On 1 July 2016 the new Unified GCC Trade Mark Law and its Implementing Regulations were published in the Saudi Official Gazette. The law is expected to come in to force 90 days after its publication following Royal Decree no. M/51/1435. This is expected to be on 27 September 2016.
The new law brings some interesting changes to the current practice, including some key alterations:
The definition of a trade mark explicitly mentions that shapes, single colours, smells and sounds can be trade marks. This is a clear step towards the acceptance of unconventional trade marks.
The new law allows for a multi-class system, but leaves it to the discretion of the respective trade mark office whether or not to accept multi-class applications. The new fee structure for Saudi Arabia only provides for a single class application, and therefore, it is reasonable to assume that the system will continue to be single class here until further notice.
The law clarifies that goods and services shall not be deemed as being similar merely because they fall in the same class. Moreover, goods and services shall not be deemed as being dissimilar merely because they fall in different classes. This was not clear under the old law nor accepted in practice, so brand owners needed to structure arguments around Nice Classifications to establish the above concept.
The new law establishes a Grievance Committee. This committee allows for an additional level of appeal in relation to the examiners' rejection decisions. Under the new law, an examiners' decisions to reject trade marks can be appealed to the newly established Grievance Committee. The decision of the latter can be further appealed to the competent courts. However, it appears that the Grievance Committee's jurisdiction is limited to appeals against rejection decisions and will not extend to look at appeals against decisions in opposition. Oppositions against published trade marks will be filed with the trade mark office, and appeals against orders deciding on oppositions can only be filed with the courts.
The law refers all border control cases to the courts. Customs authorities will seize suspected infringing products either proactively or following the brand owner's valid complaint, on temporary basis. The brand owner has a fixed deadline to file a main claim before the competent court examines the substance of the case.
The new law clearly states that customs authorities have control over all products entering the customs' zone whether for importation, in transit or for exportation. This is a positive step as it clearly gives control over goods in transit. However, the use of the term "customs' zone", raises some concerns in relation to whether this control will also cover free zones.
The law also clearly states that the courts shall order the destruction of products, and if destruction is not possible, the courts shall not return the products to the channels of trade and shall not order re-exportation of the products after removal of the infringing trade marks.
There has been a reduction in some existing official fees. This will be offset by the introduction of some new fees such as fees for filing oppositions and appeals against rejections of trade marks.
There are many positives with the new law. There is however some uncertainty around a number of issues that will only become clear in practice. We will monitor the new law once it has been implemented and report back in a future magazine.
