TRADEMARK REGISTRATION GUIDE

IN BAHRAIN

Presented By

Mohamed EzzTrademark Attorney

GENERAL INFORMATION

A former British protector on the Arabian Gulf, Bahrain is an Arab Kingdom Consisting of the island of Bahrain and several smaller islands, a member of the Gulf Cooperation Council (GCC).

Known for pearl fishing, it is now being developed for oil, found in the central plateau of Bahrain island. For the most part, the oil industry was cultivated by American Corporations. The population is chiefly Moslem)

GENERAL INFORMATION

Full name: Kingdom of Bahrain Population: 766,000 (UN, 2008) Capital: Manama Area: 717 sq km (277 sq miles) Major language: Arabic Major religion: Islam Life expectancy: 74 years (men), 77 years (women) (UN)

GENERAL INFORMATION

Monetary unit: 1 Bahraini dinar = 1,000 fils

Main exports: Petroleum and petroleum products, aluminum

GNI per capita: US $19,350 (World Bank, 2007)

Internet domain: .bh

International dialing code: +973

LEGAL BASIS

Law No. 11 of 2006, which supersedes the Trade Marks Legislative No. 10 issued in 1991.

The Implementing Regulations of the said law have not yet been issued. Such Regulations are expected to be issued later

MEMBERSHIP IN INTERNATIONAL

CONVENTION

TRIPS Agreement since January, 1995

Paris Convention for the protection of Industrial Property, Stockholm Act, since October 29, 1997

Protocol Relating to Madrid Agreement Concerning the International Registration of Marks, since September, 2005

MEMBERSHIP IN INTERNATIONAL

CONVENTION

Nice Agreement Concerning the International Classification of Goods and Services, Stockholm Act, since July 5th, 1972.

Trademark Law Treaty, since March 18, 2007.

REGISTRATION PROCEDURES

Filing an application for a Trademark registration is available to any of the following:

1) Citizens of the Kingdom of Bahrain, or

2) National of a country member in the Paris Union, or

3) Country whose nationals enjoy national treatment under bilateral or international agreements adopted by the Kingdom, or

4)Person has real and effective industrial or commercial establishments in the territory of such country

REGISTRATION PROCEDURES

An application for the registration of a trademark shall be submitted to Department of the Industry and Commerce (MOIC), to be registered using the form prescribed for such purpose.

A single application may be filed to register a group of identical trademark having substantially similar elements, if their differences relate to elements which do not affect the fundamental features

The applicant may enjoy the right of priority in accordance with the provisions of Paris Convention for the protection of industrial property subject to the provisions of Article (4) Section (D) of that convention

REGISTRATION PROCEDURES MOIC shall examine the application for the registration of trademark

and the annexes thereof to ascertain the fulfillment of the required conditions.

On the light of the said examination MOIC will issue one of the following decisions:

1) Accepting the mark: in this case, the MOIC will publish the application in the Official Gazette.

It usually takes between 1 to 2 years for the mark to be published. The reason for this lengthy time frame is due to the fact there are many trademark application waiting to be published and MOIC deals with publication on a “first come first serve” basis.

The application will remain published for a 60 day period, within which time, any objections to trademark must be made. Assuming 60 day period passes without any objection the Registration certificate of the mark will be issued.

REGISTRATION PROCEDURES

2) Refusing the Mark: in this case, the applicant shall be entitled to file an appeal within 3o days from the communication of such decision.

The appeal shall be decided by the Committee of Appeals shall within 60 days from the date of filing such appeal.

If the period of 60 days lapsed with no communication the refusal will be considered approved by the committee of appeals.

If refusal has been approved by the Committee of appeals, the applicant can challenge the decision before the court within 60 day from the notification of such decision, or the lapse of period specified for the deciding on the appeal with no communication

REGISTRATION PROCEDURES

The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement is followed in Bahrain.

Goods or services shall not be considered similar to each

other for being classified within the same category of NICE Classification, and Goods or services shall not be considered different to each other for being classified in different categories of NICE Classification.

Time Frame to obtain certificate of registration from Algerian Trademark Office is approximately between 18-26 months

REGISTRATION PROCEDURES

The Trademark registration Requirements are as follows:

1) A Power of Attorney on behalf of the applicant. POA should attested by embassy of Bahrain and thereafter the ministry of foreign affairs of the applicant.

2)A duly legalized Certificate of Incorporation of the applicant.

3) Official Copy of the Priority Document. If any priority is to be claimed.

PROTECTION PERIOD & RENEWALS

The protection conferred by the registration of a trademark shall be for a period of ten years as from the filing date of the application in the Kingdom,

Protection may be extended to similar period or periods if the owner of the trademark submits a renewal application to the competent authority during the last year of the protection period in force.

The competent authority shall notify the owner of the trademark or whoever is acting in his behalf of the expiry date of the protection period of the mark in a period of at least six months prior to the expiry date

PROTECTION PERIOD & RENEWALS

Trademark registration will be canceled if six months lapse following the expiry date of the protection period of such mark and its owner fails to submit a renewal application,

If the registration of a trademark is cancelled, such mark shall not be reregistered in favour of a third party for the same goods or services, or for identical or similar goods or services, except after the lapse of three years from the date of cancellation. On the other side, the owner of such mark may request to reregister it at anytime that if it has not been registered by another party.

OWNERSHIP TRANSFER, MORTGAGE & SEIZURE OF TRADEMARKS

The ownership of a trademark may be transferred wholly or partly with or without compensation, as well as by inheritance.

Such marks may be mortgaged or seized with or without the business premises or the exploitation project for which the mark is used to distinguish its goods and services. Acts of transferring ownership shall be in writing to be valid.

The transfer of the ownership of a trademark or mortgage thereof shall not be effective towards third parties except after an entry thereof is made in the Register and published

If the ownership of business premises is transferred without transferring the ownership of the trademark, the owner may continue to use the mark to distinguish the goods or services for which the mark was registered, unless otherwise agreed.

OWNERSHIP TRANSFER, MORTGAGE & SEIZURE OF TRADEMARKS

The required documents for effecting a registration assignment are as follows:

1) A Power of Attorney on behalf of the assignee, POA should attested by embassy of Bahrain and thereafter the ministry of foreign affairs of the applicant.

2) A duly legalized deed of assignment, signed by the assignor and the assignee. .

TRADEMARKS USE LICENSE

The owner of a trademark may license one or more persons to use the mark for all or some of the goods or services for which the mark was registered.

Such license to a third party shall not prevent the owner from using his mark, unless otherwise agreed. Moreover, the license period shall not exceed the period prescribed for the protection of the mark

If the owner of a trademark request, within the license period, the cancellation of the his mark, the license beneficiary has the right to void such action. Unless, the licensee authorize such action in writing, or expressly waives this right in the license contract

 

TRADEMARKS USE LICENSE

The required documents for effecting a registration assignment are as follows:

1) A Power of Attorney on behalf of the licensee, POA should attested by embassy of Bahrain and thereafter the ministry of foreign affairs of the applicant.

2) A Power of Attorney on behalf of the owner, POA should attested by embassy of Bahrain and thereafter the ministry of foreign affairs of the applicant.

3) A duly legalized deed of assignment, signed by the assignor and the assignee. .

TRADEMARK OWNERSHIP

Any person who registers a trademark in good faith shall be considered the sole owner thereof; it shall be inadmissible to dispute the ownership of a mark if used for a period of at least five years with no legal dispute concerning it.

If two persons or more submit an application at the same time to register the same mark, or marks which are similar, the registration of the applications shall be suspended until:

1) Either one presents an assignment in his favour signed by the other parties to the dispute and approved by a competent government authority, or

2) A final judgment is passed in favour of either one.

OWNERSHIP RIGHTS

The owner of a registered trademark has the right to

1) Use the mark exclusively, and

2) To bar third parties, not having his consent, from using his mark or using any similar or identical sign thereof in the course of trade to distinguish goods or services relating to the registered trademark.

3) To suspend the release of a counterfeit goods bear a mark similar to his registered trademark and to prohibit circulation thereof. ( This right will be discussed later under a separate topic)

CANCELATION ACTION

Any interested party can claim a cancelation of a registered trademark. Such action may be based on the following grounds:

1) The trademark was registered in bad faith: in this case, the plaintiff must raise his claim within five years from the date of the registration of the mark. In addition he must prove the following:

a) He is the owner of identical/similar mark ( registration is

not condition)

b) He is using the mark prior to the use of the defendant.

c) The bad faith of the defendant.

2) The trademark in question has not actually been used seriously for a period more than five uninterrupted years

Should you have any further Information, please feel free to contact

me at

Mohamed.ezz.ragheb@windowslive.com

Thank You