Introduction

Brand owners operating in the GCC frequently invest considerable effort in securing trade mark registrations for their English or other foreign-language marks across the region. What is often overlooked, however, is whether those registrations extend meaningful protection to the Arabic transliteration of the mark and whether that transliteration should itself be registered.

The scope of existing protection

Under the trade mark laws applicable across the GCC (and the UAE, which implements a separate trade mark regime under Federal Decree Law No. 36 of 2021 concerning Trade Marks), the scope of protection afforded to a registered mark is not strictly confined to the mark as registered. The traditional similarity provisions found in those laws (which assess whether a mark is likely to cause confusion with or take unfair advantage of an earlier registration) are generally capable of capturing an Arabic transliteration of a registered foreign-language mark. Where the phonetic equivalent of an English mark is rendered in Arabic script, the resulting mark may be regarded as confusingly similar to the original registration.

There is no explicit statutory provision (except in the case of well-known marks) that addresses Arabic transliterations directly in this respect. Nevertheless, it can be argued that the standard similarity framework is capable of extending protection to cover them. That said, reliance on this alone carries meaningful practical risk, and brand owners would be well advised not to treat it as a substitute for registration.

Why registered protection remains important:

Pre-empting third-party filings

Trade mark examiners across the GCC generally do not cross-check incoming applications against registrations in different scripts or languages. This means that a third party could file and obtain registration of the Arabic equivalent of an existing English mark without the examiner raising an objection. Once accepted, the third party acquires its own rights, leaving the original brand owner to challenge the registration through opposition or cancellation proceedings – a costly and uncertain route that is entirely avoidable through a timely Arabic filing.

Strengthening enforcement prospects

Customs authorities and other local enforcement bodies typically require a clear, direct correspondence between the registered mark and the sign being enforced against. Where the only registration on record is an English-script mark, authorities may be reluctant to act against infringing goods bearing an Arabic equivalent, even where the phonetic similarity is apparent. A dedicated Arabic registration removes this ambiguity and supports faster, more decisive enforcement action.

Similarly, the absence of an Arabic registration can also further complicate enforcement before the trade mark registries and courts, where some authorities may look for a directly corresponding Arabic registration before acknowledging rights in the Arabic-script sign in question. A dedicated Arabic registration strengthens the brand owner’s position across all enforcement forums.

Accounting for linguistic variations

Arabic transliterations of foreign marks are not always uniform, and the same English word can be rendered in markedly different ways in Arabic (and vice versa). A straightforward illustration of this is the word “Pen”: the letter “P” does not exist in the Arabic alphabet, and the closest equivalent is the letter “B” (ب), meaning that “PEN” could be transliterated into Arabic as “بن”. This immediately raises a practical question: is the brand owner protecting “PEN” or “BEN”? The difficulty is compounded by the fact that “بن” also carries an independent meaning in Arabic, namely coffee, introducing a conceptual dimension that further distances the Arabic rendering from the original English mark.

Without a registered Arabic transliteration, that ambiguity is left open. A sophisticated third party could seek to exploit it, arguing either that their use of “بن” is sufficiently distinct from the English registration, or conversely (where it suits them) that it is the natural and obvious equivalent.

Therefore, a registered Arabic transliteration removes room for manoeuvre, fixes the scope of the brand owner’s rights in Arabic script, and makes enforcement prospects considerably more straightforward.

Conclusion and takeaways

The registration of Arabic transliterations of foreign-language marks is not, strictly speaking, a legal requirement across the GCC (subject to any additional specific requirements that may apply under laws or regulations governing particular industries or activities). Existing similarity provisions may afford a degree of residual protection. However, the practical advantages of securing a dedicated registration are significant: it pre-empts third-party filings, supports enforcement prospects and accounts for natural linguistic variations that could otherwise undermine the scope of rights.

For brand owners with significant commercial activity in the GCC, registering the Arabic transliteration of their marks is a prudent step – far less costly than the enforcement or litigation expenses that its absence may ultimately necessitate.