GCC Trade Mark Law and Implementing Regulations

02 Dec 2015

Prepared by: Motasem Abu Ghazaleh
Abu-Ghazaleh Intellectual property (AGIP)

GCC countries were waiting for few years now, the issuance of the GCC Implementing Regulations which was a must for getting the GCC Trade Mark Law into action specially that this law is to enter into force six months after the issuance of the Implementing Regulations.

The Commercial Cooperation Committee (comprising the Trade Ministers of each GCC member state) who are the concerned committee to issue the Implementing Regulations have met in Doha on May 29, 2015 to discuss and approve the Implementing Regulations. The decision was that the Law, together with its Regulations, will come into total effect as of December 21, 2015, but this is not for all countries as we will see later in this article.

This is a major IP milestone, not only GCC countries, for also Arab countries, the Middle East and all other Regional Territories whom would maybe see in the future in this inventive model, a platform to follow in their Regions. It will be a big challenge for the Trade Mark Offices, great experience for Trademark practitioners and of great protection to brand owners.


Trade Mark Law and Implementing Regulations

The Gulf Cooperation Council (GCC) 


On May 25th, 1981 the leaders of the United Arab Emirates, Kingdom of Bahrain, Kingdom of Saudi Arabia, Sultanate of Oman, State of Qatar and State of Kuwait reached a cooperative framework joining the six states to effect coordination, integration and inter-connection among the Member States in all fields in order to achieve unity. 

The decision was an institutional embodiment of a historical, social and cultural reality. Deep religious and cultural ties link the six states, and strong kin relations prevail among their citizens. 

It started when they first established a Regional Patent Office for the GCC countries called “GCC Patent Office”. The GCC Patent Regulations and the Statute of the GCC Patent Office have been granted approval by the Supreme Council during the 13th summit meeting of the heads of Member States, which was held in Abu Dhabi September 21-22, 1992. As of October 3, 1998, the GCC Patent Office started receiving patent applications. 

The GCC states realized the importance of taking the IP protection a step further by having a unified Trade Mark Law which was approved by the leaders of the six-member GCC states during the 27th session of the GCC Supreme Council Summit which took place in Riyadh, December 9-10, 2006. 

Moreover, the law needed to be approved locally in every country by a decree or a law, then to be published in the local official gazette of each member state to become effective after six months from the date of issuance of the Implementing Regulations, member states did the following:

1. Saudi Arabia: Saudi Royal Decree No. M/51 dated 26/07/1435 H (26 April 2014) approving the Saudi Council of Ministers decision No. 306 dated 20/07/1435 H (April 20, 2014). As per this Decree, the law will be published within 30 days from the date of issuance of the Implementing regulation and will get into force after 90 days of its publication in the Official Gazette.

2. Qatar: His Highness Sheikh Tamim bin Hamad Al Thani, the Emir of Qatar issued the Decree No. 7 of 2014 approving the GCC Trade Mark Law which was published in June 30, 2014.

3. Bahrain: His Majesty King Hamad bin Isa Al-Khalifa issued the decision No. 6 of 2014 approving the unified GCC Trade Mark Law which was published in the Official Gazette No. 3145 dated February 27, 2014.

4. Kuwait: Kuwaiti Prince Sheikh Subah Al Ahmad Al Jaber Al Sabah issued Law No. 13 of 2015 and published in official gazette No. 1228 dated March 22, 2015

5. United Arab Emirates: Until today, the UAE did not issue or approve or publish any law implementing the 2013 version of the GCC Trade Mark Law. However, just for the completeness, His Highness Sheikh Khalifa Bin Zayed Al Nahyan, President of the United Arab Emirates (UAE), issued on July 25, 2007, Federal Decree No. 52 approving the original version of the Unified GCC Trade Mark Law. 

6. Oman: Oman did not issue or approve or publish any law for the 2013 new version of the GCC Trade Mark Law but it has been verbally mentioned that they will start implementing the new law and regulations as of December 20, 2015. It is not clear how Oman will implement but it will sure be clear very soon. 

We are yet to know how the UAE and Oman will issue the law and use the new implementing regulation to bring the GCC Trade Mark Law into effect.

As mentioned above, the GCC Trade Mark Law is expected to enter into force six months after the issuance of the Implementing Regulations, the Commercial Cooperation Committee (comprising the Trade Ministers of each GCC member state) who are the concerned committee to issue the Implementing Regulations have met in Doha on May 29, 2015 to discuss and approve the Implementing Regulations. The decision was that the Law, together with its Regulations, will come into total effect as of December 21, 2015, but this is not for all countries as we will see later.

However, this date is for the “good-to-go” countries; that is Kuwait, Bahrain and Qatar for now, the timing of the rest of the countries will be different and will depend on local judicial system, local modifications of the law, legislative mechanism…etc. But there is no doubt that all states will eventually adopt the new law.

Many articles and presentations have discussed and explained the new GCC Trade Mark Law and I shall not repeat the same, however, there are a few more points from my readings that I would like to highlight:

1. This GCC Trade Mark Law will replace the local Trade Mark Laws of each of the GCC member states and create a unified implementing regulations for trademark prosecution and enforcement in all states while will it not offer a unified filing system neither a single receiving office.

2. The definition of a trademark has been dramatically extended to include, single colors, combination of colors, sound and smell marks.

3. Rejection may be based on similar or confusingly similar goods/services even if the previous application was filed under a different class.

4. A great enhancement to the protection of well-known trademarks mentioned in many articles of the new law most importantly the definition of well-known trademark is indicated, any trademark that holds a reputation exceeds and goes beyond the trademark home-country’s border, is considered a well know trademark, moreover, now we have protection for the translation of the well-known trademark.

A few more helpful criteria given to well-known trademark such as the duration and the number of registrations or use of the mark and the value associated with the mark

5. The registration will be cancelled from the Register in case of non-renewal after six month of the expiration.

6. If the marks is cancelled from the Register, it is not possible to file the same mark by others for the coming three years. 

7. Penalties include a maximum of five years’ imprisonment and payment of fines up to US $270,000.

Before the issuance of the Implementing Regulation, all IP professionals were puzzled on how to best answer tens of questions related to the implementation and impact of the new GCC Trade Mark Law on local practice and procedures that all brand owners are now much ACCUSTOMED to. Having in hand the Regulations does answer almost all these questions and, it is very helpful and critical to have such a document finally in hand for a total understanding and comprehension of the new prosecution and enforcement platform in the GCC countries. It goes without saying that it needs a few years from now to have these laws and regulations implemented completely in all member states, but I’m sure once this happens, trademark protection will be in a much better position than it is now. From the new Implementing Regulations, some of the immediate notes and observations that represent milestones in these countries are as follows, while more observations will follow with practice:

1. An applicant can claim only one class in every trademark application he files, however, it is allowed to have multi class coverage in the same application in case the competent department approves this and that it is in compliance with the International Classification of Goods and Services (NICE classification).

This gives total freedom to member states to choose, now or later, always or temporary, to all or to specific cases, single class or multi class applications.

2. The requirements for filing are: Four prints of the marks, legalized and translated Power of Attorney, any proof of business practice and translation of the mark if it is in the English language with explanation how it will be pronounced.

It would be great to finally see a trade mark office that requests pronunciation of the mark as part of the application requirements. It is an imperative and long waited internal control point for the protection of a mark’s actual pronunciation.

3. For sound marks, they should be applied for in the form of musical notes or written description.

4. For smell marks, they should be applied for in the form of a written description.

5. Trade Mark Office should conduct formal examination of all applications within 90 days of filing by either accepting or rejecting the application in terms of its formality. Notification can also be in electronic means. The applicant has another 90 days to complete missing information, documents or explanation.

6. There will be an appeal committee formed by the responsible Minister that will receive appeal against the rejection of the applications within 60 days from notification, then the committee will examine the appeal and take a decision, this decision will be delivered to the appellant within 30 days of issuing this decision. The Appellant can appeal the Committee’s decision to the court within 60 days of notification.

7. One of the important questions was how the publication will take place, will it be Official Gazette or Trade Mark Journal or Newspaper or a combination of them, Article 11 indicated that the department in-charge will either issue or nominate a special publication for trademarks.

8. As for the fees, it is issued with the Implementing Regulations and Article 40 gave every country the option to impose any official fees different than those in the Regulations and as per what they see best.

What we may witness during the coming few months is maybe some change in the official fees, particularly increases and most likely in Kuwait, Oman and Bahrain.

Member states will also need to decide where to publish trademarks, how to establish Committee and enforcement issues is a big challenge, but we are sure that these Offices will be up to the challenge and will eventually succeed. 

We have an exciting and remarkable IP development taking place in this part of the world and a new model of protection that is created in this region hoping to see it coming to reality and be part of it.



 



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