Bahrain: Amendment of Copyright Law

Thursday, 27 March 2014

The Bahraini authorities have issued Law no. 5 of 2014 amending some provisions of existing Copyrights Law no. 22 of 2006. The main features of the amended Law include the prohibition of all activities related to manufacturing, importing, exporting, buying, selling or distributing copyrighted items without the prior consent of the owners. According to the Law, non-commercial establishments, such as educational institutes, libraries and public media shall not be held responsible for breaching the provisions of this Law provided that the violation was proved to have been committed unintentionally. Also, deciphering satellite and radio signals shall only be allowed through written documentation from the copyright holder or their representatives.

This Law completes Law no. 22 of 2006 providing thus protection for copyrights including books, pamphlets and other writings, lectures, sermons, theatrical works, musical works, musical compositions, cinematographic works, works of drawing, painting, architecture, sculpture, engraving, photographic works, works of applied art, illustrations, maps, plans, sketches and three-dimensional works as well as computer programs. The Law also provides protection for neighboring rights including works of performers, producers of sound recordings and broadcasting organizations.

Based on the provisions of this Law, authors, performers, and producers of phonograms have the right to authorize or prohibit all reproductions of their works, performances, and phonograms, in any manner or form, permanent or temporary.

Violators of the present Law shall be subject to a fine of up to BD 2,000 (approximately USD 5300) or to imprisonment of six months, or both. Below is a summary on the copyrights protection framework in the country.

Copyright Protection Framework in Bahrain

Member of Berne Convention:

Yes

Registration:

Possible for nationals as well as foreigners.

Filing Requirements:

    1. Power of Attorney, legalized

    2. 1 copy of the work of art.

Registration Time Frame:

The approximate time frame for completing the registration process is 4 to 6 weeks.

Duration:

Duration in general is the author's life plus 70 years following the author's date of death.

Kuwait: Trademark and Patent Office - New Premises

Thursday, 27 March 2014

The Kuwaiti Trademark and Patent Office is currently moving to new premises. Consequently, the flow of work is expected to be interrupted. However, there is a clear affirmation from the relevant authorities that deadlines falling within this period will not be missed. Meanwhile, we will be handling all the instructions we receive from you with utmost care in order to ensure proper follow up and organization.

Saudi Arabia: New Deadline for Submitting Priority Documents and POAs

Tuesday, 18 March 2014

The Saudi Trademark Office (TMO) has recently announced that the new deadline for submitting priority documents and powers of attorney will be 90 days from notification date received from the TMO. Previously, the power of attorney and priority document had to be submitted within 30 days from filing date. This comes as a result of the introduction of the electronic system of filings which allows applicants to fill-out an on-line application form, check and review it for accuracy and precision, and then submit it directly over the Internet.

For further information, we list below the statutory requirements of a trademark application (be it a registration, renewal, recordal of assignment or a recordal of change of name/address) at the Saudi Trademark Office.

Filing Requirements:

    1. Power of attorney, legalized. A general power may be used for subsequent filings.

    2. Copy of priority document, if priority is claimed, certified.

    3. Electronic print of the mark for each application.

Document 3 must be submitted at the time of filing.
Scanned colored copy of Documents 1 and 2 must be submitted at the time of filing.
The original copies may be submitted within 90 days from notification date.

Opposition:

Trademark applications accepted by the Registrar are published in the Official Gazette. Oppositions must be filed before the Board of Grievances (First Instance Court) within 90 days from publication date.

Extension of Time:

Extension of time for oppositions/counter oppositions or for responding to office actions is not possible.

Protection Term:

Trademark registrations are valid for 10 Hijri years (approximately 9 years and 8 months) from filing date and are renewable for like periods. There is a grace period of 6 lunar months for late renewals with payment of a surcharge.

Documents required for renewal:

1. Power of attorney, legalized.
2. Original Saudi registration certificate of the mark for endorsement.

Use Requirements:

Use of a trademark is not required for registration or renewal of a mark. However, a trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 consecutive years preceding the date of filing for cancellation.

Search:

An official search may be conducted for word marks and devices. It takes approximately 3-7 working days for the results to be available. A separate application is required for search in each class. The search report discloses similar and identical trademarks.

Cancellation:

A trademark may be subject to cancellation by any interested party before the Board of Grievances if it can be established that the mark was not rightfully registered.

Bahrain: GCC Trademark Law Approved

Friday, 14 March 2014

The Bahraini government's decision approving the unified GCC Trademark Law has been published in the country's Official Gazette on February 27, 2014. The Law is expected to enter into force in the country six months after its implementing regulations are issued by the GCC Trade Cooperation Committee (made up of the Trade Ministers of the GCC member states). The GCC countries that have so far announced their approval of the unified GCC Trademark Law are Saudi Arabia, Qatar and the United Arab Emirates.

The purpose of the GCC Trademark Law is to replace the local trademarks laws of each of the GCC member states and, thereby, creating unified implementing regulations for trademark protection in all states. However, the GCC Trademark Law is not expected to offer for a unified filing system as the case is with the GCC Patent Law. Trademark applications will continue to be filed separately in each GCC member state for protection.

The 50-article Law outlines the general directives and rulings governing trademark registration, renewal, assignment, and cancellation procedures in the GCC countries.

The main features of the Trademark Law as approved by the GCC Supreme Council are as follows:

1. The definition of a trademark has been broadened to include sound and smell marks.
2. A trademark may be individual or collective.
3. A separate application is required for each class.
4. Claim of priority, based on an earlier-filed foreign application, is possible.
5. Trademark applications accepted by the Registrar will be published for opposition purposes. Oppositions must be filed within 60 days from publication date.
6. Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of six months for late renewals.
7. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of five consecutive years after registration.
8. The Law shall recognize famous trademarks that are well-known in the GCC member states and shall ensure protection thereof even if the marks are not registered.
9. The Law gives the right to trademark owners to initiate civil and criminal actions against any infringing party. Penalties include a maximum of five year imprisonment and payment of fines of up to USD 270,000.

Jordan: Border Protection Remains a Must !

Friday, 14 March 2014

The Jordanian Authorities ratified a draft law on Border Measures amending the Jordanian Customs Law. The draft law was forwarded to the competent authorities for further review and approval. In general, the draft law is expected to contain provisions on customs activities related to the protection of intellectual property in the field of import and export of goods. The draft law aims at strengthening border control measures in order to deal with piracy and counterfeiting and is expected to be consistent with the special provisions of border measures of the Agreement on Trade Related Aspects of Intellectual Property Rights concluded within the framework of the World Trade Organization (WTO).

By way of background, the Jordanian Customs maintain a system within which all trademarks registered at the Trademark Office will be automatically placed on watch at the Customs. This will help the Customs officials target, intercept, and confiscate shipments of goods bearing infringing marks.

According to this draft, it is expected that the customs officials adopt an ex-officio border system. As a result, the Customs authorities are entitled to suspend ex-officio products which are suspected of being counterfeit and to inform immediately the rights holder as well as the importer. More specifically, according to Article no. 41 of the Customs Law, foreign goods which do not conform to the requirements of the laws and the regulations for the protection of intellectual property shall be denied entry into the country, unless otherwise approved by the competent authorities. It is not clear how the customs will apply this and whether customs recordation will be obligatory in order to receive this service.

The main border measures provided by Article no. 41 as per current law are summarized below:

• The Customs authorities can suspend entry into Jordan of alleged counterfeit products bearing identical or similar trademarks.
• Legal proceedings should be initiated by the trademark owner within an eight-day period; otherwise, the goods will be released.
• The trademark owner shall be allowed to inspect the confiscated goods under the supervision of the Customs.
• Small quantities of goods of non-commercial nature and personal items and gifts contained in travelers personal luggage or sent in small consignments, as well as goods in transit and goods which are placed in the markets of the exporting country by the rights holder or upon permission thereof, shall be excluded from the provisions of Article 41.

UAE: Amending Trademark Applications

Thursday, 27 February 2014

With immediate effect, starting February 2014, the Trademark Office in the UAE will no longer accept requests to amend a pending application unless the changes are minor. In this case, the TMO will review the proposed amendments but there are no clear guidelines or actual directives on how these requests will be treated.

Saudi Arabia: New Scale for Filing and Registration Numbers

Thursday, 27 February 2014

With immediate effect, the Saudi Trademark Office has introduced a new numbering method for trademark applications. Following the e-filing system which was introduced only a few months ago, applications are now allotted an e-number which will be taken as the filing number and will remain the same at the time of registration (i.e. registration number). The e-number basically begins with the Lunar year during which the application was filed. Previously, an application was allotted a different number at the time of registration.

Jordan: Amendments to the Patent Law

Thursday, 27 February 2014

With immediate effect, the Jordanian Ministry of Industry and Trade (MIT) has published on its website draft amendments to the Jordanian Patent Law No. 32 of 1999. These amendments aim to position the patent law in accordance with international patent-related treaties and agreements that Jordan plans to adhere or accede to. These will still have to be approved by Parliament before they are published in the Official Gazette and subsequently implemented and enforced.

The goal of these amendments is two-fold. On the one hand, they provide more access to the public in general and to the patent landscape in Jordan. According to the amended law, it will be possible to search and view all published inventions, including pending patent applications as well as granted or rejected patents. It will also be possible to verify the status; and this capability will enable local industries to obtain access to the latest technologies and in cases where there are rejections, to pursue developments without concerns of potential infringement.

On the other hand, the amendments provide more options for the patent owners in taking action such as withdrawing a pending patent application or even a granted application. They also empower the patent owner to assign, license or perform record changes for a pending application. More importantly, these amendments will provide for an improved IP protection environment, as they should prevent parallel development and potential infringement resulting from the lack of knowledge of the existence of a patent application for a particular novel product or process.

Given that Jordan has not deposited its instruments of accession to the Patent Cooperation Treaty (PCT), these amendments could be an indicator of things to come. Jordan is no stranger to the WIPO and the various treaties it manages for marks and copyrights and its laws are consistent with the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

IP Highlights: Nice Classification

Thursday, 27 February 2014

With immediate effect, businesses are going to surprisingly great lengths in order to protect their marks in the increasingly competitive Arab market. Certainly, brands owners should now be fully aware of all trademark issues specific to the Arab region. Heading this list would be the classification system in each country and the extent to which this classification is in line with the international standards defined by the Nice agreement. Owners should also be informed of the explicit requirements that are a characteristic of the relatively conservative countries, such as the GCC countries, seeing that the local laws are mostly governed by the doctrines of the Shari’a law (the body of Islamic religious law).

Nice Edition and Membership

The TMO of most Arab countries follow the Nice classification, even if the country is not a member of the Nice Agreement. The 10th edition is adopted across the board except for Djibouti (8th), Gaza (8th), Iraq (7th), Kuwait (8th), Libya (8th), Qatar (7th), Sudan (8th), West Bank (8th) and Yemen (8th). In Iraq, a further local sub-classification is put into place. The class-headings are simply sub-classified in an alphabetical order. The headings in class 30 for example are designated the letters “a” to “t”.

Class Headings Claim

In Egypt, Kuwait, Morocco and UAE, an applicant can claim the whole class without specifying the particular goods/services. The TMO will in principle not object to the use of any of the class headings as being indefinite. There are some few notable exceptions to the class headings definition. Specifically, in Qatar, headings are admissible except for classes 1, 4 to 7, 10 to 14, 16 to 22, 29, and 31. Saudi Arabia and Libya have another limitation. Applicants can claim headings, provided that the headings are specified. An application with the specification "all goods/services in the class" will be rejected on formal grounds. Countries that do not admit class headings are Jordan, Oman and Sudan. The actual language of the goods or services specified in the registration will define the parameters of the scope of protection of a registration.

Specific Restrictions / Procedures

Some TMOs impose a set of restrictions that are in compliance with the local laws. In Gaza, Kuwait, Libya, Qatar, Saudi Arabia, Sudan, UAE and Yemen, class 33 and alcoholic goods in class 32 cannot be registered. Further restrictions are imposed in class 29 in Kuwait and Saudi Arabia when it comes to the registration of marks claiming “pork meat”. Even more, applications specifying “Christmas related products” are inadmissible in Saudi Arabia and Libya.

KSA: Substantial Increase in Official Publication Fees

Tuesday, 11 February 2014

With immediate effect, the Saudi government has significantly increased the official publication fees, while all other fees remain the same. The new rates will be applicable on all applications filed on or after January 14, 2014. This step comes after the recent introduction of an electronic Official Gazette. The electronic version contains the particulars of each accepted trademark application and a representative drawing, but does not include Notices of Office Actions. On the publication date or shortly thereafter, the applicant should carefully review the information that appears in the electronic Official Gazette for accuracy. Any interested party may file an opposition against a published trademark within 90 days from publication date. Oppositions can only be filed before the Board of Grievances (First Instance Court).

Ethiopia: It’s Time to Audit your Portfolio

Wednesday, 5 February 2014

With immediate effect, following the new regulations implementing the Ethiopian Trademark Law of 2006, published on December 24, 2012, trademark owners are now expected to take specific measures when it comes to the particulars of their portfolio in order to ensure that everything is in order.

1. New trademark applications must be submitted by no later than June 22, 2014 for all marks filed in the country before July 7, 2006. These new applications will not be registered automatically but will be subject to examination on absolute and relative grounds.
2. Re-registration will not be required for the batch of trademarks filed between July 07, 2006 and June 22, 2007 (inclusive). These marks are now considered due for renewal seeing that the protection period is now 7 years instead of 6 from filing date. Application for renewal must be filed before June 22, 2014.
3. Trademark applications filed after June 22, 2007 which have already matured into registration will be receiving new registration certificates. Requests should be submitted at the Trademark Office for this purpose well before the renewal due date of each mark.

In the table below, we summarize the important deadlines that owners should be aware of:

Trademarks	Trademarks Filed Before July 07, 2006	Trademarks Filed Between July 07, 2006 & June 22, 2007 (Inclusive)	Trademarks Filed After June 22, 2007
Action Required	Re-Registration of Trademarks	Renewal of Trademarks	Re-issuance of Certificate
Deadline	June 22, 2014	June 22, 2014	Renewal Due Date
Requirements	POA legalized (A General POA may be acceptable) Certified copy of a Home or Foreign Registration Certificate (in English or simply translated into English)	POA legalized (A General POA may be acceptable)	POA legalized (A General POA may be acceptable)

Bahrain: Accession to the Apostille Convention

Wednesday, 5 February 2014

With immediate effect, the Bahraini Authorities have recently announced the accession of Bahrain to the Apostille Convention (Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents). The Convention entered into force in the country on December 31, 2013.

Accordingly, Bahrain will start accepting Apostille legalization of documents related to trademarks, patents, industrial designs and all other IP related matters. There will be no need for further legalization up to the Bahraini Consulate as long as the applicant’s home country is a member of the Apostille Convention.

It is worth noting here that Bahrain and Oman are the only two Arab countries that are currently members of the Apostille Convention.

Iran: Amendment to IP Executive By-laws Addressing Examination of Patent Applications

Wednesday, 29 January 2014

With immediate effect, on November 6, 2013 the Iranian Intellectual Property Office (IIPO) published an amendment to the article relating to patent examination of its Executive by-laws of the Law of Patents, Industrial Designs and Trademark Registration. In a recent article, we discussed certain changes at both the Algerian Patent Office and the IIPO (http://www.mbo-law.com/NewsArtDetails.aspx?ID=1128). Both offices have started requesting further documents in preparation or in support of performing substantive examination.

According to amendment no. 100/43368/9000 dated November 3, 2013, Article 28 of the Executive by-laws has been amended to describe the new process for the examination of patent applications. In brief, the IIPO will first perform examination on formal grounds. Upon satisfaction, the IIPO will forward the matter on to the competent authority for substantive examination. It is worth noting here that the said competent authority refers to technical institutions across Iran, and most importantly, the amendment specifies that the said authority will ensure the confidentiality of the documents it receives. The said authority then will examine the application and provide its opinion based on which the IIPO will issue its decision.

Qatar: Accession to the Budapest Treaty

Wednesday, 29 January 2014

With immediate effect, on December 6, 2013, Qatar deposited its instrument of accession to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. The Treaty will enter into force on March 6, 2014.

This step is a further attestation of Qatar’s dedication to IP protection as well as its commitment to becoming a regional and possibly a global leader in research and technology.

Advances in stem cell research and the development of genetically unique microorganisms, has led many companies from various industries, including pharmaceuticals, agriculture and others, to seek protection for these where a simple description is not enough. With this move, Qatar, a rapidly growing economy in the Near East, joins Bahrain, Morocco, Oman, Jordan and Tunisia from our region and becomes the 79th State party to the Treaty.

IP HIGHLIGHT: What Confectioners Need to Know about Trademark Protection in the MENA Region ?

Monday, 27 January 2014

With immediate effect, confectionery businesses are now going to surprisingly great lengths in order to protect themselves in an increasingly competitive market, where the stakes have never been higher. Owners of global bands are keen to ensure no one has any form of advantage for fear of losing precious market share. Certainly, rights holders will continue to extend and expand the scope of protection and fight to protect even the smallest elements of their brands. So what trademark issues specific to the MENA region should confectioners be aware of when it comes to the protection of their trademarks?

Packaging and Three-Dimensional Trademarks

It may be possible to register aspects of the shape of the product or its packaging as 3D trademarks. A 3D mark can receive similar protection under the laws of our region as any other trademark, and a simple trademark application can be filed for this purpose.

The difficulty would basically arise at the time of substantive examination, where practice differs considerably between the countries. In some countries, the application for a product shape as a trademark will be accepted without any objection as long as the product appearance has the requisite distinctive character for registration. This means that the more closely the mark resembles the shape most likely to be taken by the product in question, the greater the likelihood of the mark being devoid of any distinctive character. The TMOs of Saudi Arabia and Kuwait often issue office actions of this type. In few other countries, a product shape will not be accepted as a trademark if the print includes no core word marks. Also, if the appearance of the product is functional, protection may be barred completely. The most probable reason is to maintain a balance between trademark laws and design laws, the latter being used to protect products having some patentable function.

Color Marks

Most laws of our region do not provide specifically for the registration of non-traditional trademarks, such as color marks. Libya is among the very few countries that has introduced clear provisions in its applicable law whereby the definition of a trademark has been broadened to include trade names, sound marks, and color marks. However, many issues relating to the definition, scope and enforceability of non-conventional marks remain unclear. Even if we can say that color marks are admissible in one country, there is a chance that the examiner at the Trademark Office will reject this type of application because of the fact that there are few or even no precedents in the matter. The TMO will only accept the color application if it is associated with a conventional trademark (word mark, device, or combination of both).

Slogans

Unlike the situation in common-law countries, brand owners in the MENA region do not usually face significant difficulties registering slogans. As European and US authorities often refuse requests on the grounds that a slogan is purely descriptive of the products or services it promotes, or lacks distinctiveness, this type of trademark applications can easily pass examination on absolute grounds in most of the TMOs of our region (with some few exceptions including that of Iran), as long as the mark in question is not explicitly descriptive of the products involved. In fact, brand owners are often not required to prove that the slogan they wish to protect has acquired a “secondary meaning” on its own.

Classification

There are no specific requirements when it comes to the registration of marks in classes 29 and 30. When it comes to the specification of goods, the applicant, in some TMO’s, can file an application claiming the whole class without specifying the particular goods. The TMOs will not object to the use of any of the class headings as being too indefinite and not specific. Consequently, the use of class headings of a particular class constitutes a claim to all of the goods falling within this particular class and implicitly covers any goods directly related to the class headings (that is, covers more than the literal meaning of the class headings).

In Qatar, however, there is an exception to this rule. Applicants must also specify the goods in both classes 29 and 30, or else, the application will be rejected on absolute grounds. Further restrictions are also introduced by other countries such as Jordan and Sudan. The applicant must specify the goods in the class or else the application will not be accepted.

Search & Examination

Searches between related classes, such as 29 and 30 are not performed on an ex-officio basis. As for examination, a mark is not usually rejected on relative grounds based on the existence of a prior mark in a related class, unless the mark is considered to be well-known in the country. Unlike the United States, countries of the MENA region have no express anti-dilution provisions in their trademark laws. Nevertheless, many countries have introduced provisions into their trademark laws on the “likelihood of confusion” between conflicting marks as part of their implementation of the TRIPS Agreement. In principle, the reference to certain provisions of the laws on the “likelihood of confusion” should provide a basis for actions in cases of dilution. However, are these sections on “likelihood of confusion” enough? Some courts reiterated that when dilution is accompanied by confusion as to the source, it will affect the goodwill, reputation and trade name established by the plaintiff, especially when the goods involved are closely related, and would be sold in the same channels of trade to the same consumers.

Famous Marks

Most countries of our region, with the exception of Lebanon and Iran, have clearly applicable statutory provisions in the national laws to protect famous marks. Also, membership in the Paris Convention (all countries are members of the Paris Convention except for Kuwait) has helped significantly on the litigation front, as evidenced in a number of ground-breaking Court decisions which were reached during the past several years signaling a positive change for trademark holders.

Furthermore, all countries are either members or observers of the WTO (except for Syria), which, of course, extends to the TRIPS agreement. TRIPS, Part II addresses each intellectual property right in succession. Article 16(3) of TRIPS states that in relation to registered marks, Article 6bis should apply to non-similar goods or services, provided that use of the later mark indicates a connection to the owner of the well-known mark and that the interests of the owner of the well-known mark are likely to be damaged. However, there are no clear regulations or case laws that comment specifically on the prerequisites for claiming protection under Article 6bis.

Although it is impossible to precisely define a famous mark, examples of famous marks in our region include LAY’S, OREO, TANG, KIT KAT and NESCAFE. The extent to which a trademark is considered famous is usually determined according to the international standards for the protection of well-known trademarks (Article 6bis of the Paris Convention) as well as the local standards for well-known trademark protection. Any probative evidence will be accepted, and a determination will be based on the totality of the evidence, including such factors as:

1. The duration and geographic extent of sales
2. Sales figures
3. Advertising figures and samples of advertising
4. Awards, reviews and press reports
5. The reputation of the mark within the relevant trade and consumer groups in the country
6. Expert testimony and surveys designed to assess the recognition of brand names

Trademarks in Arabic

When a trademark is used in foreign markets, it is necessary to take into account considerations of language and culture. Although it is not necessary to display the Arabic transliteration of the Latin trademark on the products sold, the process of transliteration of a trademark into its local character or language is important for trademark owners seeking to promote or sell their products in that market because many consumers will identify goods by their local-character trademark, depending upon the degree of local recognition and knowledge of foreign languages.

When it comes to registration, a trademark in Latin should, in general, provide protection against the registration of another mark with a prominently featured or at least confusingly similar Arabic transliteration liable to create public confusion. In fact, most of the Arab countries are signatories to international agreements that address the protection of trademarks across different languages and different character scripts as part of the wider concept of protection against unfair competition, including the Paris Convention, TRIPS and the Madrid Agreement and Protocol for the international registration of marks. The systems provide for the protection of rights across different languages and different character scripts as part of the wider concept of protection against unfair competition. However, there are certain instances where the confusion across different languages is not so evident and so registration of the Arabic rendition will be recommended.

Use

Since most countries of our region are civil law countries (meaning that the code typically exhaustively covers the complete system of the law), the “first-to-file” concept is given considerable weight. Some countries may offer a limited amount of common law rights but this of course is a matter solely determined by the practitioner handling the case. This being said, registration of marks is highly recommended and the mere registration can be a basis to sue an infringer, although the risks of a non-use cancellation action must be factored-in in any filing strategy. However, unlike the United States where a non-use cancellation action is similar to an opposition action in applicable law, the situation is not the same in the MENA region. In most countries, non-use cancellation actions must be brought before the local Courts, which can greatly increase the time, costs and even predictability of such proceedings.

Enforcement

To some confectioners, the packaging is all what matters and so protection of the key traits and features is not an issue that can be disregarded. Needless to say, rights holders must be ready and willing to adopt a trademark protection model that incorporates both the legal and regulatory approaches in order to arrive at a well-established trademark protection strategy.

Infringement Claim: Regarding an infringement claim, owners must establish that there is valid mark entitled to protection; and that perpetrators are using their marks in connection with the sale or advertising of goods without consent, and that this use is likely to cause confusion. Even in the presence of valid trademark registrations of the shape of the product or its packaging, establishing “Likelihood of Confusion" is always the central focus, which may in some instances be difficult to prove. According to the practice some countries, and in particular, Saudi Arabia, UAE and Kuwait, the Courts do not look beyond the word marks at issue. Infringement is usually found if the word marks are sufficiently similar that consumer confusion can be expected. Factors such as the degree of similarity between the marks involved, the degree of distinctiveness of the mark, and its recognisability are directly implicated. The Courts may, but not necessarily, give weight to expert testimony and surveys designed to prove actual consumer confusion (in cases where the rights holder is able to collect evidence of this nature).

Unfair Competition Claim: As for the possibility of bringing an unfair competition claim, most countries of the region are civil law countries and do have unfair competition statutes. The focus of unfair competition claims is generally on consumer deception or threat to business interests. Although such claims may overlap with trademark infringement, the burden of proof in an unfair competition claim will generally be higher than when rights holders seek to prove infringement of their registered marks.

Commercial Anti-Fraud Department: The official anti-fraud and regulatory bodies, available in some countries including Saudi Arabia, UAE and Oman, have jurisdiction for administrative action to enforce trademark rights in their own countries. These bodies usually consider complaints against counterfeits or look-alikes only, and raids are typically carried out if the findings are conclusive. In Saudi Arabia, for example, the latest semi-annual report of the Saudi Commercial Anti-Fraud Department reported that more than 1966 complaints were filed at the Ministry of Trade and Industry in the second half of the year 2013 against local companies in Saudi Arabia for alleged distribution of counterfeit products including confectionery and other items. The report also gives credit to the joint efforts of the Commercial Anti-Fraud Department and the Customs Authorities which have led to the suspension of a considerable amount of counterfeit products imported into the country. Perpetrators were subject to sanctions (as defined by the country's Trademark Law and Commercial Anti-Fraud Law) including monetary fines of up to one million Riyals (around $ 260,000) as well as legal prosecution resulting in a maximum of three years imprisonment. On a side note, most countries of the MENA region have anti-commercial fraud laws designed to enact legal measures and policies against commercial fraud. The latest anti commercial-fraud law was endorsed in the UAE in 2013. Although there is no pan-Arab anti commercial-fraud law, a unified law for the GCC is expected to be endorsed once approved by all member states.

Customs Recordal: Customs recordal procedures are available in a number of countries, including Algeria, Morocco, Sudan, Tunisia and the UAE (only three emirates out of seven). Recordal is also expected to be adopted in Qatar and Abu Dhabi (a UAE emirate), but the timing involved for implementation is unknown. One fundamental premise of the recordation system (other than providing a central registry containing information for recorded trademarks) is that it allows customs officials to implement an ex officio border protection system. An ex officio system is different from the standard border protection system in which a judicial authority orders customs to detain the infringing shipment after identifying the infringing goods. The key advantage of the ex officio system is that it allows for prompt and proactive action by customs officials, thus avoiding the delays inherently involved in seeking judicial action. Customs officials are always on the lookout for infringing goods and thus are able to act quickly to confiscate counterfeit and pirated merchandise.