GCC Trade Marks Law Comes Into Force And Increases Fees

On Sunday 29 May 2016, Bahrain became the second country to bring the Gulf Cooperation Council (GCC) Trade Marks Law (the TM law) into effect. This follows the TM law coming into force in Kuwait in January 2016. The introduction of the TM law brings significant increases in the official fees for trade mark protection in Bahrain.

This article looks at the impact of the TM law and fee increases in the Gulf region for rights holders.

Background - the GCC Trade Marks Law

The GCC is a six country trading bloc in the Arabian Gulf. Its member states are Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates.

The TM law was published in mid-2013 by the GCC Secretariat, following many years of discussions.

In order for the TM law (and its implementing regulations) to come into force at the national level it needs to be accepted and published by each of the member states.

To date, only Kuwait and Bahrain have taken the necessary steps. We await developments for Oman, Qatar, Saudi Arabia and the UAE. The expectation is that countries will publish during 2016, and that the TM law will be in effect in all member states by 2017.

What does this mean for rights holders?

Unlike the GCC patent law, which provides for a unitary right covering the six member states through one application, the TM law is a unifying law and does not introduce a single filing system.

Rights holders looking to protect trade marks in the GCC member states will still need to register in each country of interest.

While the GCC member states will be governed by a unifying law, it is likely that there will still be scope for interpretation of the national laws and practice to differ between the member states. The TM law provides for a "Commercial Co-operation Committee" to have the power to interpret the TM law and suggest amendments to it. However, we will have to wait and see how the Committee will work in practice, who makes up the Committee and who would be entitled to address issues or questions to the Committee.

What changes will the TM law bring?

In each member state, the TM law brings about wide-ranging changes over the preceding national laws.

The definition of a trade mark is now broader, for example "shapes" and "colour" are specifically mentioned. As such, it should be possible to consider protection of non-traditional trade marks in countries in the region where this was not previously possible - such as in Saudi Arabia.

However, this may also be one of the first areas where we will see if the countries implement and interpret the law in different ways. At present the officials in Saudi Arabia are very reluctant to allow non-traditional marks to be accepted for registration, whereas the UAE accepts most non-traditional marks on a prima facie basis.

The TM law also regularises the filing requirements for each country.

Applicants will require:

A notarised Power of Attorney, legalised to the relevant country's embassy where signed outside of the country; 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. These must be available at the time of filing and cannot be filed late.

If priority is being claimed, a copy of the priority document is also needed at the time of filing, though the original can be filed within three months.

The TM law presented an opportunity to move to multi-class systems for...