Protection of Well-known Marks in Egypt, Qatar, and the Saudi System
Introduction
A well-known mark is a brand that enjoys special international protection, whereby the competent authority in a country rejects the registration of any industrial or commercial trademark that copies, imitates, or translates it in a way that could cause confusion or similarity, even if the well-known mark is not registered.
This protection applies by default in countries that are members of the Paris Convention for the Protection of Industrial Property, as amended on 28-9-1997, and under the regulations of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, which came into effect on 1-11-2024.
Before explaining the provisions for protecting well-known marks in countries that are members of the Madrid Protocol and the Paris Convention, one might ask whether well-known marks receive protection in non-member countries of the Convention.
The general rule is that there is no penalty or legal sanction without a clear legal provision. Infringements on well-known marks within the territory of member countries are addressed according to the procedures specified in the applicable implementing regulations. For non-member countries, however, the approach is often to protect the well-known mark, justified by the need to safeguard the reputation of the non-member country and to reassure foreign investors about the protection of their intellectual property rights.
In contrast, with regard to nationals of non-member countries, the determination of their intellectual property rights is left to the discretion of the member country, with protection potentially contingent on reciprocity, if stipulated in an agreement or regulation.
- Protection of well-known marks in Egypt:
Article 6 (bis) of the Paris Convention outlines the provisions for protecting well-known marks in member countries. It mandates that countries refuse the registration and prohibit the use of any industrial or commercial trademark that is a replica or imitation of another mark deemed well-known by the country, even if the mark is not registered.
The Convention grants special protection to well-known marks without requiring registration. This protection aims to preserve the smooth flow of trade, avoid consumer deception, and safeguard intellectual property rights on a global scale.
Egyptian Intellectual Property Law No. 82 of 2002, in Article 68, affirms protection for well-known trademarks, even if they are not registered in Egypt. The article states:
“Owners of trademarks that are famous worldwide and in the Arab Republic of Egypt are entitled to the protection provided by this law, even if the mark is not registered in Egypt. The competent authority must refuse any application to register a trademark that is identical to a famous one, intended to distinguish products similar to those marked by the famous trademark, unless the application is submitted by the famous mark’s owner. The same applies to registration applications for products that do not resemble those distinguished by the famous mark, provided the famous mark is registered in one of the WTO countries and in Egypt, and if the mark’s use on unrelated products could mislead others into believing there is a connection between the owner of the famous mark and those products, or cause harm to the famous mark owner.”
The Egyptian judiciary has occasionally supported this right, as demonstrated by a Court of Cassation ruling:
“The appellant company’s use of the respondent’s well-known trade name on similar products causes confusion, leading to a false perception of a link between the two companies. The contested ruling, which prohibited the appellant from using the trade name and acknowledged the appellant’s wrongdoing that warrants compensation, is valid and withstands criticism.”
(Cassation No. 8121 of 81, No. 9560 and 9627 of 82, on 11 June 2013)
This judgment not only establishes protection for well-known marks in Egypt against infringement but also grants the mark’s owner the right to compensation for unauthorized use by others, provided that the criteria for compensation—such as incurred losses and lost profits—are met.
- Protection of well-known marks in Qatar:
Article 4 of the Gulf Cooperation Council (GCC) Trademark Law No. 7 of 2014, applicable in Qatar, affirms the protection of well-known marks, even if they are not registered. It states:
- Registration of a well-known mark that has gained renown beyond its country of origin is prohibited for similar or related goods or services unless requested by the famous trademark’s owner or with explicit permission.
- In determining whether a mark is famous, consideration is given to factors such as the public’s awareness due to promotion, the length of registration, usage, the number of countries in which the mark is registered or known, its value, and its impact on promoting the goods or services it distinguishes.
- Famous marks cannot be registered to distinguish goods or services unrelated to those it traditionally marks if:
- a) The mark’s use implies a connection between the marked goods or services and the famous trademark’s owner.
b) The mark’s use could potentially harm the interests of the famous trademark’s owner.
In Qatar, the criterion for a mark’s fame is based on public recognition. It would be illogical for the owner of a well-known mark to invest in a country where the citizens are not familiar with the mark.
3.Protection of well-known marks in Saudi Arabia:
- In the Kingdom of Saudi Arabia, Royal Decree No. M/21, issued on 15-3-2002 regarding trademark law, stipulates in Article 4 (B, C, D) the right to protect well-known marks, stating:
- “The following categories have the right to register trademarks:
- a) Saudi nationals, whether natural or juridical;
b) Residents in the Kingdom who are authorized to engage in commercial or craft activities;
c) Nationals of countries with reciprocal agreements with the Kingdom;
d) Nationals of countries in a multilateral agreement with the Kingdom, or residents of such countries;
e) Public interests.”
This demonstrates that, while Saudi Arabia provides trademark protection selectively—granting rights to Saudi nationals, authorized foreign residents, and nationals of countries with reciprocal or multilateral agreements—the protection of well-known marks is granted more broadly. In cases outside of these categories, the protection of well-known marks is subject to the Kingdom’s discretion.