The Saudi Trade Mark Office has confirmed that it has adopted the GCC Trade Mark Law and its Implementing Regulations with effect from 29 September 2016. This article considers the current status of the GCC Trade Mark Law and Implementing Regulations in Saudi Arabia. We then take a look at the main ways in which the new Law and Implementing Regulations are likely to have an impact in Saudi Arabia.
9 October 2016: Following the initial publication of this article, the Saudi Trade Mark Office has decided to maintain the official fee for publishing a trade mark application at the same amount as applied prior to its adoption of the GCC Trade Mark Law and Implementing Regulations (rather than the reduced amount specified in the Implementing Regulations).
As a consequence, the total official fees for registering a trade mark in Saudi Arabia will increase from USD 1,865 to USD 2,400. This is instead of a reduction of USD 130 which would have applied if the Saudi Trade Mark Office had imposed the lower official fees specified in the Implementing Regulations.
Although this has not been confirmed, it appears that this decision may have been made pursuant to Article 40 of the Implementing Regulations which allows each GCC member state to charge official fees in accordance with its own procedures.
The status of the GCC Trade Mark Law and its Implementing Regulations
The GCC Trade Mark Law has been a long time coming in Saudi Arabia. On 19 May 2014, the Saudi Official Gazette included an announcement that the GCC Trade Mark Law had been approved and that a Royal Decree had been drafted in this regard.
This was shortly followed by Royal Decree No. M/51 dated 27 May 2014, which provided that the GCC Trade Mark Law would come into force 90 days after publication. We then heard nothing further until the GCC Trade Mark Law (together with the Implementing Regulations to the Law) were published in the Official Gazette on 1 July 2016.
The usual procedure for enacting legislation in Saudi Arabia is for the relevant Royal Decree to be published in the Saudi Official Gazette. However, Royal Decree No. M/51 has not been published in the Official Gazette (a copy of the decree is publicly available through the website of the Saudi Bureau of Experts to the Council of Ministers, but it has not been published in the Official Gazette, as would normally be the case).
In the circumstances, it was not clear until recently that the Law and Implementing Regulations would be coming into force. However, the position has now been clarified with the Saudi Trade Mark Office taking steps to adopt the GCC Trade Mark Law and its Implementing Regulations with effect from 29 September 2016 (90 days after the publication of the GCC Trade Mark Law on 1 July 2016).
Accordingly, it is now confirmed that the GCC Trade Mark Law and its Implementing Regulations are being adopted by the Trade Mark Office in Saudi Arabia and with effect from 29 September 2016.
Impact of the new Law and Implementing Regulations in Saudi Arabia
The introduction of the GCC Trade Mark Law and its Implementing Regulations will possibly have more impact in Saudi Arabia than in any other of the GCC states. This is because the new Law and Implementing Regulations contain a number of provisions that are not present in the old Saudi Trade Mark Law (which is repealed by the GCC Trade Mark Law) and it also introduces some important procedural changes.
The changes introduced by the GCC Trade Mark Law include:
- Changes to official fees
The official fees being charged by trade mark offices in the GCC states has attracted significant attention. The official fees set out in the Implementing Regulations (published in the Saudi Official Gazette on 1 July 2016) showed some increases and some decreases in official fees, as follows:
- Registering a trade mark (from filing through to registration): Decreased by 7%, from USD 1,865 to USD 1,735;
- Renewing a trade mark: Increased by 8%, from USD 1,600 to USD 1,735;
- Opposing a trade mark: Increased from zero to USD 270.
These changes in official fees are far less substantial than the changes which were applied in Bahrain and Kuwait when the GCC Trade Mark Law came into force in those countries.
However, there is no guarantee that there will not be further changes. Now that the GCC Trade Mark Law and Implementing Regulations have been adopted by the Saudi Trade Mark Office, it is possible that further changes in official fees will be introduced.
- The introduction of new forms of non-traditional trade marks, such as colour, combinations of colour, sounds and smells
The old Saudi Trade Mark Law allowed for three-dimensional marks to be registered, with the definition of 'a trade mark capable of registration' including shapes. The GCC Trade Mark Law extends this definition so that it now includes some forms of non-traditional trade marks, such as colour, combinations of colour, sounds and smells.
Of course, as practitioners elsewhere in the world have found, the existence of legislation which confirms that such non-traditional marks may be registered does not necessarily mean that significant obstacles to obtaining registrations for non-traditional marks will not remain.
- Opposition period decreased to 60 days
The opposition period under the old Saudi Trade Mark Law was 90 days. The GCC Trade Mark Law decreases this to 60 days, with no extensions of time being available.
- Oppositions to be heard within the Trade Mark Office
Under the old Saudi Trade Mark Law, oppositions are filed before the Board of Grievances (which is a form of administrative court), with appeals against the refusal of trade mark applications being heard by the Minister of Commerce and Investment. The GCC Trade Mark Law and Implementing Regulations now requires oppositions to be heard within the Trade Mark Office.
The Implementing Regulations to the GCC Trade Mark Law also set out a basic procedure for dealing with oppositions:
- once an opposition has been filed, the Trade Mark Office is to notify the applicant of the opposition within 30 days;
- the applicant then has a non-extendable period of 60 days from receipt of the notification to submit a counter-statement;
- the Trade Mark Office may fix a hearing to receive the statements and evidence of the parties;
- the Trade Mark Office is to issue its decision within 90 days of the date of the hearing.
In practice, this means that opposition proceedings in Saudi Arabia should become significantly shorter and less expensive than they have been in the past, where it has been common for the Board of Grievances to set and adjourn numerous hearings over the course of several months or even years.
- Changes in examination practice
As with other trade mark offices in the GCC region, it has been common practice for the Saudi Trade Mark Office not to take into consideration goods / services in different classes when examining a trade mark application. It has also been common practice to treat goods / services in the same class as being similar, without consideration of the specific goods or services.
However the GCC Trade Mark Law includes an express provision that "goods or services listed in the same class may not necessarily indicate similarity. Likewise, goods or services listed in different classes may not necessarily be dissimilar".
The introduction of this concept could lead to a significant change in examination practices in Saudi Arabia, and it will be interesting to see how examiners make use of this provision.
- The protection afforded to well-known marks is extended
The GCC Trade Mark Law prohibits the registration of marks which constitute a "reproduction, an imitation, or a translation of a well-known mark or an essential part thereof" in relation to identical/similar goods and/or services. The Law also prohibits the registration of such marks in relation to dissimilar goods and/or services where the use of the mark would indicate a connection between those goods and/or services and the owner of the well-known mark, and would be likely to damage his interests.
The express statement in the GCC Trade Mark Law that an application for a mark which is identical or similar to an '"essential part'" of a well-known trade mark (and, arguably, not necessarily to the trade mark as a whole) goes further than the old Saudi Trade Mark Law which does not refer to parts of marks.
The GCC Trade Mark Law also goes further than the old Saudi Trade Mark Law (which is silent on this point) by setting out the criteria for determining whether a mark is well-known stating that "the duration and extent of any registrations or use of the mark, the number of countries where it has been registered or recognised as a well-known mark, the value associated with the mark and the extent to which such value helps promote the goods and/or services to which it applies" shall also be considered.
In addition to the above points, there are further positive provisions in the GCC Trade Mark Law and Implementing Regulations, such as an enhanced ability to cancel wrongfully registered trade marks and improved enforcement provisions. As a result, the introduction of the GCC Trade Mark Law in Saudi Arabia is a positive step and, after a period of adjustment, there should be real benefits for brand owners with an interest in Saudi Arabia.