13-Jul-2023
Written By: Hana Bishara
Decision No. 56 of 2023 marks a major leap in trademark law within the Gulf Cooperation Council (“GCC”) countries as Qatar adopts the GCC Trademarks Implementing Regulations (the "Regulations"). Published in the Qatar Official Gazette on July 9th, 2023, this decision gives full effect to the GCC Trademarks Law, adopted in 2002 and revised in 2014.
The Regulations lay down comprehensive guidelines and procedures for trademark registration, renewal, assignment, and cancellation in the GCC countries. Starting from August 10th, 2023, the Intellectual Property Rights Protection Department will enforce these Regulations, as per their circular number 2/2023 issued on July 13th, 2023. Additionally, the Regulations introduce a unified system for oppositions and appeals.
Key highlights of the Regulations include the following:
- The introduction of a new deadline for submitting an opposition, a reduced opposition period of two months instead of four, aimed at expediting the trademark registration process and avoiding undue delays to prevent trademark owners from being unfairly prejudiced by late oppositions.
- The shortening of the deadline for responding to an office action, which is now one month instead of two months. This change is intended to ensure that trademark applications are processed more quickly and that trademark owners do not lose their rights due to late responses.
- The requirement for trademark applicants to pay publication fees within 30 days of being notified of the acceptance decision. This change is intended to ensure that trademark registrations are published in a timely manner.
- The increase of the official fees for some services, such as the filing of a trademark application and the renewal of a trademark registration (3000 QAR instead of 2000 QAR).
- The notable recognition of sound and smell marks as registrable trademarks, provided they can be represented graphically and exhibit distinctiveness. This expanded scope enables businesses to protect a wider range of marks associated with their brands.
- The inclusion of new provisions on licensing, which clarify the rights and obligations of trademark owners and licensees. These provisions are intended to provide greater certainty for trademark owners and licensees. The Regulations do not require that a license be in writing or that it be recorded in the trademark office, however, it is advisable to have a written license agreement in order to clarify the terms of the license and to prevent any disputes and to register the license in order to enforce it against third parties.
The adoption of the GCC Trademarks Implementing Regulations is expected to have a positive impact on the trademark registration system and enforcement in the region. The regulations will help to reduce legal uncertainty, streamline the registration process, and improve the protection of trademarks.