The Gulf Cooperation Council approved the Trademark Law during the annual summit in Riyadh, Saudi Arabia on December 10, 2019.
This update follows the Council’s decision to assign the GCC Financial and Economic Committee the task to accredit and implement the necessary decisions related to the joint action in the field of customs union, including the amendments of the unified tariff, added value, selective tax, joint stock market, and combat of harmful practices in international trade.
By way of background, the GCC states, namely, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates, have been involved in the coordination of intellectual property since the late ‘80s. The GCC Trademark Law, which was issued in 2006 and revised in 2014, stipulates a set of provisions that apply uniformly across all the GCC in regards to the prosecution and enforcement of trademark rights. The GCC Trademark Law does not offer a unitary registration system, however. The Trademark Offices of each GCC country will remain as the receiving office and will register trademarks on a national basis. Registering a trademark across the six GCC countries will still require filing six separate national trademark applications.
The definition of a trademark has significantly expanded, given the adoption of the GCC Trademark Law by the member states. Article 2 of the Law includes color marks, sound marks, and smell marks as trademarks, suggesting that it will be possible to secure registrations of such marks across the GCC.
Furthermore, multiclass applications are allowed under the GCC Trademark Law. It is worth noting that in practice, however, multiclass applications are still not implemented and left entirely to the discretion of each GCC country. 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 examination process is harmonized now, with applications being examined within 90 days from the date of submission. The Trademark Office will then notify the applicant of the decision. There is a 90 day period to respond to office actions from the date of notification before the application is considered abandoned.
Other features of the GCC Trademark Law are:
- Claim of priority, based on an earlier-filed foreign application, is possible
- Trademark applications accepted by the Registrar will be published for opposition purposes. Oppositions must be filed within 60 days from publication date
- 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
- 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
- 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
- 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
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