After almost 30 years of waiting, the Gulf Cooperation Council (GCC) Trademark Law was implemented and is now in force in one of the GCC member states – Kuwait. Further news is anticipated from the other GCC states of Bahrain, Oman, Qatar, Saudi Arabia and the United Arab Emirates.
The implementation of the GCC Trademark Law in Kuwait was triggered by the publication of Ministerial Decision 500/2015, which approved the implementing regulations for Law 13/2015 and which in turn ratified the GCC Trademark Law. Ministerial Decision 500/2015 was published on December 27 2015 and the implementing regulations came into force in Kuwait on December 28 2015.
Until now, the implementing regulations to the GCC Trademark Law were not publically available. These regulations will affect all GCC states including, most immediately, Kuwait. Some of the key changes under the implementing regulations are outlined below.
Increase in official fees
Ministerial Decision 500/2015 increases the official fees for trademark applications (from filing to registration) in Kuwait from approximately $80 to $1,035 (from Kd24 to Kd310). This is part of a larger increase in official fees for a number of activities before the Kuwait Trademark Office, including the fees for renewals, oppositions and assignments.
Change in supporting documents
The documents required to support a trademark application in Kuwait under the implementing regulations are:
- a notarised and legalised power of attorney;
- a copy of a certificate of incorporation or a commercial licence for the applicant; and
- a legal translation of the trademark, if it includes any non-Arabic words.
In relation to the first of these requirements, when filing a trademark application in a GCC country many brand owners will be accustomed to submitting a power of attorney legalised for use in the country in which the application is being filed. However, the implementing regulations do not specify whether the power of attorney must be legalised for use in the specific country where the application is being filed.
This may potentially be interpreted as allowing applicants to rely on a power of attorney which has been legalised for use in any GCC country (rather than in the specific country where the application is being filed). This is important for brand owners seeking to file applications in more than one GCC country: if a single power of attorney can be used in any GCC country, this could result in considerable cost savings.
The second and third requirements are new for Kuwait. Previously, it was unnecessary to submit a copy of the applicant's certificate of incorporation or commercial licence. Further, until now, applicants could prepare their own translation of a non-Arabic language trademark.
In addition, the implementing regulations require all supporting documents to be submitted when the application is filed.
Faster examination times
It typically took between six and eight months for the Kuwait Trademark Office to issue examination reports. The implementing regulations now require an initial examination report to be issued within 90 days of the filing date, which should result in applications being processed more quickly than was previously the case.
Longer opposition period
The opposition deadline has been increased from 30 days to 60 days in Kuwait. However, the deadline still cannot be extended.
Longer grace period for late renewals
This has been increased from three months to six months in Kuwait.
The issues that the implementing regulations do not address are equally important.
Absence of procedure for unified interpretation of GCC Trademark Law
The GCC Trademark Law is structured on the basis that the same law, with the same provisions, will be enacted in each member state, to ensure that a unified law applies across all six GCC member states. Now that the GCC Trademark Law has been enacted in Kuwait, the Kuwait Trademark Office and the Kuwaiti courts can begin to interpret and apply the law.
Once the GCC Trademark Law is enacted in the other GCC member states, the trademark offices and courts in those member states will also have the power to interpret and apply the law in their respective countries. This raises a concern that the law will be subject to different interpretations in each GCC state.
This potential problem appears to be anticipated by the GCC Trademark Law, as it provides that the GCC Trade Cooperation Committee has the power to interpret the law. However, there is nothing in the law or the implementing regulations to suggest how this might work in practice.
In the absence of any process for bringing matters of interpretation to the GCC Trade Cooperation Committee, it is difficult to see how a unified position under the GCC Trademark Law will be maintained across all six member states.
Absence of local address for service to be maintained
The implementing regulations to the GCC Trademark Law still require an applicant to provide the relevant trademark office with its address. However, overseas applicants are not required to provide a local address for service (eg, the address of the applicant's filing agent).
As a result, if an action is brought against the owner of a trademark registration (eg, an action before the court to cancel a trademark registration), it is necessary to effect service directly on the owner. Where the owner's address is outside the country, this means effecting service through diplomatic channels which can be a lengthy and expensive process.
The points set out above summarise the key changes being introduced by the implementing regulations to the GCC Trademark Law. The law itself introduces a host of changes, from the definition of a 'trademark' to what constitutes trademark infringement (for further details please see "GCC Trademark Law – moving closer in different ways").
The GCC Supreme Council issued a resolution in December 2012 requiring all member states to implement the GCC Trademark Law into their respective national laws within six months from the date on which the implementing regulations were approved by the GCC Trade Cooperation Committee.
The publication of the implementing regulations in Kuwait indicates that they have been approved. If this is the case, the GCC Trademark Law should come into force in the other GCC member states by early July 2016.
However, the existing position in the other GCC member states is as follows:
- Bahrain and Qatar – awaiting publication of the implementing regulations. The GCC Trademark Law will come into force automatically six months after the implementing regulations have been published.
- Saudi Arabia – awaiting further legislation to be passed in order to bring the GCC Trademark Law into force and to repeal the existing Saudi Trademark Law. In May 2014 the Saudi Cabinet agreed to ratify the GCC Trademark Law. However, this ratification has not yet taken place and legislation is still required to bring the law into force.
- Oman and the United Arab Emirates – no legislation has been published with regard to the 2013 version of the GCC Trademark Law. It therefore remains to be seen how or when the GCC Trademark Law will be implemented in these member states.
It will be interesting to see what steps are taken in each of these GCC member states over the coming months, and the speed at which the GCC Trademark Law comes into force across the GCC region.
For further information on this topic please contact Rob Deans or Saba Al Sultani at Clyde & Co by telephone (+971 4384 4000) or email (firstname.lastname@example.org or email@example.com). The Clyde & Co website can be accessed at www.clydeco.com.
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