Gulf Cooperation Council Trademark Law approved

The Saudi Cabinet has endorsed the Trademark Law of the Gulf Cooperation Council (GCC). Saudi Arabia joins the United Arab Emirates and Qatar, which have already approved the law. Approval is still awaited from Bahrain, Kuwait and Oman.

The draft GCC Trademark Law was approved by the GCC leaders during the 27th session of the GCC Supreme Council Summit in December 2006. Although three member states have now approved the law, it will come into force only when all member states have approved it and issued implementing regulations. Implementing regulations are reportedly being drafted in Saudi Arabia and the United Arab Emirates. When the law will come into force remains a matter of conjecture.

For many years, member states have discussed the possibility of introducing a 'GCC trademark': one single registration would grant exclusive rights to the trademark owner throughout the GCC, following the model of the Community trademark in the European Union. However, this feature was not included in the new law. Moreover, a unified filing system throughout the GCC will not be available for the foreseeable future. Therefore, trademark owners seeking to protect their rights in the GCC must continue to file individual applications in each member state.

The new law will bring about a number of eagerly awaited changes for trademark owners. The key features of the law include the following:

• The definition of a 'trademark' has been widened to include non-traditional trademarks (sound and smell marks). It will be interesting to see how national trademark offices in the GCC will deal with such applications.
  
  
• The opposition period has been increased to 60 days throughout the GCC. This period is non-extendable.
  
  
• The recordal of licences, which is currently mandatory in a number of GCC member states, will become voluntary.
  
  
• Specific reference to the protection of geographical indications has been included. The trademark laws of the member states are silent on this issue.
  
  
• A five-year limitation period for the enforcement of IP rights in criminal prosecutions has been introduced. The possible fines and terms of imprisonment have been increased. The new law also increases the scope of protection of trademarks by introducing precautionary measures. For example, a trademark owner can request that the court order the seizure of imported goods which are suspected of being counterfeit. However, the law does not clarify whether imported goods may be seized before they are made available on the market, and does not determine the amount of compensation to be paid in cases of infringement. Any claim for compensation will thus be based on the general provisions of civil law on damages, compensation and indemnities.
  
  
• The new law does not allow for multi-class filings.

Mona Saleh, Rouse & Co International, Dubai