of your mark is desirable and in some circumstances may be required.
International brand owners should consider whether to use a translation (an Arabic word with the same meaning) or a transliteration (an Arabic word with the same sound) to represent their brand in Arabic. For brands with no direct translation into Arabic, a transliteration is usually used, but care should be taken to ensure that the Arabic words do not have an unsavoury or irrelevant meaning.
It is also important to keep in mind that the Arabic language has a wide range of dialects, and the Arabic which may be appropriate for use in one Arabic speaking country, may not necessarily be suitable for Qatar.
Qatar’s cultural norms are guided by Islamic Shariah principles. While Qatar is welcoming of other cultures and religions, international brand owners should take care not to use or apply to register trade marks which may be considered culturally offensive, or which might be considered contrary to public policy.
Care should be taken when putting together marketing campaigns and using imagery which may promote such things as relationships outside of marriage or gambling. Any trade marks which are filed which include such material are likely to be refused.
Whilst alcohol is available for consumption in licensed bars, restaurants and hotels, trade mark registration is currently not possible for these products, meaning that class 33 is completely unavailable. Beers should also be removed from Class 32 and when drafting Class 43 services, brand owners should take care to avoid terms which are clearly directed towards the consumption of alcohol e.g. “cocktail bar services” and “nightclub services”. Alternative terms such as “lounges for provision of food and beverages” and “entertainment clubs” are preferred. Similarly, although pork is available in licensed restaurants and shops in Qatar, pork and pork products should not be included in Class 29.
Even with a notarised and legalised Power of Attorney in hand, the timeframe from filing through to registration in Qatar is usually around 6-9 months. This may drive decision making as to whether trade mark protection is worthwhile, but trade mark rights once obtained will be effective from the date of filing. You may not be planning to continue trading after the show has left town, but infringers might and so your rights once registered could be extremely valuable in ensuring that third parties do not attempt to benefit from the investment you made in Qatar. Whilst a pending trade mark application can form the basis of an opposition against a third-party application, the same cannot be said for infringement or other enforcement proceedings. The courts and enforcement authorities will not generally act unless the brand owner can present a registration certificate.
Clyde & Co’s full-service IP team can support local and international brand owners with the protection, enforcement and commercialisation of their brands and other intellectual property rights across the GCC. We have significant experience in Qatar and the wider region and have a team of IP attorneys, paralegals and Arabic speaking administrators ready to support you in implementing a robust brand protection strategy vital to the success of your business.