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Unifying Trademark Laws in the GCC

Guiding Principle
The GCC Trademark Law once adopted throughout the GCC intends to create uniformity of the regional trademark laws in the Middle East. The GCC member states are discussing a unified trademark law since 2007 and appear now to be moving closer to harmonization of their trademark laws. This briefing considers the next steps in the process and the implications of the new law for businesses with brand assets in the GCC.

The GCC states, namely, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates, have been involved in the coordination of intellectual property already since the late ‘80s. The GCC Patent Regulations and the Statute of the GCC Patent Office were approved in 1992 and the GCC Patent Office commenced operations in 1998, and granted its first patent in 2002.

A. The new legislation of the GCC Trademark Law
Although the concept of a harmonised trademark law across the GCC is hardly new, it was only in 2013, following the publication of a revised draft of a unified law governing trademarks across the GCC (“Trademark Law”), that further steps were undertaken with a view to bringing the law into force. The GCC’s highest decision-making body, the Supreme Council, has issued a resolution requiring each member state to implement the Trademark Law into their respective national laws within 6 months of the publication of the Implementing Regulations. We now appear to be reaching the final stage of this process because the Implementing Regulations are expected to be published in 2016.

Furthermore, multiclass applications are allowed under the GCC Trademark Law, which constitutes a major shift in trademark practices in the once single class application countries in the GCC. The registration requirements have also been updated and now include a provision for foreign words, which entails providing certified translations of the word or phrase and an indication on how to pronounce it in Arabic, as per Article 4 of the Implementing Regulations.

The GCC Trademark Law is a unifying, not a unitary law. Unlike (for example) the EUTM, which allows unitary registration and enforcement across all member countries, the Trademark Law sets out a single set of provisions that will apply uniformly across all the GCC states. The Trademark Office of each GCC state will continue to receive applications and register trademarks on a national basis. Registering a trademark across the six GCC countries will still require filing six separate national trademark applications. However, the official fees are not expected to be unified and will vary depending on the individual overhead costs of the different TMOs involved. Also, Saudi Arabia, Kuwait, and UAE have considerably increased their official fees over the past few months with Bahrain and Qatar expected to follow suit.

The Trademark Law will contain improved provisions relating to well-known marks, exclusivity and parallel imports. New penalties for trademark infringement are included and the law anticipates the availability of remedies that are not routinely available in every GCC state now. For example, claimants may 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.

B. The features of the GCC Trademark Law

  1. Trademark applications accepted by the Registrar will be published for opposition purposes. Oppositions must be filed within 60 days from publication date;
  2. The Law recognizes famous trademarks that are well-known in the GCC member states and shall ensure protection thereof even if the marks are not registered;
  3. Claim of priority, based on an earlier-filed foreign application, is possible;
  4. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of five consecutive years after registration;
  5. The Law gives the right to trademark owners to initiate civil and criminal actions against any infringing party. Penalties include a maximum of five year imprisonment and payment of fines of up to US $270,000;
  6. Trademark registrations are valid for 10 years from filing date and are renewable for like periods. There is a grace period of six months for late renewals.
March, 2016 Tarek Jairwdeh
Meyer-Reumann & Partners, Dubai Office
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