The new GCC Trademark Law and Implementing Regulations were published in the Saudi Official Gazette on July 1, 2016. The Law is expected to enter into force after 90 days from the publication date.
The GCC Trademark Law, unlike the GCC Patent Law, is a unifying, not a unitary law. The Law was issued in 2006 and revised in 2014. It stipulates a set of provisions that will be applied uniformly across all the GCC countries, in regards to the prosecution and enforcement of trademark rights. It does not offer a unitary registration system, however. The Trademark Offices of each GCC country will remain as the receiving office, and registering a trademark across the six GCC countries will still require filing six separate national trademark applications. Furthermore, the official fees are not expected to be unified and will vary depending on the individual overhead costs of the different TMOs involved.
The definition of a trademark has significantly expanded. 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 unconventional trademarks across 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 examination process is harmonized now, with applications being examined within 90 days from the date of submission. The TMO 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. The new Law also talks about the establishment of a Grievances Committee. Examination decisions can be appealed before this Committee before taking the case up to the Court.
The Law introduces new border measures authorizing Customs officials to seize suspected products either on an ex-officio basis or following a complaint. The Law also clearly states that the Courts shall order the destruction of products if proven to be counterfeits, and if destruction is not possible, the Courts shall not return the products back to the channels of trade or order re-exportation. There are however a number of issues that remain unclear at this stage when it comes to implementation.
Other features of the new GCC Trademark Law include:
- 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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