Written by: Reham Al Barakat - Reham@acolaw.net
With the increased reliance on e-commerce, the market is an ever-growing place where it becomes important for each entity to mark their spot and distinguish themselves from their competitors. This is where trademarks come in to help consumers differentiate between business entities without being misled and deceived to believe one is another.
What Constitutes a Trademark
The World Intellectual Property Organization (WIPO) defines a trademark as “a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”. According to the Industrial Property Rights Law a trademark may comprise of words, designs, letters, numerals, colors or a combination of colors, the shape of goods or their packaging, holograms, geographical indications, sounds, scents and tastes. Article 36(2) of the Law stipulates the absolute grounds for what cannot constitute a trademark which are mainly; the incapability of distinguishing goods or services of one entity from those of others, being contrary to moral standards or public order, being deceiving and misleading to the public.
There are 5 internationally recognized categories of trademarks which are: generic, descriptive, suggestive, fanciful and arbitrary. Generic trademarks are common terms used as brand names, such as the term “dresses” to sell dresses. Descriptive trademarks tend to provide the consumers with more description of the type of goods sold or services provided, for example Computer Land® for computer store services. A suggestive trademark on the other hand does not directly describe a product however it suggests what it could provide. Jaguar® is a strong example of a suggestive trademark as it suggests the quality of speed provided by the automobile company. Fanciful trademarks are made-up terms that did not exist prior to the trademark such as Nike®. Such trademarks usually have no meaning other than that they are associated with through their business. Arbitrary trademarks are normal common terms however they are associated with goods and services which have no relation to them such as Amazon®. Amazon is not only the world’s largest rainforests, but also one of the world’s largest e-commerce company.
As such, when choosing a trademark one should seek to avoid generic names or slogans, and customary or ordinary drawings as this renders a trademark weak and could result in the ineligibility for registration. On the contrary, choosing a fanciful or arbitrary trademark not only makes it more distinctive but makes a stronger trademark which provides for stronger protection. An example of a strongly protected trademark is Apple®, as the use of the term and the logo are associated with something entirely irrelevant to apples the trademark has gained strong protection and any third party seeking to register a trademark similar to the idea thereof for the similar products is subject to infringement claims.
Local Laws and International Treaties
Trademarks in Oman are governed and regulated by the Industrial Property Rights Law promogulated by Royal Decree No. 67/2008 and the Trademarks Law of the Gulf Cooperation Council States pursuant to Royal Decree No. 33/2017.
The Industrial Property Rights Law provides a general framework of the conditions and requirements for what constitutes a trademark as well as provides protection and remedies against infringements relating to trademarks registered in the country. The GCC trademark law on the other hand provides a more detailed framework regulating trademarks which apply uniformly across all GCC states. The GCC trademark law provides a more detailed definition of what constitutes a trademark. Moreover, the opposition period provided is 60 days as opposed to 90 days in the Industrial Property Rights Law. Application fees have also increased, as well as an increase in penalties for infringements. However, currently the Implementing Regulations of the GCC trademark law have not been published yet, thus this law does not formally displace the Industrial Property Rights Law. Anything not addressed by the GCC trademark law is covered by the Industrial Property Rights Law, and where there are contradicting provisions the GCC trademark law prevails.
On an international scale, in 2007 Oman accessioned to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1979). Currently, the Madrid Union consists of a total of 125 countries who are either party to the Madrid Agreement or Madrid Protocol. As Oman is a member of the Madrid Union, any national can register their trademark in any and all member states party to the Madrid Union through a single application from the Madrid System to attain international protection. The Protocol regulates the process and requirements for international application which include renewals, modifications, fees, extensions, and refusals.
Importance of a Trademark
A trademark exists to serve two main purposes; provide legal protection for businesses and brand owners, and help consumers distinguish one brand from another. To consumers a trademark might not hold a monetary value, however it is eventually what a consumer’s decision is highly influenced by. A consumer might opt to buy from a specific brand due to their reputation and their quality which is all represented through the brand’s name, i.e. trademark.
From a commercial perspective and to business entities a trademark can be very valuable. It can act as an effective communication tool as it enables consumers to convey a lot about a business entity including their reputation and the quality of goods or services provided. Having a recognizable trademark allows for easier distinction from competitors within the same market, where consumers are less likely to confuse one brand to another due to the distinctive feature of the trademark. This increases business brand recognition and builds brand loyalty increasing the customer base, which in turn increases profit.
Moreover, trademarks remain a property asset which grow as the business grows and become more valuable depending on the success of the business. Since trademarks are property assets owners can grant third parties rights to their use for a certain fee making even further profits from their trademark.
Infringement and Remedies
The GCC trademark law provides for an exhaustive list of what is considered an infringement. It includes copying a registered trademark or imitating it in a way that would be deceiving to the public, using in bad faith a counterfeit trademark or registered trademark belonging to someone else, selling products or providing services under registered trademarks belonging to someone else and more stipulated in Article (42).
Where such infringement occurs the owner of a trademark has the right to initiate legal proceedings against the offender whether during the registration process or upon discovery after the publication of trademarks. However, practically discovering infringement during the registration process can prove to be difficult as this would require the owner to constantly look at newly registered trademarks to ensure that none of them constitute an infringement. However, once they are registered and their owners start marketing the brand the offender becomes known to the trademark owner who can then initiate legal proceedings.
Pursuant to the Industrial Property Rights Law depending on the type of infringement, penalties applicable include fines up to OMR 10,000 and imprisonment of up to 2 years. However, this has been increased by the GCC trademark law which provides for fines up to OMR 100,000 and imprisonment periods reaching up to 3 years. In addition to that, the law also entitles a trademark owner to request from the courts to rule on additional compensation equivalent to the caused damages, and the profits gained by the offender from such use.
The enforcement of harsher penalties indicates the rising reliance on trademarks and the awareness of their significance within the public, and the importance of protecting trademark owners and preventing infringement.
Protection and Registration
Trademark owners tend to seek protection for their trademarks to have the exclusive use thereof and to prevent third parties from using their trademarks or similar trademarks and benefiting from such utilization.
To be legally recognized, a trademark must be registered with the competent authority, and usually priority is always given to the earlier application date. However, non-registration does not necessarily mean one has lost all rights to their trademark given that they can prove that this trademark has been used commercially by him before it has been registered by the third party. In 2009, Twitter tried to trademark the word “tweet” however the application was repeatedly rejected due to the existence of the previously registered trademark “Let Your Ad Meet Tweets” by third-party developer Twittad. Twitter then raised a lawsuit against Twittad, and 2 and a half years later it was ruled that “tweet” had in fact become famous because of Twitter and before being registered by Twittad. However, it will not always be easy to prove that even though a person does not own a trademark they are the rightful owner due to previous usage of the trademark which has made it famous and known as belonging to them. Thus, it is always recommended to register a trademark the earliest possible to avoid the lengthy and costly legal battles which will not always render a positive outcome.
To register a trademark locally a person may either do it online through the Invest Easy Portal or directly at the Ministry of Commerce, Industry, and Investment Promotion (MOCI) or through licensed local IP representative offices.
Once an application is submitted to the Directorate of Intellectual Property in MOCI, the Directorate will examine the submitted documents and whether the application has met the requirements prescribed by the law within 90 days. Where a trademark is found to meet all requirements and conditions have been met the trademark is then published in the Official Gazette. Within 60 days from the date of publication in the Official Gazette any interested person may raise an opposition through submitting a written statement clarifying the grounds of opposition. The Director of the Directorate then makes the decision based on a case-by-case basis whether the trademark should be registered or rejected. If the application meets all required conditions, the trademark shall be registered, whose reference shall be published along with issuing a certificate to the owner.
In the case the Director refuses to register the trademark they must notify the applicant for the grounds of refusal, to which the applicant has 60 days to respond to. Non-response within the specified period will result in the trademark not being registered. A registered trademark in Oman is granted protection for 10 years from the date of application, and renewable thereafter for a similar period subject to the owners’ request along with the payment of the renewal fees. If not renewed then, the Director will cancel the trademark. However, it can still be renewed without the requirement of any inspection just publication in the Official Gazette.
To be eligible for international registration, a trademark must first be registered locally as it will serve as the basis of the international application. Once a trademark has been officially registered and published the trademark owner can then apply to have the trademark internationally enforceable. This can be done through attaining the services of licensed local IP representative offices, who will then handle the application process from the initial phase to the approvals to filing separate applications for each designated country.
An alternative would be to apply using the Madrid system whether through a licensed local IP representative office, trademark legal advisors or online. As has been previously mentioned, Oman is signatory to the Madrid Protocol which means any Omani company or a business whose permanent location is Oman, is entitled to use the Madrid system to register their trademark internationally. Opting to use the Madrid System has its advantages. An application need not be filed in several languages depending on the countries to be registered in, instead it can only be in one language of either: English, French or Spanish. Fees are also paid once for the application itself, and no translation fees are required. As an applicant to international trademark registration, you will only be required to pay the designated country fees. Moreover, any changes in the personal information of a holder or a change in ownership can be updated through a single procedure and single payment which will apply to all applications in contracting parties. Many people also prefer to use this system due to the simplicity of the application procedure and the financial savings due to paying single fees.
It is important to note that application forms must be filed correctly and accurately to avoid any hinders or delays. Thus, it is recommended that trademark legal advisors or licensed local IP representative offices handle the application to avoid any such inconveniences.
While the international registration process is regulated by the Madrid Protocol, once a trademark has been officially registered in the country of preference, the level of protection granted is dependent on the local laws of the country of registration.
The Difference between Local and International Registration
International trademark infringements are quite common especially when it comes to well established reputable entities. As trademarks are territorial rights, local registration only provides protection to the registered trademark in the country of registration only, meaning it restricts an owner’s exclusive right to use the trademark in a specific market.
For example, if A registers her trademark in Oman, and is successful in the registration thereof, and a while later B who owns a trademark which is identical to A’s registers his trademark in the United Kingdom, A cannot sue B for trademark infringement as her trademark is not registered nor officially recognized in the UK. To prevent the occurrence of such an incident, A can seek to register her trademark internationally in multiple countries.
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A&CO Law Firm Team