GCC

TRADEMARKS

OTHER FEATURES OF THE 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 6 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 5 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 5 years imprisonment and payment of fines of up to US 270,000$

WHAT YOU NEED TO KNOW

The issuance of the Implementing Regulations of the GCC Trademark Law in May 2015 by the GCC Trade Cooperation Committee beckoned a new era for a regional trademark law in the Middle East. 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 80’s. The GCC Patent Regulations and the Statute of the GCC Patent Office were approved in 1992 and the GCC Patent Office commenced operations in 1998, and granted its first patent in 2002. 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, 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 register trademarks on a national basis. Registering a trademark across the 6 GCC countries will still require filing 6 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. Furthermore, Saudi Arabia, Kuwait, and UAE have considerably increased their official fees over the past few months with Bahrain and Qatar expected to follow suit. 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, which constitutes a major shift in trademark practices in the once single class application countries in 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 days period to respond to office actions from the date of notification before the application is considered abandoned.

TREATIES AND CONVENTIONS

None

PATENTS

WHAT YOU NEED TO KNOW

Following the GCC Supreme Council’s decision on
5 January 2021, which resulted in the GCC Patent
Office’s cessation of accepting new patent filings, an
amended patent law and regulations were published
within the same year. The new law transformed the
GCC system from a unitary system – one that involved
a single application, examination, patent, and a
unified set of annuities – into a designation system.
All applications filed before 6 January 2021 remained
under the previous unitary system, even if they were
examined and granted under the new law. Such patents
may be enforced across all six GCC member countries.
The GCCPO resumed the acceptance of new
applications on 1 January 2023, under the new
designation system’s provisions.

Applicants could designate Bahrain and/or Kuwait, and
as of 1 July 2023, Qatar became an additional option
for designation. Under the new system, an application
is filed with and examined by the GCCPO. Once approved,
the application is then transferred to the designated
country offices for publication, granting, and issuance
as national patents. Annuities up to the third year are
paid to the GCCPO, and subsequent annuities must be
paid to the national office(s) upon issuance.
Although all six GCC member countries are parties
to the Paris Convention and the PCT, the GCCPO has
not acceded to either treaty. Consequently, when
claiming priority, applications must be filed within 12
months from the date of the earliest claimed priority in
accordance with the provisions of the GCC patent law.