Introduction

July 1 2016 marked the publication of the Gulf Cooperation Council (GCC) Trademark Law and its implementing regulations in the Saudi Official Gazette. Although an enforcement date is yet to be set, publication in the Official Gazette brings Saudi Arabia one step closer to enacting the law and its implementing regulations, and reports indicate that implementation will take place within three months.

This will make Saudi Arabia the third GCC member state to implement the GCC Trademark Law; Kuwait and Bahrain implemented the new law and its implementing regulations in December 2015 and May 2016, respectively (for further details please see "Start of a new era – GCC Trademark Law implemented in Kuwait").

Changes to official fees

Although the GCC Trademark Law is a unified law, each member state is free to fix its own official fees.

Kuwait and Bahrain each imposed a substantial increase in official fees when they implemented the GCC Trademark Law:

  • Kuwait increased the official fees for registering a trademark by approximately 1,200% to Kd310 ($1,035); and
  • Bahrain increased the official fees for registering a trademark by approximately 400% to Bd650 ($1,722).

In contrast, the implementing regulations in Saudi Arabia include a 7% reduction in the official fees for registering a trademark – from Sr7,000 ($1,865) to Sr6,500 ($1,735). These fees remain among the highest in the Middle East and globally, and so any reduction will likely be welcomed by brand owners.

The implementing regulations published in Saudi Arabia also indicate that new official fees will be introduced, while other existing fees are to be increased. For example, the implementing regulations include the following official fees that do not apply under the existing Saudi Trademark Law:

  • filing an opposition – Sr2,000 ($535); and
  • appealing the rejection of a trademark application – Sr1,000 ($270).

The official fee for trademark searches remains unchanged at Sr1,000 ($270), while the official fee for renewals will increase from Sr6,000 ($1,600) to Sr6,500 ($1,735).

Overall, unlike Kuwait and Bahrain, the fee changes in Saudi Arabia are something of a mixed bag, with some fees increasing, some decreasing and others remaining unchanged.

Legislative background and existing status

The GCC Trademark Law is a unifying law which seeks to introduce a common framework for the protection of trademarks across the six GCC member states (ie, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates). Important provisions in the GCC Trademark Law regarding the prosecution of trademarks include:

  • a common definition of 'trademark', which includes certain non-traditional trademarks, such as three-dimensional, sound and smell marks;
  • standardised filing requirements, with the supporting documents comprising:
    • a notarised and legalised power of attorney;
    • a copy of the applicant's certificate of incorporation or commercial licence; and
    • a legal translation of the trademark (for any words which are not in Arabic);
  • faster application examination times (to be completed within 90 days);
  • a standardised 60-day opposition period; and
  • a standardised six-month grace period for late renewals.

By way of a Cabinet resolution published in May 2014, Saudi Arabia confirmed that it had agreed to ratify the GCC Trademark Law and that a royal decree had been drafted in this regard. However, as yet, no royal decree has been published and the law is not yet in force.

The publication of the GCC Trademark 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 – for example, the proposed official fees could be amended when the law is enacted, which will be confirmed only at the time of implementation.

Status of law in other GCC member states

The position regarding Oman, Qatar and the United Arab Emirates remains unchanged.

In Qatar, the implementing regulations are yet to be published. Once published, the GCC Trademark Law can come into force.

In Oman and the United Arab Emirates, no legislation has been published to implement the GCC Trademark Law in its present form.

It remains to be seen how or when the GCC Trademark Law will be implemented in these member states.

For further information on this topic please contact Rob Deans or James Dunne at Clyde & Co by telephone (+971 4384 4000) or email (rob.deans@clydeco.ae or james.dunne@clydeco.com). The Clyde & Co website can be accessed at www.clydeco.com.

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