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Bahrain Trademarks - JAH CO.IP
Bahrain Trademarks

International Agreement     

Paris Convention

 

Classification                               

International – tenth edition of Nice Classification of Goods and Services; single-class filing.

 

Protectable    

Trademarks, service marks, certification marks, collective marks and a series marks.

 

Home Registration   

Needed; legalized extract from the Commercial Register, a legalized certificate of incorporation, or a legalized certificate from the Chamber of  Commerce is necessary in cases where no home  or other foreign application/registration is available.

 

Examination                                 

Formal  & substantive examination.

 

Unregistrable                                                               

lack of distinctiveness : flags, coats of arms, emblems, etc. of states or international organizations; false marks of origin, descriptive and otherwise non distinctive expressions.

Excluded from registration on other grounds – public interest: marks which are public domain, shapes and forms which result from the nature of the goods, deceptive and scandalous marks, marks contrary to accepted principles of morality or valid laws.

 

Use requirement                                        

Non-use for 5 years following registration makes the registration vulnerable to cancellation; a court decision must be issued to make cancellation effective.

Assignment  :  Possible.

Licensing  :  Possible.

Marketing Requirement  :  Optional.

 

Trademark Requirements:

A power of attorney with an Apostille certification.

A copy of the priority document with an Apostille certification (in case priority is claimed).

A certified copy of home or foreign registration certificate of the trademark. If not available, a certified copy of the certificate of incorporation or extract from the commercial register of the applicant will suffice.

 

The Bahraini Trademark Office declared on November 18, 2014 under directives numbered MS/14/34-1 that as of the said date onwards it is permitted under the practice of the Bahraini Trademark Registrar to file trademark applications and obtain filing number and date as well as the official filing certificate without the complete required documents which can be submitted within a non-extendable term of three months from the date of filing; or else their applications will be declared abandoned.

Time frame from filing through to registration in the normal course of action; i.e. in case of no third party oppositions or objections by the trademarks examiner:

 

Filing up to Examination : 7-9 months
Examination up to Publication : 3-5 months
Opposition Period : 60 days from publication date
End of Opposition Period up to Issuance of Registration Certificate : 2-4 weeks
Total Estimated Time Frame : 14 – 18 months

 

Renewal Requirements:

A power of attorney from the owner of the mark with an Apostille certification.

Grace period of 3 months is given.

 

Assignment requirements:

A power of attorney from the assignee company with an Apostille certification..

A copy of the deed of assignment executed by the two parties and sealed with their official stamps with an Apostille certification.

 

Change of name and/or address:

A power of attorney in the new name and/or address with an Apostille certification.

A certified copy of certificate of change of name and/or address.

 

Registered user/ License Agreement Requirements:

A power of attorney by the licensee company with an Apostille certification.

A copy of the license agreement signed by the parties with an Apostille certification.

In Bahrain a licence agreement has to be in writing. Licensing of unregistered trademarks is not permitted. Licences can only be recorded for registered trademarks. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence, unless provided for in the sale agreement or the licence agreement originally executed by the two parties. There are no statutory provisions prescribing the terms of a licence agreement, but the terms and conditions agreed upon between the two parties are regarded as valid.  There are provisions in law for the recordal of a licensee. The recordal is not mandatory but may be requested by the parties. A licence agreement will not have any effect against third parties unless registered and published in the Official Gazette. There is no time frame for the recordal of a licence and there is no prescribed form or content for the validity of a licence agreement.  The licence agreement becomes effective and enforceable against third parties from the date of signature of the agreement, provided that it is recorded in the Trademarks Register and published in the Trademarks Gazette.

Time frame needed for completing a registered user/license agreement from submitting the recordal application till issuance of the user/license agreement certificate:

 

Filing up to Examination : 7-9 months

Examination up to Publication : 3-5 months

Total Estimated Time Frame till issuance of the user/license agreement certificate : 14 – 18 months

 

Agency Agreement requirements:

A power of attorney with an Apostille certification.

2. A copy of the agency agreement executed by the principal and his agent, with an Apostille certification.

 

The Kingdom of Bahrain announced that legalization of Power of Attorney and other supporting documents required for all Intellectual Property (IP) related matters would no longer be required. The Bahraini consulates abroad will no longer provide legalization services for documents if the applicant’s country is a member of the Hague Convention (October 5, 1961). This decision came as a result of Bahrain’s accession to the Hague Convention (October 5, 1961) abolishing the requirements of legalization of foreign public documents, and it entered into force as from December 31, 2013.

Accordingly, the apostille documents are sufficient for filing with the Industrial Property Office and the Patent Office in Bahrain.

 

Opposition procedure:

Every interested party may submit the Trademarks Registry a written opposition to the procedures of the registration of the trademark within sixty days from the date of the publication of the mark in the Official Gazette, provided that the opposition is reasoned.  The implementing regulations shall determine the rules and conditions to decide on oppositions.  If the specified opposition period lapses without submitting any opposition to the approval of the application for the registration of trademark or if the oppositions submitted in this respect are rejected, the competent authority shall issue a decision to accept the registration of trademark after the lapse of the specified opposition period ,or shall decide on the oppositions submitted to this authority ,as the case may be, and this decision shall be published in the Official Gazette.

Subject to the provisions of opposition provided for in Article (13) of this Law, the person concerned shall be entitled to appeal any final decision issued tinder the provisions of this Law to the Minister, within 30 days from the communication of such a decision.  The appeal shall be decided reasonably, and the person concerned shall be notified by a registered letter within 60 days from the date of filing the appeal.

Also, the Trademark Office at the Directorate of Industrial Property with the Ministry of Industry and Commerce will start the acceptance of filing sounds trademark as per directives issued under circular number 14/23-3 on 18 November 2014 as of that date.

 

Infringement  Proceedings:
There is no evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and may also call upon the trademark owner to institute infringement proceedings, but he may not institute proceedings in his own name if the proprietor refuses or neglects to do so. The licensee can institute action against infringement only if he is so authorized by the legitimate owner or if this is expressly provided for in the license agreement.

 

 

The requirements to file a sound mark are:

Musical note composing of the sound mark written clearly;
Compact Disk containing the musical note recited in MP3 audio format or any other compatible format;
A power of attorney with appostille certification,
A copy of certificate of incorporation and extract from the commercial register of the applicant company.

 

Sound trademarks will be examined in the same manner as traditional trademark applications and will be subject to trademark law of Bahrain no. 11 of 2006 concerning standard trademarks.  A modified trademark application format has been created for the purpose of filing sound trademarks.

On examination and acceptance of sound trademarks the mark will be published in the Official Gazette with the musical composition printed in the space specified for the traditional trademark print with an indication that any interested party might resort to the Directorate of Industrial Property for obtaining a copy of the compact disk for opposition purposes.  A registration certificate of the sound mark will be due for issuance upon expiry of the opposition term.

A sound trademark will be dealt with as a traditional trademarks as to official fees and procedures of registration in accordance with the Bahraini Trademarks Law no. 11 of 2006.

Should you need any information or clarification of the above, please do not hesitate to contact us.  In the meantime, we assure you for best attention and high quality services, and we remain with best regards,