Worldwide: The GCC Trade Mark Law: Moving Closer, In Different Ways

When will the GCC Trade Mark Law be implemented in member states? Is further legislation required prior to implementation? Are member states planning local modifications to the Law?

Following the publication of the Trade Mark Law of the Gulf Cooperation Council (GCC) States in 2013 (the GCC Trade Mark Law), attention has turned to the implementation of this Law, in particular when it will come into force.

This article examines this question, within the framework of the GCC legislative system.  In particular, we consider when the GCC Trade Mark Law may come into force in each of the GCC states, and the extent to which it will still be necessary to look at national legislation in order to confirm the position in each GCC state.

A short history of the GCC Trade Mark Law

The harmonisation of intellectual property and other laws has been a long-standing project for the six GCC states of Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates, with a GCC Patent Law being in place since 1992 and a GCC Customs Law being in place since 2003.

In the context of trade marks, the concept of a harmonised trade mark law which applies across the GCC states dates back to the 1980s.  In more recent times, a draft unified GCC Trade Mark Law was published in 2006 in the GCC Official Gazette, although this did not proceed to implementation.  Then, in 2013, a further revised version of a draft GCC Trade Mark Law was published which has led to further work being undertaken with a view to bringing the Law into force.

Legislation in the GCC States

The implementation of legislation on a regional basis requires an agreed structure between the relevant sovereign states to bring the legislation into force in each jurisdiction.

In the European Union (EU), this result is achieved either through a Regulation (which is self-executing and implemented automatically in each EU member state) or through a Directive (which directs the EU member states to implement the terms of the Directive into national law).

The implementation of legislation on a GCC-wide basis is similar to the EU concept of Directives.  In the case of the GCC Trade Mark Law, the Supreme Council of the GCC (the highest decision-making body of the GCC) issued a Resolution during the 33rd GCC Session held in December 2012 requiring member states to implement the GCC Trade Mark Law into their respective national laws "within a period of sixth months as from the date on which the Commercial Co-operation Committee approves the Implementing Regulations of the [Trade Mark] Law" (the Implementing Regulations).

The need for Implementing Regulations to be prepared is set out in Article 52 of the GCC Trade Mark Law itself, which states that the Commercial Co-operation Committee (a division of the GCC General Secretariat) is responsible for issuing the Implementing Regulations.

Current status

At present, it appears that we are reaching the final stage of the Implementing Regulations being drafted.  The Implementing Regulations may well be ready for publication in early 2016.

It will then be necessary to refer to the national law of each GCC state in order to confirm when the GCC Trade Mark Law will come into effect in that jurisdiction, and in what form.  At present, the position is as follows:

• Bahrain - Law No. 6 of 2014 (issued on 17 February 2014) ratifies the GCC Trade Mark Law, and provides that the provisions of the GCC Trade Mark Law will come into force in Bahrain six months after the issuance of the Implementing Regulations.  At the same time, the current Trade Mark Law in Bahrain (Law No. 11 of 2006) will be repealed as from the date on which the GCC Trade Mark Law comes into force.

Accordingly, the GCC Trade Mark Law will come into force automatically in Bahrain, without amendment, six months after the Implementing Regulations are issued.

• Kuwait - Law No. 13 of 2015 (issued on 11 March 2015) ratifies the GCC Trade Mark Law in Kuwait.  Law No. of 13 of 2015 itself is expressed to come into force immediately, with any provisions of current legislation which contradict the GCC Trade Mark Law being repealed.  However, the Law also envisages that the Minister of Trade and Industry will issue implementing regulations in accordance with the provisions of the GCC Trade Mark Law.

We therefore anticipate that, once the Implementing Regulations have been published in the GCC Official Gazette, the Minister of Trade and Industry will issue corresponding implementing regulations at a national level in order to bring the GCC Trade Mark Law into force in Kuwait within six months.

It is also worth noting that Law No. 13 of 2015 also anticipates the payment of official fees and fines under the GCC Trade Mark Law in local currency (Kuwait dinars) rather than in Saudi riyals (as set out in the GCC Trade Mark Law).

• Qatar - Law No. 7 of 2014 (issued on 8 June 2014) provides that the GCC Trade Mark Law will automatically become effective in Qatar, six months after the Implementing Regulations.

In addition, Law No. 7 of 2014 repeals Law No. 18 of 2007 (which ratified the previous version of the GCC Trade Mark Law from 2006).  The Law also states that provisions that contravene the current version of the GCC Trade Mark Law are repealed, although no specific mention is made of the Law No. 9 of 2002 which deals with trade marks, trade names, geographical indications and industrial designs.

It therefore remains to be seen whether Qatar will at some stage repeal specific provisions of Law No. 9 of 2002 in order to avoid potential disputes as to whether or not a provision has been repealed on the basis that it contravenes the provisions of the GCC Trade Mark Law or whether it is still in force.

Interestingly, Law No. 7 of 2014 attaches a copy of the GCC Trade Mark Law, which differs to the position in Bahrain and Kuwait where the implementing laws refer to the text of the GCC Trade Mark Law as published in the GCC Official Gazette.  In practice, the result is the same (all countries have adopted the same version of the GCC Trade Law), but the mechanism used is slightly different.

• Saudi Arabia - Royal Decree No. M/94 (issued on 23 May 2014) states that the Cabinet agrees to ratify the GCC Trade Mark Law and that a royal decree has been drafted (but not published) to complete this ratification process.

Royal Decree No. M/94 does not set out when the GCC Trade Mark Law will be implemented in Saudi Arabia, whether it will be implemented without amendment or how the implementation of the GCC Trade Mark Law in Saudi Arabia will affect any existing conflicting Saudi laws.  In addition, no mention is made of repealing Saudi Arabia's current Trade Mark Law.

We therefore anticipate that further legislation will be enacted in Saudi Arabia in due course in order to enable the GCC Trade Mark Law to come into force and to repeal the current Saudi Trade Mark Law.

• Oman / the UAE - At present, neither Oman nor the UAE have published any legislation 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 each of these states.

Summary

At present, it appears that the Implementing Regulations may be published in early 2016.  If this is the case, then the GCC Trade Mark Law should come into force six months later, in the second half of the year.

However, the flexibility of the GCC legislative system means that the timing of the implementation of the GCC Trade Mark Law in each of the GCC states may vary, and there may be some local modifications in the text of the Law as shown by the table below.

With further legislation pending in each of Oman, Saudi Arabia and the UAE, it is not yet possible to assess whether there will be any significant local variations to the GCC Trade Mark Law as it applies in each of these states.  However, it is clear already that it will not be possible to rely on the version of GCC Trade Mark Law as published in the GCC Official Gazette in order to confirm the position of each of the GCC states, without looking at national legislation to identify any variations which apply at a country level.

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.