The concept of a harmonized law across the six GCC countries (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE) has been around since the 1980s.
The GCC Trademark Law was published in 2006 and revised in 2013, but implementing regulations are required in order to enact it. We understand that the regulations will be published in 2016 and the Law will then be passed at a national level. This is good news for international brand owners who currently face inconsistencies in trademark rules on registrability, registration and enforcement across the GCC. This article highlights some key features of the Law and its implications for anyone protecting and exploiting marks in the region.
1. No unitary registration
The Law contains a single set of provisions which will apply across all GCC countries, but it does not envisage a single registration or enforcement system. A “GCC mark” will still require six separate, national applications.
2. Multi-class filings
Currently, none of the GCC member states allow multi-class applications. However, the 2013 re-draft of the Law suggests this will be possible. This would be a major change in approach – the mono-class system means that GCC countries are among the most expensive in the world in which to register a trademark – and a welcome development.
3. Well-known marks
The Law prohibits the registration of a “reproduction, an imitation, or a translation of a well-known mark or an essential part thereof” for identical/similar products. Registration is also prohibited for dissimilar products where use of the mark implies a connection with the owner of the well-known mark which might damage the owner’s interests.
4. Remedies for infringement
The Law includes significant penalties for trademark infringement and also anticipates the availability of remedies that are not routinely available in every GCC state at the moment. For example, claimants may now seek an account of profits from the infringer who may be ordered by the court to disclose the identity of any third parties involved in the infringement. Rights holders may also apply for an injunction to “stop or prevent” infringement, implying that interim relief may be available.
The Law is likely to lead to a more efficient and streamlined system of trademark prosecution and enforcement in the GCC. There remains considerable uncertainty over the interpretation and practical application of the Law, and in particular, how uniformity across member states will be achieved in the absence of a central court or other judicial body to ensure consistent national interpretation. It is hoped that this will be clarified as and when the regulations are published, and that 2016 will mark the year in which harmonized GCC Trademark Law becomes a reality.