Oman Becomes Fourth GCC Member State to Implement the Unified GCC Trademarks Law

Oman has recently become the fourth Gulf Cooperation Council (“GCC”) state to implement the Law of Trademarks for the GCC States (“GCC Trademarks Law”). Royal Decree 33/2017 was issued in Oman on 25 July 2017 with immediate effect. However, the nuances of how this new law will be implemented in Oman remain to be seen, as the implementing regulations have yet to be published.

The GCC Trademarks Law was approved by the GCC Trade Cooperation Committee in 1987, with further amendments made in 2006 and 2013. However, the Trademark Law only came into force upon the issuance of the Implementing Regulations in December 2015. Since then, Saudi Arabia, Bahrain, Kuwait and now Oman have fully adopted the GCC Trademarks Law to replace their respective national trademark laws.

Although Oman has not yet published the implementing regulations, the GCC Trademarks Law itself provides an instructive preview of the main features of the law.

Under the GCC Trademarks Law, once a party submits an application for a trademark the examination much be completed within ninety days of filing. Any requests for further information from the relevant Trademarks Office must be met with a response also within ninety days. The GCC Trademarks Law provides a period of sixty days for parties to oppose published trademark applications; note that currently the opposition period in Oman is ninety days. Applicants must respond to oppositions within sixty days of notification, or risk their applications being considered abandoned.

Following the applicant’s response is a hearing session, after which the Trademarks Office issues its decision within ninety days. Appeals to the Trademarks Office’s decision rejecting an application shall be filed within sixty days to the Objections Committee. The decisions of the Objections Committee are also subject to appeal to the competent court within sixty days. This is a shift from the previous Omani law, which provides that decisions in opposition were appealable to a Trademarks Office within the relevant Ministry, with a further opportunity to appeal to the competent court afterwards.

In the determination of well-known trademarks, the GCC Trademarks Law provides criteria similar to those provided by the World Intellectual Property Organization (“WIPO”). For a mark to be declared as well-known, the GCC Trademarks Law requires that the mark be widely recognisable by consumers due to the marketing efforts of the trademark owner; that the mark be registered and used widely across countries; and/or that the mark be widely valued or useful in promoting the products or services to which it is applied.

Along with an increase in application fees, an increase in penalties for trademark infringement will be seen in Oman. According to the GCC Trademarks Law, the penalties that apply “where a person counterfeits a registered trademark in a manner which misleads the public [or] in bad faith uses a counterfeit trademark and who affixes this mark to its products” include a fine between OMR 500 (USD 1,300) and OMR 100,000 (USD 260,000) and/or imprisonment for up to three years. Where a person “knowingly sells goods which contain a counterfeit or unlawfully affixed trademark,” a fine of between OMR 100 (USD 260) and OMR 10,000 (USD 26,000) and/or imprisonment for up to one year are applicable.

Although Oman has yet to publish the implementing regulations of the GCC Trademarks Law, it is clear that the adoption of a unified trademarks law is a beneficial development. Rights holders will take comfort in claiming similar levels of protection throughout the GCC, and new applicants and businesses will be attracted by the ease of a single set of provisions for the registration and enforcement of their trademark rights.