1 July 2016 marked the publication of the GCC Trade Mark Law and its Implementing Regulations in the Saudi Arabian Official Gazette. The Official Gazette did not fix a date for the GCC Trade Mark Law and Implementing Regulations to come into force. However, this publication appears to bring Saudi Arabia one step closer to implementing the new Law and Regulations, and separate reports indicate that implementation will take place within three months.
This will make Saudi Arabia the third member state of the Gulf Cooperation Council (GCC) to implement the GCC Trade Mark Law, with Kuwait and Bahrain having implemented the new Law and Regulations in December 2015 and May 2016 respectively.
Changes in official fees
Although the GCC Trade Mark Law is a unified law, each member state is free to fix its own official fees.
Kuwait and Bahrain each imposed a very substantial increase in official fees when they implemented the GCC Trade Mark Law. The official fees for registering a trade mark in Kuwait increased by approximately 1,200% to KWD 310 (USD 1,035), and the official fees in Bahrain increased by approximately 400% to BHD 650 (USD1,722).
In contrast, the Implementing Regulations published in Saudi Arabia show a slight decrease (of 7%) in the official fees for registering a trade mark – from SAR 7,000 (USD 1,865) to SAR 6,500 (USD 1,735). These official fees are still amongst the highest in the Middle East and globally. However, any reduction is likely to be welcomed by brand owners.
The Implementing Regulations published in Saudi Arabia also indicate that some new official fees are set to be introduced, with other fees set to rise. For example, the Implementing Regulations include the following official fees, which do not apply under the current Saudi Trade Mark Law:
- Filing an opposition - SAR 2,000 (USD 535); and
- Appealing against the rejection of a trade mark application – SAR 1,000 (USD 270).
In addition, the official fees for trade mark searches are set to remain unchanged at SAR 1,000 (USD 270) and the official fees for renewals are set to increase from SAR 6,000 (USD 1,600) to SAR 6,500 (USD 1,735).
Overall, unlike Kuwait and Bahrain, this is somewhat of a mixed bag, with some fees increasing, some decreasing and others remaining unchanged.
Legislative background and current status
The GCC Trade Mark Law is a unifying law which seeks to introduce a common framework for the protection of trade marks across the six GCC member states of Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE. Important provisions of the GCC Trade Mark Law for the prosecution of trade marks include the following:
- A common definition of a trade mark, which includes certain ‘non-traditional’ trade marks, such as three-dimensional trade marks together with sound and smell marks;
- Standardised filing requirements, with the supporting documents comprising the following:
- A notarised and legalised Power of Attorney;
- A copy of a Certificate of Incorporation or Commercial Licence for the applicant; and
- A legal translation of the trade mark, for any words which are not in Arabic.
- Faster examination times for applications (to be completed within 90 days);
- Standardised opposition period of 60 days; and
- Grace period for late renewals standardised at six months.
By way of a Cabinet Resolution published in May 2014, Saudi Arabia confirmed agreement to ratify the GCC Trade Mark Law and that a Royal Decree had been drafted in this regard. However, as yet, no Royal Decree has been published and, as it stands, the GCC Trade Mark Law is not in force in Saudi Arabia.
The publication of the GCC Trade Mark Law and Implementing Regulations indicates that Saudi Arabia intends to enact the new Law in the form in which it has been published. However, this is not guaranteed and, for example, it is possible that there will be changes to the official fees when the Law is enacted – this will only be confirmed at the time of implementation.
Regarding the remaining member states of Oman, Qatar and the UAE, the position remains unchanged:
Qatar: We are waiting for the Implementing Regulations to be published, at which stage the GCC Trade Mark Law can come into force; and
Oman and the UAE: We have not yet seen any legislation published in order to implement the GCC Trade Mark Law in its current form.
It therefore remains to be seen how or when the GCC Trade Mark Law will be implemented in these member states.