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We are excited to share the latest edition of the Law Update, beautifully and appropriately titled “Sustainable Horizons: The Saudi Arabian Vision.” Giving special honor to the Kingdom’s 2030 vision, this update focuses on a collection of both informative and inspiring articles.
For those in construction, you can learn about how the tendering environment impacts risk-pricing for contractors, the updates on the legal framework of the construction industry and how contractors can protect themselves against financial difficulties.
There is good news too from the kingdom’s banking sector, from which the practice of “Open Banking” is being pushed for! But what is open banking? We’re answering that too.
Also . . . Are there any women trail blazers in Saudi Arabia you can name? We’ll help you with that. We cover how the Middle East has been making strides in empowering women in the entrepreneurial space,most notably in STEM fields.Read the full edition
Rasha Al Ardah - Partner - Intellectual Property
Mariam Sabet - Senior Counsel - Intellectual Property / Competition
December 2014 – January 2015
Think long term and create a global trademark strategy
With the internet and social media, information is transferred in seconds all around the world, and it is providing businesses with wide distribution channels for their products and services on a global scale. This makes it crucial for brand owners to think global at the very early stages of creating their brands and it is now a must to develop a strategy to develop and manage their brands globally. We now focus on the major legal aspects a brand owner needs to take into consideration when putting in place a global trademark strategy.
Protecting the mark globally
The first step in developing a global brand is to consider the protection of the brand as a trademark globally. Many brand owners fail to expand in new markets for the simple reason that the trademark was not registered in that specific market and a competitor got there first. In such cases, the brand owner will have to give up that market; select a new brand specifically for that market; or enter into a legal battle to acquire the trademark, all of which are financially burdensome on the brand owner. This could have been avoided if the right strategy had been set in place from the early stages, as we now explain:
Filing for trademark/Priority dates
Once the mark is cleared, filing of the trademark should follow immediately so as to make use of the Paris Convention priority. The Paris Convention has provided for the possibility of claiming priority from the date of first filing in another contracting party if the application is filed within 6 months.
Consider registering the local language version of the trademark
Once a brand is successful it could become a target for third parties to ride on this success by adopting a trademark that is the translation of another brand. To prevent others from taking this advantage, it is recommended to also consider the registration of the translation and transliteration of the trademark.
Local brands in the Middle East often fall short in registering their Intellectual Property rights and even in case of registration often limit their scope to trademark filings. Considerable thought also needs to be provided to brand derivatives such as social media tags and domain suffixes for the brand name and even catchphrases associated to the brand.
From the very beginning of the business, brand owners need to create and maintain a solid strategy that protects the brand. As part of this step, consideration should be provided not only to the trademarks and logos, but also domain names, designs, patents and possibly associated rights which can be extended to copyrights.
Domain names are important for the web presence of the business and hence the global presence of the trademark. It is important to consider what top-level domain and country code level domains need to be registered. When considering the country-code domain name, local legal advice should be obtained as usually there will be certain requirements for the registration under the local domain name, such as the necessity of a local presence (a local company).
When taking brand names global, companies must not only register the trademarks around the world but also register the domain names. For example, iTunes is a trademarked brand name; it is also a domain name. So is iPod and Apple and iMac, Apple had to pursue legal means to get access to itunes.co.uk
Consider the ownership of the trademark
The ownership of the trademark is another issue that should be considered when setting the global strategy for the trademarks. It needs to be decided who will own the trademark globally; this is specifically applicable when the brand owner is a group of companies with different subsidiaries and affiliated companies. Usually it is preferable to have all the trademarks registered in the name of the group/mother company, or to create a specific entity for the purpose of owning the trademark and commercializing the same globally. Furthermore, some jurisdictions do not allow the registration of trademarks under the name of individuals, and so ensuring the owner requirements allow for global coverage is important.
Use social media
The role of social media in today’s market place is undeniable and can be extremely effective in reaching a broader base of consumers and in effectively disseminating information about products and services of the business.
Licensing the brand
Licensing or franchising the brand and brand concept will help increase the brand recognition in other countries, as it will result in the presence of the products or services in other countries. However, it is important to keep in place strict quality control provisions with the licenses or franchisees, in order to keep the brand integrity and develop the value of the brand.
Vigilance in enforcement
You need to be vigilant in maintaining your brand reputation in every market in which you sell. After applying for the protection of trademarks, establishing a program for enforcing the trademarks will be necessary to maintain brand integrity and to preserve the distinctiveness of the trademark in the market. Enforcement programs include watch services for trademarks which ensure the brand owner is aware of trademarks being applied for and will be able to prevent any identical or confusingly similar mark from being registered.
When you start plans for brand conception, have a long term vision as both local and global trademark strategies complement each other. It is best to think ahead of time when it comes to expansion and to consider the legal issues you may face, as these plans may be halted if competitors are already jumping to your intended global market ahead of you. If you start strong, your company will ensure a seamless and smooth transition into global recognition.
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