In May 2015, the Gulf Cooperation Council (GCC) Trade Cooperation Committee issued the Implementing Regulations of the GCC Trade Mark Law. Once established, the GCC Trade Mark law will unify the six GCC states, specifically, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates by replacing local trade mark laws in those countries.
Discussions around a unified trade mark law in the GCC first commenced in 2006. The model follows that of the GCC regional Patent Office, which was established by the GCC in 1998. While the new regime unifies the local laws in the six GCC states, the Trade Mark Offices of individual GCC countries will continue to be the receiving office and will register trade marks on a national criteria basis. Registering a trade mark over the six GCC countries will still require six separate national trade mark applications. In order to establish the GCC Trade Mark Law, two requirements must be met: (a) every country must consent by decree or a law; (b) it must be published in an official local gazette to become effective six months from the date of issuance of the implementing regulations.
These requirements have been met in Bahrain, Kuwait and Qatar making the law effective as of 20 December 2015. There is no date yet for the remaining countries, however, it is highly likely that they too will adopt the new law as steps have been taken to start implementation.
The GCC Trade Mark Law:
- The definition of a trade mark will now include single colours, combinations of colours, sounds and smell trade marks.
- A previous foreign application can be the basis for a claim of priority.
- The rejection of a trade mark can be due to similar or confusingly similar goods/services even where the previous application was filed under a different class.
- Certified translations of a foreign word or phrase must be accompanied by an explanation of its pronunciation in Arabic
- A definition of a well-known trade mark is determined as any trade mark that holds a reputation known beyond the scope of its home country’s border. Additionally, the duration, number of registrations and use of a well-known trade mark is now clearer. The translation of a well-known trade mark is also now protected. Well known-trade marks within GCC states are protected regardless of registration.
- Non-renewal of a trade mark within six months after the date of expiration will effect the cancellation of the registration. Such trade marks cannot be filed for the next three years. A trade mark registration lasts ten years from the date it was filed.
- There is now criteria for multiclass applications.
- In order to file for an application, there must be four copies of the trade mark, a legalised and translated Power of Attorney, proof of business practice and translation of the trade mark if it is in English. Sound trade marks must be submitted in musical notation or a written description. Smell trade marks must also be submitted in the form of a written description.
- Applications can take up to 90 days to undergo formalities examination. The applicant will then have a further 90 days from the date of notification of formal examination to respond to TMO office requests. Failure to do so will result in the cancellation of the application.
- There is a 60 day appeal period following the rejection of an application. The appellant will be notified of the appeal decision within 30 days of the decision being issued. The appellant can appeal the decision of the appeal committee to the court within 60 days of notification.
- Each country can impose its own official fees. It is likely that there will be price increases in Kuwait, Oman and Bahrain.
- Trade mark publications will be issued by the TMO office responsible for the application.
- Penalties include fines up to $270,000 and imprisonment of up to five years.
It will be interesting to watch this new unified trade mark model unfold in the GCC states.
This article was written with assistance from Mariyam Sheeneez.