After almost 30 years of waiting, the GCC Trade Mark Law has been implemented, and is now in force in one of the Gulf Cooperation Council (GCC) member states – Kuwait. Further news is awaited in the other GCC states of Bahrain, Oman, Qatar, Saudi Arabia and the UAE.
The trigger for the implementation of the GCC Trade Mark Law in Kuwait has been the publication of Ministerial Decision No. 500 of 2015 which approved the Implementing Regulations for Law No. 13 of 2015 and which, in turn, ratified the GCC Trade Mark Law. Ministerial Decision No. 500 of 2015 was published on 27 December 2015, with the effect that the Implementing Regulations came into force in Kuwait on 28 December 2015.
The impact of the Implementing Regulations
Until now, the Implementing Regulations to the GCC Trade Mark Law have not been publically available. These Implementing Regulations will have an impact in all the GCC states including, most immediately, in Kuwait. Some of the key changes under the Implementing Regulations are as follows:
- An increase in official fees
Under Ministerial Decision No. 500 of 2015, the official fees for trade mark applications (from filing through to registration) in Kuwait are increased to approximately USD 1,035 from approximately USD 80 (ie to KD 310 from KD 24). This is part of an increase in official fees for a number of activities before the Kuwait Trade Mark Office, with the fees for renewals, oppositions and assignments also increasing.
- A change in the supporting documents for trade mark applications
The documents that are now required to support a trade mark application in Kuwait under the Implementing Regulations are:
- a notarised and legalised Power of Attorney;
- a copy of a Certificate of Incorporation or Commercial Licence for the applicant; and
- a legal translation of the trade mark, if it includes any words which are not in Arabic.
In relation to the first of these requirements, many brand owners will be accustomed, when filing a trade mark application in a GCC country, to submitting a Power of Attorney legalised for use in the country where the application is being filed. However, the Implementing Regulations do not specify that the Power of Attorney must be legalised for use in the specific country where the application is being filed.
This may potentially be interpreted as allowing applicants to rely on a Power of Attorney which has been legalised for use in any GCC country (rather than in the specific country where the application is being filed). This is important for brand owners seeking to file applications in more than one GCC country. If this interpretation is adopted to allow a single Power of Attorney legalised for use in any GCC country, then this could give rise to considerable cost savings.
The second and third requirements are new for Kuwait. Previously, it was not necessary to submit a copy of the applicant's Certificate of Incorporation or Commercial Licence. Also, until now, it was sufficient for the applicant to prepare its own translation of a non-Arabic language trade mark. However, a translation prepared by a licensed legal translator is now required.
In addition, it is worth noting that the Implementing Regulations to the GCC Trade Mark Law require all supporting documents to be submitted at the time the application is filed.
- Faster examination times, with the examination of trade mark applications to be completed within 90 days
Typically, it has been taking approximately six to eight months for examination reports to be issued by the Kuwait Trade Mark Office. The Implementing Regulations impose a requirement for an initial examination report to be issued within 90 days of the filing date, which should result in applications being processed more quickly than has previously been the case.
- A longer opposition period
The opposition deadline has been increased to 60 days (from the current 30 days in Kuwait). However, the deadline remains non-extendable.
- A longer grace period for late renewals
This has been increased to six months (from the current three months in Kuwait).
Equally important are the issues which the Implementing Regulations do not deal with. These include:
- The absence of a procedure for a unified interpretation of the GCC Trade Mark Law to be adopted in all GCC member states
The GCC Trade Mark Law is structured on the basis that the same law, with the same provisions, is to be enacted in each member state so that a unified law applies across all six GCC member states. Now that the GCC Trade Mark Law has been enacted in Kuwait, the Trade Mark Office and the Courts in Kuwait are empowered to interpret and apply the provisions of the GCC Trade Mark Law in Kuwait.
In due course, when the GCC Trade Mark Law is enacted in the other GCC member states, the Trade Mark Offices and Courts in those member states will also have the power to interpret and apply the provisions of the GCC Trade Mark Law in those countries. This raises a concern that the Law will be subject to different interpretations in each of the GCC states.
This potential problem appears to be anticipated by the GCC Trade Mark Law in that it provides that the GCC Trade Cooperation Committee has the power to interpret the Law. However, there is nothing in either the Law or the Implementing Regulations to suggest how this might work in practice.
In the absence of any process for bringing matters of interpretation to the GCC Trade Cooperation Committee, it is difficult to see how a unified position under the GCC Trade Mark Law will be maintained across all six member states.
- The absence of a local address for service to be maintained for the proprietor of a registered trade mark
The Implementing Regulations to the GCC Trade Mark Law maintain the current position that an applicant must provide the Trade Mark Office with its address. However, for overseas applicants, there is no requirement to provide a local address for service, such as the address of the applicant's filing agent.
As a result, if an action is brought against the proprietor of a trade mark registration (such as, for example, an action before the Court to cancel a trade mark registration), it is necessary to effect service directly upon the proprietor. Where the proprietor's address is outside the country, this means effecting service through diplomatic channels which can be a lengthy and expensive process.
The impact of the GCC Trade Mark Law
The points set out above summarise the key changes which are being introduced by the Implementing Regulations to the GCC Trade Mark Law. The law itself introduces a host of changes, from the definition of a trade mark through to what constitutes a trade mark infringement.
We have reported previously on some of these changes:
- The GCC Trade Mark Law: Moving closer, in different ways (October 2015)
- A unified GCC Trade Mark Law (November 2014)
The status of the Law in the other GCC countries
The Supreme Council of the GCC issued a Resolution in December 2012 requiring all member states to implement the GCC Trade Mark Law into their respective national laws within six months from the date on which Implementing Regulations for the Law are approved by the GCC Trade Cooperation Committee.
The publication of the Implementing Regulations in Kuwait indicates that the Implementing Regulations have been approved. If this is the case, then the GCC Trade Mark Law should come into force in the other GCC member states by early July 2016.
However, at present, the position in the other GCC member states is as follows:
- Bahrain and Qatar: We are waiting for the Implementing Regulations to be published in these countries. The GCC Trade Mark Law will come into force automatically six months after the Implementing Regulations have been published.
- Saudi Arabia: We are waiting for further legislation to be passed in order to bring the GCC Trade Mark Law into force and to repeal the current Saudi Trade Mark Law. The Saudi Cabinet agreed in May 2014 to ratify the GCC Trade Mark Law. However, this ratification has not yet taken place and legislation is still required to bring the Law into force in Saudi Arabia.
- Oman and the UAE: We have not yet seen any legislation published with regard to the 2013 version of the GCC Trade Mark Law. It therefore remains to be seen how or when the GCC Trade Mark Law will be implemented in these member states.
It will therefore be interesting to see what steps are taken in each of these GCC member states over the coming months, and the speed at which the GCC Trade Mark Law comes into force across the GCC region.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.