Qatar implements the GCC Trade Mark Law and changes official fees
Pursuant to Ministerial Decree No. 56 of 2023 – and after many years of it being on the horizon – Qatar has now implemented the GCC (Gulf Corporation Council) Trade Mark Law and its Implementing Regulations, effective from 10 August 2023. This makes Qatar the fifth GCC member state to implement the GCC Trade Mark Law, meaning that the UAE is now the only GCC country that is yet to implement it. To date, the UAE’s own Trade Mark law (the most recent amendment of which was issued in 2021) remains in force. While Qatar’s implementation of the GCC Trade Mark Law should give rise to more harmonization of trade mark registration and enforcement procedures, it is important to note that this law does not establish a unified trade mark register nor a region-wide trade mark registration. As such, brand owners should still seek registration in each of the GCC countries that implemented the Law.
A key point introduced by the GCC Trade Mark Law is more clarity on what constitutes a well-known trade mark (Article 4 of the GCC Trade Mark Law) and sets out that goods and services categorised in the same class are not automatically considered similar, and likewise, goods and services in different classes are not automatically considered dissimilar (Article 9(2) of the GCC Trade Mark Law). In theory, this should allow brand owners to take more case-specific factors into consideration to support arguments of confusion in prosecution proceedings. However, it remains to be seen whether the practice of Trade Mark Office examiners in Qatar will follow this aspect of the law. In some of the other GCC countries, we have seen that examiners have continued to automatically consider goods and services in the same class as similar and vice versa with regard to those in different classes.
The GCC Trade Mark Law as published in Qatar also makes multi-class filings possible. However, again, it remains to been seen whether the Qatari Trade Mark Office will start accepting multi-class applications (this is yet to happen in any other the other GCC member states who have implemented the Law – currently, all GCC member states only accept single class applications).
Brand owners who record trade mark license agreements with the Trade Mark Office should also note that the GCC Trade Mark Law requires the expiration or termination of the license to be formally notified to the Trade Mark Office in order to apply to cancel the license recordal. The Trade Mark Office shall then notify the other party of the cancellation of the recordal, providing the other party with an opportunity to object by way of appeal within 30 days of the notification. If an appeal is filed, the Trade Mark Office shall suspend the cancellation process until an agreement between the parties is reached or a final judgment is issued by the Court.
We set out below some of the shortened timeframes introduced by the GCC Trade Mark Law in Qatar, in comparison to the previous Trade Mark Law (Law No. 9 of 2002):
- the time to comply with examination conditions is reduced from six months to 90 days;
- the opposition period is reduced from four months to 60 days;
- the deadline to appeal an opposition decision before the Court was reduced from 60 to 30 days.
In addition to the implementation of the GCC Trade Mark Law, Qatar has also adopted a new schedule of official fees. In particular, we have seen increases in the fees for trade mark registrations, renewals and recordals.