Saudi Arabia, Bahrain, Kuwait, Qatar, the United Arab Emirates and Oman are the member countries of the Gulf Cooperation Council (“GCC”). The purpose of GCC is to achieve unity among its members and in May 2015, the GCC Trade Cooperation Committee issued the Implementing Regulations of the GCC Trade Mark Law.
Roll out of the updated trademark laws has been in the pipeline since 2013 and discussions have been ongoing since 2006 with the goal of enabling trademark holders to protect their rights in a unified way within the GCC and avoid the challenges of having to deal with different laws and levels of protection between member states.
It should be noted however that the GCC Trade Mark Law is a unifying law. It is not a centralised filing system across the member countries.
What changes will the new laws implement?
The new regulations introduce a number of key changes to trademark holders’ rights and in the case of some jurisdictions enhance the level of protection right holders previously enjoyed.
Expanded scope of what constitutes a mark: Both single colours and colour combinations, sounds and smells may now be protected as trademarks. Registration of non-traditional trademarks was formerly not possible in countries such as Saudi Arabia.
Recordation of trademark license not mandatory: The new laws now make it clear that trade mark licences do not require recordation in order to be recognised and enforceable against third parties. For many years conflicting views were adopted by different GCC states.
Multi-class applications: Multi-class trademark applications are permitted under the new laws, meaning trademark registrations may cover more than a single class. No former laws of GCC member countries enabled this.
Harsher infringement penalties: Maximum penalties of 3 years imprisonment and/or fines of SAR 1 million will apply to counterfeiting and affixing counterfeit marks to products. Lesser penalties of 12 months imprisonment and/or fines of SAR 100,000 will apply for knowingly dealing in counterfeit goods.
New filing fees: While the new fees have not yet been released, they are not expected to be cheap. GCC members already had some of the highest filing fees in the world and local filing fees have increased further in the past 12 months.
Changes to time limits: Time periods specified in the trademark registration process will now be unified. For example the new laws prescribe a non-extendable opposition period of 60 days from the date of publication, and the grace period for late renewals will be 6 months across all member states
Priority claims: If you have already filed a trademark application in a country which is party to a multinational treaty to which the GCC state in which you intend to file is also a party, you may claim priority within 6 months of filing the earlier application.
Filing requirements will be standardised: No matter where they are filing, trademark applicants will now be required to lodge a notarised Power of Attorney, a copy of the certificate of incorporation/trade licence for the applicant; and a legal translation of the trade mark if it includes any non-Arabic words. However, filing is not centralised. Therefore a separate application will still need to be filed in each member country.
What’s the upshot for trademark holders?
Trademark holders will enjoy broader unified protection across the GCC, making the management of trademark portfolios simpler. On the other hand, they may lose convenient provisions that existed under the former local laws of a particular member state. The regime may also present challenges as member state courts adopt divergent methods of interpreting and implementing the laws, however the extent remains to be seen. If you have registered marks in the GCC, talk to us about how you can better protect your rights under the new provisions.