Bahrain is one of only a handful of countries in the Middle East and North Africa (MENA) region in which it is possible to file a trade mark either directly at a national level or internationally through WIPO via the Madrid Protocol.
The Madrid Protocol provides a means for a simplified and streamlined procedure for filing trade mark applications and can result in significant cost savings.
Trade mark registrations are obtained through the Trade Mark Office at the Industrial Property Office, which forms part of the Ministry of Trade and Industry. In existence since 1955, the Bahraini Industrial Property Office is one of the oldest intellectual property authorities in the Arabian Gulf region.
Bahrain operates a single class filing system and uses the 10th Edition of the Nice Classification Guide.
An apostilled and legalised Power of Attorney may be submitted within three months of filing an application, together with a legalised certificate of incorporation or trade licence.
Applications are examined on absolute grounds (ie is the mark inherently registrable?) and on relative grounds (ie does the mark conflict with any earlier rights?)
Applications which are accepted by the Registrar are published in the Official Gazette for opposition purposes for a period of 60 days. During this time, any interested party may file an opposition. If no opposition is filed, then the application will proceed to registration and a registration certificate will be issued.
The registration term in Bahrain is 10 years from the date of filing and is renewable indefinitely for further 10 year periods.
The assignment of a trade mark may only be recorded once the trade mark has become registered. The same applies for the recordal of registered user agreements. Such recordals are published in the Official Gazette.
Trade mark registrations in Bahrain become vulnerable to non-use cancellation (by any interested party) if, for a continuous period of five years, there has been no use of the mark in Bahrain.
Madrid Protocol filings
Bahrain acceded to the Madrid Protocol on 15 December 2005.
Once the Bahrain Trade Mark Office has been notified by WIPO of a Bahrain designation within an International Registration, the application is examined subject to the same laws and procedures as a national application. Following this, if the application has been accepted, then it will be published for opposition for the same period (ie 60 days) as a national application in the Official Gazette.
Bahrain has opted under Article 5(2)(b) of the Madrid Protocol to ensure that it approves or refuses the registration of a mark within a maximum timeframe of 18 months. This provides a degree of certainty to applicants that an answer will be received within a known timeframe. In a region where the registration process can sometimes take a number of years, this certainty is helpful to many applicants.
One of the benefits of designating Bahrain through the Madrid Protocol is that there is no need to appoint a local agent unless an examination report is issued. This means that if no examination report is issued, applicants will be able to bypass the need for providing a Power of Attorney and incurring the high costs associated with the legalisation of such a document.
On the other hand, should it become necessary to appoint a local agent, the representation fees may quickly dissipate any expected cost savings of proceeding via the Madrid system. Further, local agents may have to expedite responses to the issues presented given that the timeframes for responding will likely have been running for some time before they are instructed.
This can be particularly problematic given that deadlines with the Trade Mark Office in Bahrain are typically non-extendable and it usually takes three or more weeks for a Power of Attorney to be put in place to allow a local agent to put forward responses on the applicant's behalf.
Accordingly, while filing through the Madrid Protocol has some benefits, applicants should still bear in mind that direct national filings can be a safer and, overall better option when it comes to countries such as Bahrain.
Top tips for trade mark filings in Bahrain
Our 'trade mark top tips' for Bahrain are:
- Bahrain is a GCC country – many businesses (including infringers) see the GCC countries as a single market. It is not unusual for international businesses entering the Middle East to start out in, say, the UAE and then look to expand across the region.
Often, brand owners' trade mark filing strategies follow the same pattern – start filing in the UAE and then expand trade mark protection across the GCC countries as the business expands. Problems can then arise, with infringers spotting the brand owner's successful business in the UAE and then filing applications in, say, Bahrain before the brand owner.
The brand owner can then be left with an expensive fight on its hands if it is going to expand into Bahrain using the same brand as elsewhere. It is therefore important to adopt an 'anticipatory' filing strategy under which the brand owner files applications across the GCC at an early stage (when it anticipates that it may wish to expand its business rather than later, when it actually wants to expand its business).
In reality, this can either mean filing across the GCC (including in Bahrain) as soon as the business first enters the GCC region, or within a short period afterward (once initial success of the business has been confirmed in its first market in the region).
- Searches – when entering the GCC region brand owners which anticipate that they may in due course want to move into Bahrain should conduct pre-use clearance searches across the region, including in Bahrain. It is possible to search for both word marks and devices in Bahrain.
- Register – registration is key for the protection and enforcement of trade mark rights. Applicants should consider whether direct national applications or designating Bahrain in an International Registration through the Madrid Protocol would be most appropriate for their circumstances.
- Al Arabiya – Arabic is the main language of Bahrain and the wider region. It is therefore important to develop, protect and use Arabic branding and not rely on an English-only approach.
- Class headings – unless the products or services of interest are specifically mentioned in the class heading, we advise against using class headings (as this may not provide suitable protection for enforcement).
- Marketing – although Bahrain is less strict than countries such as Saudi Arabia, it is still a largely conservative, Islamic country. As such, rights holders may wish to give consideration as to whether their marketing campaigns as used in other regions may be appropriate for use in Bahrain.
- Consistency – brand owners which file trade mark applications in Bahrain should ensure the Arabic name and address used is precisely that same as the translation used in previous applications (in both Bahrain and elsewhere in the region). Failure to do this can result in problems arising later on, including having the brand owner's application rejected based on its own prior rights.
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.