As of 12 February 2017, Qatar adopted a 45 class classification for trade marks. It has been subsequently confirmed that the 11th Edition of the Nice Classification is being used. The necessary regulation has yet to be issued but the Trade Mark Office will now accept applications in classes 43, 44 and 45. Qatar maintains a single class system.
There is still uncertainty as to how the transition to a 45 class system will proceed, however, in light of this development, brand owners may wish to review their strategies in Qatar in the following areas.
i) Services Specifications
Qatar will accept services falling in a class, even if a particular item is not specifically listed in the 11th Edition of the Nice Classification. Accordingly, brand owners may continue to draft specifications directed to specific services that may be seen to fall under the broad class heading.
ii) Clearance Searches and Watch Services
Class 42 should continue to be searched for the foreseeable future in relation to any marks to be used on class 43, 44 and 45 services. It is not clear if and when all current class 42 registrations covering class 43, 44 and 45 services will be re-categorised. This is likely to be possible on renewal, but this is not yet clear whether this will be mandatory and/or whether re-classification on renewal will allow the re-classified services to take the original date of the previous class 42 registration.
Similarly, watch services should continue to monitor publications of marks in class 42 for the foreseeable future for opposition purposes and be extended to cover classes 43, 44 and 45 as applicable.
iii) Class 42 Pending Applications
Consideration should be given to filing new applications for services falling in classes 43, 44 and 45 and currently covered in a pending class 42 application, to block any third party applications that may be filed subsequently for similar marks. Again, it is uncertain as to whether the Trade Mark Office will allow such applications to be split from current pending applications (with payment of the official fees for the new application) but retain the filing date of the underlying application. This almost certainly would not be allowed, if additional services not covered in the pending class 42 application will be added.
iv) Class 42 Registrations
It is likely that class 42 registrations will be permitted to be split upon renewal with payment of renewal fees for the additional classes, provided no additional services are sought to be added at that time. As noted above, it is not clear whether such renewals will be permitted to take the original date of the earlier registration.
For important marks, brand owners may wish to seek to split registrations prior to renewal in order to block any third party applications that may be filed for similar marks.
This note is intended as a summary and does not constitute legal advice. For further information or advice, please contact your normal Rouse contact or dubai@rouse.com.
This note has been prepared by Rouse & Co. International's MENA practice in conjunction with AraMarks IP, Qatar.
