[Reader-list] IP Law News (1) - Bahrain

Wed Feb 28 14:23:04 IST 2007

Dear All,

Recently I have joined an international Intellectual Property Law Firm At Manama, Kingdom of Bahrain. I would like to give information regarding the existing Intellectual Property System over here. This will be in 4-5 parts in the series, today is 1st one. Today, I am writing about trademarks. 

TRADE / SERVICE MARKS
1. LEGAL BASIS
2. MEMBERSHIP IN INTERNATIONAL CONVENTIONS
3. GENERAL
4. DEFINITION & PROHIBITIVE MARKS
5. FILING
6. EXAMINATION, PROTECTION DURATION
7. CANCELLATION OF REGISTRATION
8. INFRINGEMENT PROCEEDINGS
1. LEGAL BASIS
- Legislative Decree No. 10 of 1991. A new law Trade Mark Law No. 11 of year 2006 (Published in Official Gazette No. 2741 dated May 31, 2006) is enacted but implementing regulations are not issued as yet.
2. MEMBERSHIP IN INTERNATIONAL CONVENTIONS
- WTO/TRIPS Agreement, since January 1995.
- WIPO Convention, since June, 1995.
- Paris Convention, since October, 1997.
- Madrid Protocol (Registration of Marks), since December, 2005.
- NICE Agreement, since December, 2005
- Trademark Law Treaty, acceded on December 18, 2006 (will come into force on March 18, 2007)
3. GENERAL: 
Bahrain has been a member of the Paris Convention for the Protection of Industrial Property since 29 October 1997. However, claiming priority is not possible at the present moment and will not be possible until enforcement of the new law.
4. DEFINITION & PROHIBITIVE MARKS:
As per Article 1 of the law, a trademark is any distinctive form of names, words, signatures, characters, numbers, drawings, codes, seals, pictures, inscriptions, or any other sign or group of signs that possesses a distinctive form and indicates that the item or product on which the mark is displayed belongs to the owner of the mark in respect of said owner's production, invention, or trading in the product, or performance of certain services.
Article 5 of the law sets out the list of prohibitive marks which are neither considered as trademarks nor registrable in Bahrain . The following are the descriptions which are included in prohibitive list: (1) non distinctive marks; (2) any expression, drawing or sign which is immoral or contrary to public order; (3) public slogans, flags, military emblems, and other insignia belonging to the state, Arab or international organizations or one of their agencies, or to countries that treat Bahrain on a reciprocal basis, or any imitation thereof; (4) signs that are identical to the sign of the Red Cross or Red Crescent, or imitations of the same; (5) marks identical with or similar to symbols of a purely religious nature; (6) geographical names, if their use might cause confusion regarding the source or origin of the goods, products, or services; (7) the name, surname, photograph or logo of a third party, unless he or his heirs consent in advance to the use thereof; (8)
 details of honorary or academic degrees, unless the applicant for registration proves his legal entitlement thereto; (9) marks that might mislead the public, contain a false indication of source or origin of the products or services, or contain a false, imitated, or forged commercial name; (10) marks owned by natural or corporate persons with whom dealing is banned by the Ministry of Industry and Commerce; and (11) signs identical or similar to a mark previously registered by another for products or services, or signs the registration of which may cause the diminution of value of products or services distinguished by a prior mark.
5. FILING
Any person who is the proprietor of a trade or a service mark according to the implication of Article 4 of the Trade Marks Law or any person deriving his right from such registered proprietor by assignment or other mode of transfer, may apply for registration in the territory. The international classification of goods and services (8th edition) for the purpose of the registration of marks is followed. Multi class applications are not permissible, however a series trademark (consists of more than one form) can be filed. The collective mark applications are accepted but registered only with the permission of the Minister of Commerce and Industry. A mark may be limited wholly or partly to one or more specific colors; such limitations are taken into account in considering the distinctive character of a mark. A mark registered without limitations of colour is deemed to be registered for all colours. 

Filing Requirements:
Applications in Bahrain are to be filed with complete documentation and the following documents are required at the time of filing:

I.          A power of attorney signed by an authorized signatory of the applicant. It is not necessary to have the document notarized or legalized.

II.          One of the following documents:

            (a)  Certified copy of a corresponding home registration or application; or
            (b)  Certified copy of a corresponding foreign registration or application; or
            (c)  Certificate of incorporation of the applicant company; or
            (d)  Certificate issued by the registrar of companies; or
            (e)  Extract of the entry of the applicant company in the commercial register; or
            (f)  Certificate issued by the Chamber of Commerce.

Documents in c, d, e, or f above must indicate the specification  of goods and services or the line of the activity of the applicant company and must be legalized up to an a Arab consulate.

III.         Clear prints of the mark if it is a device mark.

IV.        Full particulars of the applicant. (Name, Address & Nationality)

V.         A list of the specification of goods and/or services to be claimed in the application(s).
6. EXAMINATION, PROTECTION DURATION
Once a trade/service mark application is filed, the trademark is examined as to its registrability. Trademark applications accepted by the Registrar are published in the Official Gazette. There is a 60-day period open for filing an opposition by any interested party. In the absence of an opposition, a published trademark is registered, and the certificate of registration is issued. 

It is noteworthy that trademark rights are acquired by registration. However, a trademark application can be opposed successfully upon producing sufficient proof of the prior use of the mark, in Bahrain and elsewhere in the world. 

Article 18 of the Law provides for the term of protection and renewal. A trademark registration is valid for 10 years as from the date of filing the application. Thereafter, a trademark registration can be renewed during the last year of protection for the period of next 10 years. The Trademark Law provides for a three-month grace period for late renewal of a trademark, after which the registration lapsed due to non-renewal. 

7. CANCELLATION OF REGISTRATION

Use of a trade mark in Bahrain is not compulsory for filing application for registration or for maintaining the trade mark registration in force.  But a trade mark is vulnerable to cancellation and can be cancelled by any interested party who can establish that the trade mark was not actually used during the five years immediately preceding the application for cancellation, or that there was no bona fide intention of using the trade mark on the goods in respect of which the it was registered unless the owner of the mark presents a justification for not using it.

Further, the commercial registry as well as any interested party may request the court to strike off the trade / service mark on the basis that the mark was unlawfully registered. Also the marks owned by natural or corporate persons with whom dealing is banned according to a resolution issued in this respect by the Minister of Industry & Commerce are to be struck off by the Commercial Registry.

According to Article 21 of the Law, re-registration of a cancelled mark in favour of third party is not possible expect after the lapse of 3 years from the date of striking off.

8. INFRINGEMENT PROCEEDINGS
As per Article 31 of the Law, unauthorized use of a trademark registered under the law or an imitation of such trademark applied on goods of the same class, or sale, storing for the purpose of sale, or exhibiting for sale of goods bearing a counterfeit mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods of the same class, are the offenses penalized under this article. Under Article 33, the owner can also seek precautionary measures with regard to machines & items used or being used in committing the offences stipulated in Article 31 of the Law.

If any one of you want yo know more about that, let me know. You are invited for comments.

Best Regards

Jaideep Kharub

IP Officer - AGIP 
PO Box - 990, Manama, 
Kingdom of Bahrain.
Phone : 00973-39187539 (M)
E-mail: jaideepkharub at yahoo.com 
             jaideep.kharub at gmail.com

"If it is not right..do not do it;
 if it is not true..do not say it"

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