UK: GCC Trade Mark Law - Are Increased Official Fees Inevitable?

Last Updated: 22 August 2016
Article by Rob Deans and James Dunne

The GCC Trade Mark Law is a unified law dealing with the protection, enforcement and commercialisation of trade marks across each of the GCC member states (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE). To date, the GCC Trade Mark Law has been enacted in Kuwait and Bahrain, with Saudi Arabia set to follow shortly. With substantial increases in official fees accompanying the introduction of the Law in Kuwait and Bahrain, this article considers whether increased official fees are inevitable when the Law is introduced in Saudi Arabia, and then in Oman, Qatar and the UAE.

The story so far – Kuwait and Bahrain

Kuwait was the first to implement the GCC Trade Mark Law on 28 December 2015. At the same time, it introduced across the board increases to the official fees payable to the Kuwaiti Trade Mark Office. For example, the charges for:

  • registering a trade mark (from filing through to registration) increased from approximately USD 80 to USD 1,035 (an increase of 1,100%);
  • renewing a trade mark registration increased from USD 18 to approximately USD 1,032 (an increase of 5,500%); and
  • opposing a trade mark increased from USD 18 to approximately USD 316 (an increase of 1,600%).

Then, on 29 May 2016, Bahrain implemented the GCC Trade Mark Law, and this was also accompanied by across the board increases in the official fees charged by the Bahrain Trade Mark Office. For example, the charges for:

  • registering a trade mark (from filing through to registration) increased from USD 320 to USD 1,725 (an increase of 440%);
  • renewing a trade mark registration increased from USD 160 to USD 1,725 (an increase of 980%); and
  • opposing a trade mark increased from USD 55 to USD 530 (an increase of 860%).

These are very significant increases and has led to speculation that further increases are on the way when the GCC Trade Mark Law is implemented in the other GCC member states.

Further background – A track record of high official fees

The above summary only covers very recent history. The Trade Mark Offices in the GCC countries have traditionally charged high official fees compared with their counterparts outside the region, and these fees have been increasing.

Since 2010, all of the GCC countries except Oman and Qatar have increased their official fees for filing and registering trade marks. The official fees for registering a trade mark (from filing through to registration) now exceeds USD 1,000 in each of the GCC countries except Oman and Qatar.

An economic perspective – A desire to diversify government revenues

When considering the issue of official fees, it is also important also to look at the broader economic perspective.

In many countries, government departments operate under a mandate to cover their costs on a stand-alone and non-profit basis. On this basis, creating a surplus can be a problem, and this has resulted in official fees being decreased by some Trade Mark Offices in order to avoid excessive surpluses being built up.

The GCC states have operated on a virtually tax free basis for decades, with governments using a variety other means to generate revenues. The generation of a surplus by a government department is far from a problem – it is a positive contribution to government revenues.

With oil-prices high, the diversification of government revenues has not been a high priority for some of the GCC countries. There have been long-standing discussions to diversify government revenues through the introduction of taxes. However, while revenues remained strong, there was no real pressure to move these discussions forward.

Now, with oil prices lower than they have been for years, these discussions have seemingly made progress, with the introduction of a GCC sales tax reported to be planned for 2018.

It seems a coincidence that the GCC Trade Mark Law is in the process of being implemented at the same time as a decision has been reached to introduce a sales tax across the region. However, this coincidence does highlight that the diversification of government revenues is very much a high priority topic in the region at the moment, and that this is set to continue.

It is therefore unsurprising that we have seen fee increases in Bahrain and Kuwait when they implemented the new Law, and we can expect each of the GCC member states to review their official fees at the time they implement the Law.

Official fees under the GCC Trade Mark Law – what next?

As stated at the beginning of this article, the GCC Trade Mark Law is a unified law. It is founded on the principle of consistency – with the same law being in place in all six GCC member states.

However, this principle of consistency is subject to an exception when it comes to the fixing of official fees. The very last provision of the Implementing Regulations to the GCC Trade Mark Law (Article 40) provides each member state with the discretion to determine whatever official fees it wishes to charge under the Law.

Accordingly, although Kuwait and Bahrain have introduced substantial increases in official fees when implementing the GCC Trade Mark Law, there was no obligation on them to do so. Each of the GCC member states has the flexibility to fix whatever official fees it wishes.

It appears likely that Saudi Arabia will be the next to implement the GCC Trade Mark Law. On 1 July 2016, the GCC Trade Mark Law and its Implementing Regulations were published in the Saudi Arabian Official Gazette, and it appears likely the Law and Implementing Regulations will come into force in Saudi Arabia within three months (i.e. by the end of September 2016).

The official fees published in Saudi Arabia do not show an across the board increase. Instead, this is more of a mixed bag with, for example:

  • registering a trade mark (from filing through to registration) decreasing from USD 1,865 to USD 1,735 (a decrease of 7%);
  • renewing a trade mark registration increasing from USD 1,600 to USD 1,735 (an increase of 8%); and
  • opposing a trade mark increasing from zero to USD 535.

Putting this into context, the official fees in Saudi Arabia were already some of the highest in the region. It is therefore perhaps not surprising that Saudi Arabia seemingly does not see the need to increase its official fees to the same extent as occurred in Kuwait and Bahrain.

This is, however, encouraging as we await the implementation of the GCC Trade Mark Law in each of Oman, Qatar and the UAE.

It is also worth bearing in mind that the purpose of introducing a tax regime is, of course, to diversify government revenues so that they are less reliant on income from oil and gas. Whether, in the medium term, this also takes pressure off individual government departments to raise revenue remains to be seen.

However, it is certainly possible that we are currently witnessing a peak in official fees in the GCC countries and that, over time, they decrease to levels which are more in line with countries outside the region.

GCC Trade Mark Law - Are increased official fees inevitable?

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.