[AfrICANN-discuss] Launch of IDNs highlights gaps in Arabic-language trademark protection

[Anne-Rachel Inné]

http://www.internationallawoffice.com/newsletters/detail.aspx?g=0222986e-de99-4d7b-9128-46a705c8931a
<http://www.internationallawoffice.com/newsletters/detail.aspx?g=0222986e-de99-4d7b-9128-46a705c8931a>Launch
of IDNs highlights gaps in Arabic-language trademark protection

April 12 2010

*Introduction<http://www.internationallawoffice.com/newsletters/detail.aspx?g=0222986e-de99-4d7b-9128-46a705c8931a#intro>
**Application of domain name dispute
policies<http://www.internationallawoffice.com/newsletters/detail.aspx?g=0222986e-de99-4d7b-9128-46a705c8931a#domain>
Application of trademark
laws<http://www.internationallawoffice.com/newsletters/detail.aspx?g=0222986e-de99-4d7b-9128-46a705c8931a#trademark>
Action for brand
owners<http://www.internationallawoffice.com/newsletters/detail.aspx?g=0222986e-de99-4d7b-9128-46a705c8931a#action>
*

*
Introduction*

As internationalized (non-Latin script) domain names (IDNs) are being
adopted across the Arabic-speaking world, many brand owners are having to
review the adequacy of their Arabic-language trademark protection.

IDNs are proving very popular with Arabic-speaking countries. As of the end
of March 2010, six of the 14 country-level IDNs approved by the Internet
Corporation for Assigned Names and Numbers (ICANN) under its fast-track
application process were in the Arabic language. Arabic-language domain
names are now set to be adopted within the next few months in Egypt,
Palestine, Qatar, Saudi Arabia, Tunisia and the United Arab Emirates.

The creation of Arabic-language IDNs will almost certainly attract
cybersquatters and other 'entrepreneurs' trying to make a quick buck out of
the system. While there may be a well-trodden path to follow in seeking to
recover English and other Latin-script domain names from cybersquatters, the
position is potentially much less straightforward when it comes to
Arabic-language IDNs.

*Application of domain name dispute policies*

With some country-level domain name registrars in the Middle East adopting
ICANN's Uniform Dispute Resolution Policy, or a modified version of this
policy, trademark owners are often able to recover domain names registered
by cybersquatters if:

   - the domain is identical or confusingly similar to the trademark in
   which the complainant can establish rights;
   - the domain name holder has no rights or legitimate interests in respect
   of the domain name; or
   - the domain name has been registered and is being used in bad faith.

The introduction of Arabic-language IDNs puts the focus on the first of
these criteria - will an English-language trademark registration provide
sufficient rights to protect against the registration of a corresponding
Arabic-language IDN? The specific question to be asked is whether an
English-language trademark registration would be confusingly similar to the
Arabic-language equivalent.

The answer to this question is not necessarily as positive as brand owners
might like to hear. In many cases the Arabic-language equivalent of an
English trademark is a translation of the meaning of the mark. While the two
marks have the same meaning, they may be phonetically and visually very
different.

Alternatively, the Arabic-language version could be a phonetic
transliteration of the English mark. In this case the Arabic version will
sound very similar to the English mark, but it will be visually different
and the meaning will not be the same.

In all cases the trademark owner will have to demonstrate that the Arabic
and English versions are sufficiently similar to be confusing. In some
instances this may be relatively straightforward; in others, where the two
versions are clearly dissimilar, the task could be impossible.

*Application of trademark laws*

Alternatively, and often much more costly, trademark owners may seek to
enforce their rights by way of a trademark infringement action. However, in
many Arabic countries the same problems will arise in establishing that an
English-language trademark registration provides sufficient rights to
restrain the unauthorized use of an Arabic-language translation or
transliteration of that mark.

In 2007 a draft Trademark Law was published which was intended to apply
across the six Gulf Cooperation Council countries of Bahrain, Kuwait, Oman,
Qatar, Saudi Arabia and the United Arab Emirates. This draft law sought to
extend the scope of protection granted to a registered trademark to
translations of the mark. However, the draft law has yet to come into force
and, as a result, the position remains unclear in many countries across the
Middle East.

*Action for brand owners*

It remains to be seen whether domain name registrars who accept Arabic IDNs
will adapt their dispute resolution policies to take account of the issues
outlined in this update. However, as it stands, brand owners without
Arabic-language trademark protection may face difficulties if they ever need
to take action in respect of an IDN which incorporates an Arabic version of
their non-Arabic trademark.

Therefore, it is important that brand owners with an interest or potential
interest in the Arabic-speaking world review the adequacy of their
Arabic-language trademark protection. It is also important to monitor the
introduction of Arabic IDNs, so that consideration can be given to
registration of the appropriate Arabic-language domain names as they become
available.

*For further information on this topic please contact Rob
Deans<http://www.internationallawoffice.com/Directory/Biography.aspx?g=91addc9e-2678-48ea-b452-6c34dc3a479e>
 **or Harriet Balloch<http://www.internationallawoffice.com/directory/biography.aspx?r=2574776>
 **at Clyde & Co by telephone (+971 4 331 1102), fax (+971 4 331 9920) or
email (rob.deans at clydeco.ae<rob.deans at clydeco.ae?subject=Article%20on%20ILO>
 **or harriet.balloch at clydeco.ae<harriet.balloch at clydeco.ae?subject=Article%20on%20ILO>
**).*

*Comment or question for
author<http://www.internationallawoffice.com/newsletters/Comment.aspx?g=0222986e-de99-4d7b-9128-46a705c8931a>
*

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