News & insights

GCC: First to File Countries

September 4, 2015

The first-to-file concept is given considerable weight in the Gulf Cooperation Council countries. Although common law rights are, in principle, recognized in GCC countries, registration of marks is highly recommended and the mere registration can be a basis to sue an infringer, although the risks of a non-use cancellation action must be factored-in in any filing strategy. However, cancellation for non-use in most countries of the GCC region requires Court actions rather than administrative procedures, which can greatly increase the time, costs and even predictability of such proceedings. Another issue is related to the burden of proof where, in most GCC countries, the burden of proof of non-use will usually be on the plaintiff. This renders non-use cancellation actions expensive, since a negative must be proven, namely, that a mark is not in use.

Protection of trademarks in the economically growing GCC region is an important, yet challenging, process that requires special consideration and handling. There is no pan-Arab registration, similar to the Community trademark, which relatively complicates the registration procedures. Although a GCC trademark law was introduced back in 1987—which is not in force yet—the law is not expected to offer a unified filing system as the case is with the GCC Patent Law. Trademark applications would still have to be filed separately in each GCC member state for protection. Therefore, trademark owners must be able and ready to adopt a model that incorporates both legal as well as regulatory approaches in order to arrive at a solid trademark protection strategy.

The current trademark laws in the GCC countries are harmonized to a large extent.  In almost all the articles that define the absolute grounds of registration, the directives are equivalent in content and have to be interpreted in the same way, while the minor differences are in the scope only. In Saudi Arabia, for example, the scope is limited to what basically does not violate the Shari’a law. The difficulty arises at the time of substantive examination, where practice differs among the countries.

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