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,

Patent requirements:

A power of attorney with an Apostille certification.

An extract from the Commercial Register or from the Memorandum of Association if the applicant is a company, with an Apostille certification.

One copy of the English specification and claims together with its Arabic translation.

One set of the drawings relating to the invention, if any.

An abstract of the invention of no more than 200 words, together with the best explanatory diagram.

A deed of assignment signed by the inventor and the applicant and duly legalized up to an Arab consulate, if the applicant is not the inventor.

A certified copy of the application giving the filing date, number and country if the application is to be filed with a priority claim.

A patent application can be filed with a simple copy of the power of attorney signed and sealed with the corporate stamp of the applicant company provided that the original legalized copy should be submitted with three months from the date of filing the patent application and simple copies of documents under 2 and 5.

Please note that the documents in items (3, 4 and 5) mentioned above should be submitted to the Patent Office on the filing date of the application, while documents in items [2, 6 & 7 can be submitted within 90 days (strictly non-extendible) from the filing date of the patent application.

Assignment Applications:

A Power of Attorney signed by the assignee company, with an Apostille certification.

Deed of assignment executed by both parties with an Apostille certification.

Registered User/License Agreement Applications:

A Power of Attorney signed by the licensee company, with an Apostille certification.

License agreement executed by both parties and duly legalized up to an Arab consulate.

Change of Name/Address Applications:

A Power of Attorney signed by the new name and address company, with an Apostille certification.

A certificate proving the change of name or address issued by a competent authority of the applicant’s domicile.

Remarks:
The currently applicable Patents and Utility Models law in Bahrain is Law no. 1 of 2004, which was promulgated on January 29, 2004. On May 8, 2006, Ministerial Resolution no. 54/2006 regarding the implementing regulations was issued. The Patent Office started accepting patent applications as of May 11, 2006.

On May 28, 2006, Law No. 14/2006 amending some articles of Law no. 1/2004 concerning Patents and Utility Models was issued in order to comply with the provisions of the Patent Law Treaty and Patent Cooperation Treaty which entered into force in the Kingdom on April 28, 2005. This law became effective as of June 01, 2006.

As for Patents and Utility Models granted since the year 1986 (that is, before the promulgation of Law no. 1 of 2004), they will be treated as if granted under the new Law and will therefore be governed by its provisions. As such, the remaining protection term of the said patents will be calculated based on the 20 year protection period as defined by the law. Furthermore, the annuities of the said patents will apply on the remaining protection period and are payable starting from May 8, 2006, the date of issuance of the regulations implementing Law no. 1/2004.

Opposition:
Patent applications accepted by the Registrar are published in the Official Gazette. Oppositions may be filed within 60 days from publication date.

Search
It is possible for patent applications and granted patents published in the Official Gazette to be searched by title, patentee name, subject matter, and patent number.

Examination
As to form, novelty and industrial applicability.

Annuities
A maintenance fee is due annually on the anniversary of the date of grant. There is a 6-month grace period for late payment with a surcharge.

Protection Term

The term of protection of Patents is 20 years from filing date or from priority date if priority is claimed.

Compulsory License

A patent has to be worked. If the patent is not being fully exploited by the patentee within 3 years from the date of grant, then the patent will be subject to compulsory licensing under the provisions of the law.

Novelty Requirements

Absolute novelty is required. However, disclosure of the invention in an official or officially recognized national/international exhibition and/or disclosure of the invention without the knowledge or consent of the inventor shall not be taken into consideration if occurred within the 12-months preceding the filing date of the patent application.

Special Protection Rights:

Patents of Addition.

Extensions:
Patent extensions are provided to compensate for unreasonable delays that occur in granting the patent. Unreasonable delays include the issuance of the patent more than four years from the date of filing of the application. Furthermore, with respect to any pharmaceutical product that is subject to a patent, an extension of the patent term is available to compensate the patent owner for unreasonable reduction of the effective patent term as a result of the marketing approval process.

A design registration in Bahrain is valid for 10 years from the filing date renewable for one term of 5 years each (15 years in total). Issuance of the registration certificate in Bahrain stipulates the existence of a home registration or any other foreign registration of the design. The specifications shall be exactly as shown in the basic registration. It can be either in the form of drawings or photographs and should show at least three views of the design.

Applications are examined as to form, novelty and industrial applicability. A maintenance fee is due annually on the anniversary of the date of grant. There is a 6-month grace period for late payment which is subject to a surcharge. Multiple-figure applications are now admissible with up to 50 figures per application.

The international specification of designs is not followed and no novelty requirements are required.

Design applications accepted by the Registrar are published in the Official Gazette. There is a 30-day period open for filing an opposition by any interested party

Design Requirements:

A signed Power of Attorney, with an Apostille certification.

A certified copy of Home Registration or any foreign registration.

3 copies of the drawing of design.

Summary description of the design.

A copy of priority document, if priority is claimed, certified.

A design application can be filed with a simple copy of the power of attorney signed and sealed with the official stamp of the applicant company provided that the original legalized copy should be submitted with three months from the date of filing the design application and simple copies of documents under 2 and 5.

Domain names registration

Filing Requirements

Domain Name Applications

An application form which can be submitted by mail, email or fax.
A letter requesting the domain name registration. (The letter should be on official letterhead and submitted by mail or fax).
A signed Power of Attorney, with an Apostille certification.

FILING REQUIREMENTS

Copyright Applications

1. A Power of Attorney legalized up to the Bahraini Consulate.

2. Three copies of the work.

3. A legalized copy of the deed of assignment, if the applicant is not the author.

REGISTRATION AND TIME FRAME

The approximate time frame for completing the registration process is 4 to 6 weeks.