As of 29 September 2016, Saudi Arabia adopted the Gulf Cooperation Council (GCC) Trade Mark Law and remove Implementing Regulations.
The GCC Trade Mark Law is a unified law containing provisions relating to the registrability, protection and enforcement of trade marks across all six GCC member states, namely, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. Saudi Arabia is the third state to implement this new law, following in the footsteps of Kuwait and Bahrain. While the GCC Trade Mark Law is a unified law, it is still necessary to file a trade mark application in each GCC member state and each state is at liberty to set their own official fees.
Changes to official fees in Saudi Arabia
Following the enactment of the new law, the official fee to register a trade mark in Saudi Arabia has decreased slightly from USD 1865 to USD 1735. Despite only a small reduction, Saudi Arabia has one of the highest official fees in the Middle East and so this change will be welcome to many brand owners; particularly as Bahrain and Kuwait significantly increased their official fees when they implemented the GCC Trade Mark Law.
Although the official fee has been reduced, this is offset by the increased fee to renew a Saudi Arabian trade mark, from USD 1600 to USD 1735, as well as the introduction of an official fee of USD 270 to file an opposition.
The new GCC trade mark law in Saudi Arabia has also introduced the following changes:
- Forms of non-traditional marks have now been extended to include colour, combinations of colour, sounds and smells;
- The opposition period has been reduced from 90 days to 60 days and this deadline cannot be extended;
- Opposition proceedings will now be heard by the Saudi Trade Mark Office. It is hoped that this procedural change will result in less protracted and expensive oppositions in Saudi Arabia;
- A change in examination practice is anticipated as the Saudi Trade Mark Office previously did not consider goods or services in different classes when examining an application and treated goods and services in the same class as similar, without assessing the specific goods or services. The new law, however, contains a provision stating 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 protection of well-known marks has been extended to prohibit the registration of marks which constitute a “reproduction, an imitation, or a translation” of both a “well-known mark or an essential part thereof”. This is an extension of protection as the previous law did not make allowances for a part of a well-known mark.
It has been observed that the implementation of the GCC Trade Mark Law is likely to have a greater impact in Saudi Arabia than any other GCC state as the new law includes several provisions that were not contained in the old Saudi trade mark law. These changes in Saudi Arabia are a positive move forward for brand owners and it will be interesting to see the further developments in the Middle East when the GCC Trade Mark Law is implemented in Oman, Qatar and the United Arab Emirates.
For further information on the GCC Trade Mark Law, please contact Rachel Conroy or your usual Boult Wade Tennant advisor.