The GCC member states appear to be moving closer to harmonisation of their trademark laws. This briefing considers the next steps in the process and the implications of the new law for businesses with brand assets in the GCC.
The new legislation
Although the concept of a harmonised trademark law across the GCC is hardly new, it was only in 2013, following the publication of a revised draft unified law governing trademarks across the GCC (Trademark Law), that further steps were undertaken with a view to bringing the law into force. The GCC's highest decision-making body, the Supreme Council, has issued a resolution requiring each member state to implement the Trademark Law into their respective national laws within 6 months of the publication of the Implementing Regulations.
We now appear to be reaching the final stage of this process because the Implementing Regulations are expected to be published in early 2016.
In some countries (most notably the United Arab Emirates and Saudi Arabia) further national legislation will likely be required before the Trademark Law comes into force. Other countries (such as Bahrain) have already made provision to implement the Trademark Law without amendment (and to repeal any conflicting legislation). Local variations to the Trademark Law seem highly likely and it also seems fairly clear that the Trademark Law will be effective in some GCC countries well before it comes into force in others.
What does the Trademark Law mean for owners of brand assets?
The GCC Trademark Law is a unifying, not a unitary law. Unlike (for example) the EUTM, which allows unitary registration and enforcement across all member countries, the Trademark Law sets out a single set of provisions that will apply uniformly across all the GCC states. The Trademark Office of each GCC state will continue to receive applications and register trademarks on a national basis. Registering a trademark in all six GCC states will still require an applicant to file separate national trademark applications (and to pay official fees in each country).
The overriding advantage for brand owners is that the Trademark Law should ensure consistency in filing procedure, examination, prosecution, oppositions and enforcement across all GCC countries. It is common for brandowners to exploit their trademarks across more than one GCC country and currently the outcome of any dispute or challenge can vary according to national rules, leading to considerable uncertainly.
A key feature of the Trademark Law is that it will likely permit multi-class applications, which will offer significant cost savings for applicants.
The Trademark Law also contains improved provisions relating to well-known marks, exclusivity and parallel imports. New penalties for trademark infringement are included and the law anticipates the availability of remedies that are not routinely available in every GCC state at the moment. For example, claimants may seek an account of profits from the infringer who may be ordered by the court to disclose the identity of any third parties involved in the infringement. Rights holders may also apply for an injunction to "stop or prevent" infringement, implying that interim relief may be available.
What happens next?
There remains considerable uncertainty over how the Trademark Law will be interpreted and applied in practice. For example, it is not clear how uniformity across member states will be achieved in the absence of a central body to ensure consistent interpretation. However, the move towards greater harmonisation is a positive one and we will issue a further briefing once the Implementing Regulations are published.