Draft Gulf Co-Operation Council Trademark Law approved

The governments of Saudi Arabia, Bahrain, Kuwait, Oman, Qatar and the United Arab Emirates approved the draft unified Gulf Co-operation Council (GCC) Trademark Law during the 27th session of the GCC Supreme Council Summit in Riyadh.

There is, however, no confirmation as to when this unified law will come into force. It is also not clear whether it will be possible to file one application to cover the GCC countries or whether separate applications in each jurisdiction will still be required once the law has come into force.

However, the draft law provides explicit information concerning:

• what can be registered as a trademark;
  
  
• what is eligible for registration;
  
  
• what cannot be registered;
  
  
• well-known trademarks;
  
  
• geographical indications (GIs);
  
  
• use of a trademark; and
  
  
• penalties against infringers.
  

The draft has relied on the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) by taking the minimum protection standards and has provided more extensive protection in relation to trademarks. While the TRIPs Agreement states that members are free to determine whether to allow the registration of signs that are not visually perceptible, such as sound or smell marks, the draft GCC law provides that sounds and smells can be registered as trademarks.

In relation to use, Article 8 of the draft law provides that whoever applies for the registration of a trademark shall be deemed the exclusive owner thereof unless proven otherwise. Article 8 also states that whoever proves prior use of a registered trademark may request the relevant court to cancel this registration within five years of registration.

The draft law contains clear provisions on well-known trademarks that oblige GCC countries to refuse or cancel the registration and prohibit the use of a mark if it conflicts with a mark that is well known for similar goods and services. The protection will also extend to goods and services which are not similar, provided that its use would indicate a connection between those goods and/or services and the owner of the registered trademark.

The law provides a 10-year protection term, which may be renewed for similar consecutive periods. Non-use for a continuous period of five years without a legitimate reason makes the mark subject to cancellation by any interested person.

In relation to GIs, Article 5 specifically states that any interested party may request the registration of a trademark with a GI to protect the origin/source of its products. The registration does not mean that the owner will have exclusive rights, as it is possible for any other party to use the same indication if it operates similar activities.

There is no requirement that a licence agreement be recorded; the agreement will have effect even if not entered in the register's records.

The draft law also touches on the protection of trademarks in the GCC states in relation to precautionary measures, civil and criminal actions. The draft law provides trademark owners with the right to seek an order from the competent court to seize suspected infringing products where these products are imported into the country. However, the draft law does not clarify whether, in order to effect seizure, the imported products need be available in the local market, or whether the seizure order can be granted before they enter the market.

The draft law does not deal with compensation or damages. Any claim for compensation shall therefore be based on the general provisions of civil transaction laws that cover damages, compensations and indemnities in the relevant jurisdiction.

As to criminal actions, the new law focuses on imposing penalties on violators. Such penalties include a five-year imprisonment term and/or a fine up to Sr1 million or the equivalent in any other GCC currency.

Mona Saleh and Ziad Sunna, Rouse & Co International, Dubai