The ‘Cooperation Council for the Arab States of the Gulf, originally known as Gulf Cooperation Council (GCC) is a regional, inter-governmental political and economic union comprising countries such as United Arab Emirates, Saudi Arabia, Oman, Qatar, Kuwait, and Bahrain. The main headquarter of the council is situated in the city of Riyadh (Saudi Arabia) and the agreement of the GCC was signed by the above members on 25 May 1981 forming as an institution.

The definition of trademark has expanded significantly pursuant to the adoption of the GCC trademark law by the state members. The GCC trademark laws (the Trademark law) were enacted to create a standardization between the local trademark laws of each of the GCC member states, namely the United Arab Emirates, Oman, Saudi Arabia, Qatar, Kuwait, and Bahrain. A trademark can be any of such symbols, words, or phrases that are generally used to determine the specific products or goods of a manufacturer that differentiate their products from the other products. For example, ‘Coca-Cola’ is distinguished from other brown color sodas like ‘Pepsi’. It means all the brown color sodas are not categorized in the same group. The name of Coca-Cola is a trademark of its company.

In addition, Article 2 of the trademark law, marks such as color and sound, and smell marks are also entitled with trademarks. It recommends that it is possible to ensure registrations on such marks across the world. However, the adoption of the GCC trademark laws gives the outcome of the more combined set of guidelines for the GCC trademark protection. At the same time, it is imperative to point out that the Trademark law will not ensure a unified filing system. For ensuring the protection and enforcement of their trademarks, the right holders have to file distinctly in each of the appropriate GCC countries. An International Law Firm can guide one regarding the same.

By way of background, the trademark law was originally submitted by the General Secretary of GCC. The cooperation committee also permitted it in 1987. Ergo, the GCC Member States used the laws only for consultive purposes and was not used for the direct application. Before publishing in the official GCC Gazette, the trademark law was further amended in 2006 and 2013 and was permitted by the GCC Supreme Court Council. However, the GCC trademark laws were made from the perspective of the member states of the GCC in which certain essentials have to be satisfied. Such as it must obtain the sanction of the local sovereign state by a verdict and must be issued in the local official gazette of each member of the state to become active (usually six months from the date of issuing of the implementing rules).

Trademark Infringement

Any unauthorized or illegal use of a trademark that violates an individual’s exclusive right over their trademark is often termed trademark infringement. When the ‘infringer’ uses an identical or confusingly similar trademark owned by some other person, it will root to infringement. Some of the trademark infringements that are punishable under the law of the GCC countries are as follows,

In this article, we will examine the laws on trademark infringements in the Middle East. We will wrap up all of the six countries in the GCC, such as the United Arab Emirates, Saudi Arabia, Oman, Qatar, Kuwait, and Bahrain. And also, if anyone wants to know more about the penalties and remedies, including ways to prevent such infringements and protect their commodity, goods, and services, seek the help of intellectual property lawyers who ensure one’s right over one’s trademark is protected.

The Laws on Trademark Infringement in the UAE

UAE’s robust business infrastructure, investors, and tycoons from across the globe move to the country to start their businesses or companies, which eventually resulted in more competition in the market. In UAE, according to the Federal Law Number 37 of 1992 on trademarks which is amended in Arabic expounds that any distinguished forms of names, words, figures, logos, signatures, graphics letters, titles, seals or hallmarks, pictures, patterns, packs, announcements, or any such forms of marks come under trademark infringement. The representation of a product, commodity, or service of a specific brand or company that a particular company owns is termed trademark. In many scenarios where a company sees their company logo or name have been copied even without their permission, affecting their business adversely. At this point, the trademark registration could help us. However, registering the logos, names or titles often protects the company. It legally recognizes the original owner of the goods and services.

UAE has a regulatory framework comprising regulations and legislations issued by the state in its national legislation and mutually accepted internationally. The ruling of the UAE trademark laws includes national legislation as well as regional and international agreements. In UAE, Federal Law Number 37 of 1992 regulates the trademark laws (the Trademark law). The law came into force on January 13, 1993, and was issued on September 28, 1992. In addition to law, there are Cabinet Resolutions Number 18 of 1993 related to the fees of the procedures and Ministry of Economic and Commerce Resolutions Number 6 of 1993, which are subjects to the executive regulations on Trademark.

The United Arab Emirates works as a federal system consisting of seven emirates such as Abu Dhabi, Ajman, Ras Al Khaimah, Dubai, Sharjah, Fujairah, and Umm Al-Quwain. Abu Dhabi, Sharjah, Ajman, Fujairah, and Umm Al-Quwain are integrated into a federal system and are structured as the Court of First Instance, Court Appeals, and Federal Supreme Court at Abu Dhabi. But in the case of Dubai and Ras Al-Khaimah, they have separate court systems. The court system of Dubai is categorized into Court of First Instance, Appeal Courts, and Courts of Cassation, while the Ras Al-Khaimah does not have a Court of Cassation.

The court procedures must be conducted in Arabic, including all the written pleadings and hearings. The Court will take several rounds of pleadings before it concludes. The bench hears the cases in UAE as they don’t have any such jury trials. The witness called for oral evidence is very rare in UAE, especially in civil cases. Usually, courts may appoint experts in technical and complicated matters. The court system in UAE is very much civil, and they don’t have a binding precedent system. The procedure in court related to trademark infringement is as follows:

Federal Law Number 37 of 1992 under the UAE law expounds the penalties of the trademark Infringement. Any infringer who violates or illegally uses the owned trademark of a person will be punished under UAE law. Article 37,38 and 43 covers the penalties which are applied to the infringer who had violated the previously registered trademark, and it is specified as follows:

Along with the penalties, the UAE govt also offers remedies to the aggrieved parties. If a person’s right over his trademark is infringed, then the UAE govt ensures that the aggrieved is provided with adequate remedies as compensation. The remedies offered by the UAE govt for the Infringement of the trademark is detailed as follows:

The Laws on Trademark Infringement in Saudi Arabia

The legal system of the Kingdom of Saudi Arabia is based on Islamic Law (Sharia Law). Sharia law has been interpreted in many ways when compared to different schools of Islamic jurisprudence, which have expanded over the pace of time. However, the trademark law of GCC member states incorporates references to the principles of Sharia. Like any other country in the Middle East, the trademark law is followed in much of the same way. The Trademark Office Court also interprets the laws corresponding to the Sharia principles. For example, the application which incorporates the trademark of the items such as pork products, alcohol, and religious symbols will be rejected on public policy grounds. The legal system of Saudi Arabia is very much of the civil law system in all of its ways and has not adopted a binding precedent system. Before taking the trademark infringement cases to court litigation, often the owners adopt alternative measures through the Anti-commercial fraud departments, police, or the customs authorities.

Trademarks are governed and ruled by trademark legislations. The Trademark law does not create a single unified system of trademark registration for all GCC countries as the registration for the trademark in Saudi Arabia is through the Saudi government body of SAIP only. The trademark laws of GCC states are adopted by the Gulf Cooperation Council member states, including the UAE, Oman, Qatar, Bahrain, Saudi Arabia, and Kuwait. The law came into force in Saudi Arabia under the virtue of Royal Decree M/51 (26/07/1435H) on September 27, 2016. All the implementing regulations of GCC were adopted by the Commercial Cooperation Committee of the GCC in June 2016. The Royal Decree M/19 (23/04/1429H) dealt with the matters under the Anti-commercial Fraud Law, and the implementations of the Anti-Commercial Fraud Laws were issued under the Ministerial Resolutions 155 (06/01/1431H). The trademark laws also comprise the Border Measures Regulations issued in Ministerial Resolution 1277.

The causes of actions are usually referred to as trademark infringement in GCC. Suppose someone has forged a trademark owned by another person registered under the Ministry of Finance. According to Saudi Arabia, anyone who does the following offenses under Article 42A and 42B is termed trademark infringements. Let’s take a closer look at the court procedures, penalties, and remedies regarding trademark infringement in Saudi Arabia.

The United Arab Emirates works as a federal system consisting of seven emirates such as Abu Dhabi, Ajman, Ras Al Khaimah, Dubai, Sharjah, Fujairah, and Umm Al-Quwain. Abu Dhabi, Sharjah, Ajman, Fujairah, and Umm Al-Quwain are integrated into a federal system and are structured as the Court of First Instance, Court Appeals, and Federal Supreme Court at Abu Dhabi. But in the case of Dubai and Ras Al-Khaimah, they have separate court systems. The court system of Dubai is categorized into Court of First Instance, Appeal Courts, and Courts of Cassation, while the Ras Al-Khaimah does not have a Court of Cassation.

The court procedures must be conducted in Arabic, including all the written pleadings and hearings. The Court will take several rounds of pleadings before it concludes. The bench hears the cases in UAE as they don’t have any such jury trials. The witness called for oral evidence is very rare in UAE, especially in civil cases. Usually, courts may appoint experts in technical and complicated matters. The court system in UAE is very much civil, and they don’t have a binding precedent system. The procedure in court related to trademark infringement is as follows:

Federal Law Number 37 of 1992 under the UAE law expounds the penalties of the trademark Infringement. Any infringer who violates or illegally uses the owned trademark of a person will be punished under UAE law. Article 37,38 and 43 covers the penalties which are applied to the infringer who had violated the previously registered trademark, and it is specified as follows:

Along with the penalties, the UAE govt also offers remedies to the aggrieved parties. If a person’s right over his trademark is infringed, then the UAE govt ensures that the aggrieved is provided with adequate remedies as compensation. The remedies offered by the UAE govt for the Infringement of the trademark is detailed as follows:

The Laws on Trademark Infringement in Saudi Arabia

The legal system of the Kingdom of Saudi Arabia is based on Islamic Law (Sharia Law). Sharia law has been interpreted in many ways when compared to different schools of Islamic jurisprudence, which have expanded over the pace of time. However, the trademark law of GCC member states incorporates references to the principles of Sharia. Like any other country in the Middle East, the trademark law is followed in much of the same way. The Trademark Office Court also interprets the laws corresponding to the Sharia principles. For example, the application which incorporates the trademark of the items such as pork products, alcohol, and religious symbols will be rejected on public policy grounds. The legal system of Saudi Arabia is very much of the civil law system in all of its ways and has not adopted a binding precedent system. Before taking the trademark infringement cases to court litigation, often the owners adopt alternative measures through the Anti-commercial fraud departments, police, or the customs authorities.

Trademarks are governed and ruled by trademark legislations. The Trademark law does not create a single unified system of trademark registration for all GCC countries as the registration for the trademark in Saudi Arabia is through the Saudi government body of SAIP only. The trademark laws of GCC states are adopted by the Gulf Cooperation Council member states, including the UAE, Oman, Qatar, Bahrain, Saudi Arabia, and Kuwait. The law came into force in Saudi Arabia under the virtue of Royal Decree M/51 (26/07/1435H) on September 27, 2016. All the implementing regulations of GCC were adopted by the Commercial Cooperation Committee of the GCC in June 2016. The Royal Decree M/19 (23/04/1429H) dealt with the matters under the Anti-commercial Fraud Law, and the implementations of the Anti-Commercial Fraud Laws were issued under the Ministerial Resolutions 155 (06/01/1431H). The trademark laws also comprise the Border Measures Regulations issued in Ministerial Resolution 1277.

The causes of actions are usually referred to as trademark infringement in GCC. Suppose someone has forged a trademark owned by another person registered under the Ministry of Finance. According to Saudi Arabia, anyone who does the following offenses under Article 42A and 42B is termed trademark infringements. Let’s take a closer look at the court procedures, penalties, and remedies regarding trademark infringement in Saudi Arabia.

The Court system of Saudi Arabia as expounded under Saudi Laws comprises of two independent parallel systems named as:

The Administrative Court System also termed the ‘Board of Grievances,’ deals with cases in which the public administration will be considered a party. In Administrative Court System, the process of litigation and hierarchy is defined as follows:

Generally, trademark disputes in Saudi Arabia are administrative. For example, the objections on the trademark applications, trademark cancellation are administrative while the Ministry of Commerce and Investment (regulatory authority) is involved in it. The appeal of the trademark applications-related disputes could be appealed to an administrative court within the timeframe of 60 and 30 days accordingly.

The hierarchy of the General Court system is described as follows:

The first instance court of the General Court is further divided into specialized circuits such as the Labor Circuit, the Criminal Circuit, the Commercial Circuit, and the Personal Matter Circuit. The disputes related to trademark infringement will fall within the jurisdiction of the Commercial Circuit. The decision of the Commercial Court can be appealed to the Court of Appeals. The decision of the Appeal Court is considered as final unless an issue arises. If the party is not satisfied with the Appeal court’s ruling, the party can further appeal before the Supreme Court.

In the case of the Infringement of the Trademark, the party can file suit in the Saudi Courts or file in the Anti-commercial fraud department as the Administrative Courts hear all the cases. Any person who infringes the Trademark will be imposed specific penalties. Under the virtue of Article 42A, the infringer who commits offenses that comes under this class will be punished Infringement, extending from one month to three years along with a fine of between SAR 5000 and SAR 1 million.
Under the virtue of Article 42B, the infringer will be imposed with punishment with an imprisonment of one month to one year along with a fine between SAR 1000 TO SAR 100,000. If offenses are repeated, then penalties will also be doubled, and the Court can order for business closure from anywhere between 15 days to 6 months.

The Court will also provide remedies for the Trademark owners whose rights have been violated, affecting them with damages and injuries. Under Article 40 and Article 41, the Court can award the trademark owner with specific remedies to compensate the victims and have affected the goodwill of their company. The Court adopt such measures to prevent the infringement of the trademark. Under Article 40 and 41, the court can award the owner of the trademark with specific remedies, and they are described as follows:

The first instance court of the General Court is further divided into specialized circuits such as the Labor Circuit, the Criminal Circuit, the Commercial Circuit, and the Personal Matter Circuit. The disputes related to trademark infringement will fall within the jurisdiction of the Commercial Circuit. The decision of the Commercial Court can be appealed to the Court of Appeals. The decision of the Appeal Court is considered as final unless an issue arises. If the party is not satisfied with the Appeal court’s ruling, the party can further appeal before the Supreme Court.

The Laws on Trademark Infringement in Oman

The Omani Trademark office is always interested in inviting foreign investors and citizens who wish to extend their business in Oman and register for a trademark. The Royal Decree Number 33 of 2017 expounds on the laws of trademark in GCC was issued in Oman on July 25, 2017. Like the other GCC countries, the trademark in Oman means distinguishing the goods and services of a person from others. It means giving full authority to the ownership over the goods and services. The laws expound that any word, drawing, color, shape, or number will be protected with trademark registration. So, to make sure that our trademark is not infringed or imitated, one must register the trademark. So, let’s summarize the regulations, procedures of registration, Infringement, and the penalties and remedies of infringement.

In Oman, the Royal Decree Number 67 of 2008 expands the registration, usage, and enforcement of trademarks regulated by the Law of Industrial Rights and termed the IP Law. The executive Legislation of the IP Law is issued by the Ministry of Commerce and Industry (MOCI). It administers the application of its law and its regulations under the virtue of Ministerial decision Number 105/2008, termed the Executive Legislations. Oman ratified the GCC trademark law under the virtue of the Royal Decree Number 33 of 2017, and it was very effective. Whenever the GCC trademark law becomes silent, the IP Law will be activated under the virtue of the Royal Decree Number 33 of 2017. The people who are planning to register their trademarks in Oman will be advised to look into GCC laws and IP laws.

In addition to the GCC laws and the IP laws, the Sultanate of Oman has many conventions and treaties corresponding to intellectual property rights. It comprises WTO, GCC, WIPO, the Berne Convention, the Paris Convention, the Hague conventions, and the Madrid protocol. The infringer will be imposed to criminal punishments under the virtue of IP Law and the GCC trademark laws. If the infringement takes place in any of the ships or other marine fields, the customs authorities are also entitled to confiscate the imitated goods.

The Court system of Oman comprises federal courts, which were established in 1978 influenced by civil jurisdictions. All the court hearings and pleadings, including the written statements, must be in Arabic. If the documents are in other languages must be translated into Arabic. The Court is not binding the precedent or the previous decisions as the Sharia Law governs it. The structure of the Court system in Oman is divided as follows:

All matters regarding the civil and commercial, along with the trademark infringement, come under these competent courts. The three essential things that the Omani courts consider regarding the rulings are the Sharia Laws, the terms of the contract, and rules of customs and practice. Oman has 45 Courts of First Instance and six courts of Appeals. The Supreme Court is considered the court with the supreme authority, and it has jurisdiction over all the jurisdictions. The Supreme Court also has the power to review the lower court’s decisions and supervise the other judges of the lower courts. The authority for the application and interpretation of law also comes within the virtue of the Supreme Court.
The procedures of the court in respect to the trademark infringement are as follows:

Any person who counterfeits, imitates, or forges the trademark of a person, which possibly misleads the public to believe about the ownership, which affected the company’s goodwill, is called an infringer. The infringer will be punished with confinements and a fine. These penalties will be imposed on any person who:

According to the GCC laws, the penalties are defined as follows:

Suppose the rights of a person over his trademark are violated. In that case, the competent authority imposes penalties over the infringer and awards compensation for the loss incurred by the owner of the trademark. On the filing of the suit against the infringer by the original owner of the trademark of goods and services, the competent Court can award the following remedies as well:

The Laws on Trademark Infringement in Qatar

In Qatar, the trademark owner has the right to prevent other parties from imitating his trademark, which could mislead the people or confuse them with the original one or with the already registered trademark. The Sharia Laws govern the legal system of Oman under the virtue of civil courts. Law No.9/2002 covers all regulations regarding the protection of the trademark of the State of Qatar, also known as the Trademark law. The trademark comprises all the marks, names, signatures, words, smell, sound, and designs, and all these can be registered under the virtue of law. The goods and services under the “nice classification” should be applied precisely and separately when writing. The goods and services under class 32, class 33, and some goods under class 29, like alcoholic products and pork meat, cannot be registered and are not permissible in Qatar.

The Qatari laws apply both to the nationals as well as the foreigners of Qatar. Even they are domiciled or not; they are treated equally in Qatar. If the person is not a domicile, they can register the Trademark through another person who is a domicile in Qatar and a legalized power of attorney from the foreign applicant to the person he has assigned for the registration of the Trademark in Qatar. Trademark of goods and services is registered under the Trademark Ministry of Economy and Commerce.

Under the virtue of the trademark laws, the Qatari comprises civil proceedings, and the trademark owner whose rights over their trademarks are infringed could file a suit in the Qatar Courts as they will be awarded civil remedies. The infringer will be held liable and punished with legal penalties for the violation of the law. The owner of the trademark could file the case in the competent courts in Qatar, and the procedures are defined as follows:

Under the virtue of trademark law, any infringer who has infringed the rights over a registered trademark is punished with specific punishments and fines. The infringer will be imprisoned for a term not exceeding two years and a fine not exceeding 20,000 Qatari Riyals. The infringer who commits the following acts will be imposed with the above penalties,

In addition to the above penalties, if anyone violated the laws under the virtue of Article 48 will be amount to imprisonment for a term not exceeding one year and a fine not exceeding 10,000 Qatari Riyals. The violations under the virtue of Article 48 are described as follows:

The Court of Qatar imposes penalties on trademark infringement against the infringer and provides remedies for the aggrieved party. The remedied are awarded to compensate for the loss occurred by the party on the Infringement. Sometimes the Infringement may affect the goodwill of their products and services, which directly affects their business growth. The following are remedies awarded by the Competent Court of Qatar to parties who are aggrieved because of the Infringement:

The Laws on Trademark Infringement in Kuwait

Kuwait’s legal system is based on different sources including Islamic Law. Kuwait is considered the country with the most secular region in the gulf where the Sharia Laws apply only to the Muslim community of Kuwait. The Sharia Laws are not forcefully injected or followed by the non- Muslims residing in the country. The trademark law contains principles similar to all of the GCC countries, including UAE, Saudi Arabia, Oman, Qatar, Bahrain, and Kuwait.

Law Number 13 of 2015 under the GCC trademark law is considered the principal foundation of Trademark law in Kuwait. The trademark law was issued on March 11, 2015, but was published in Official Gazette Number 1228 on March 22, 2015. It came into force and effect on December 28, 2017. Thus, the Registration of the Trademark should be done separately in each of the GCC countries. Kuwait would take the precedents laws into its consideration.

Under the Trademark law, any person who has any objections on the registration of the Trademark and the publication or Infringement on the Trademark could file a case in the competent courts of Kuwait within the 60 days of the Trademark law date of its publication. For litigation purpose, the Courts in Kuwait is classified as:

In case of opposition on the publication and Infringement, a suit must be filed on the following grounds:

The Civil laws follow the proceedings of the Court in respect to trademark infringement. Under the Civil Laws, the party can claim for an injunction order, attachment, damages, or any restrictions on the forged goods. The party can also claim for speedy recovery or rules to block or stop the circulation of the infringed goods, which could demean the goodwill of the original trademarked goods. Let’s discuss the civil proceedings of trademark infringement in the Courts of Kuwait.

Suppose the party wants to prevent the Infringement or to block an imminent infringement. The Trademark owner can bring actions to Court under the virtue of Article 40 of the trademark law, and such measures are issued within ten days after the filing for the move. Such actions are explained as follows:

Any person who has committed trademark infringement will be held liable to confinement and a fine. Under Article 42 of the Trademark Law, any person who forges imitates or counterfeit the registered Trademark owned by another person with mala fide intention to demean the goodwill of the goods or circulate the same for sale will be termed to be as an infringer. All such infringer who commits such act will be imprisonment for a period not exceeding one month and three years.
The infringer will be imposed with a fine not exceeding between KWD100 and KWD 100,000. In some cases, it will be set by both the fine and imprisonment. Under the virtue of Article 43 of trademark law, any infringer who repeats the same offenses will be subjected to double the penalties along with the complete closure of their project. In some instances, the infringer will impose the suspension activities for a minimum period of 15 days or a maximum of 6 months.

The Court will order penalties against a person who infringes a registered trademark. The Court also provides trademark owners remedies for the damage suffered with respect to the goodwill of their goods and services. The remedies awarded by the Court of Kuwait is expanded as follows:

The Laws on Trademark Infringement in Bahrain

The Legal system of Bahrain is a fusion system in which it contains diverse sources of laws, including Sharia Laws. The law related to the Trademark laws is governed by the GCC Trademark laws, which came to force in Bahrain in May 2016. The Legislative Decree Number 11 of 2006 was replaced by the new trademark law of GCC. Along with the GCC trademark law, Bahrain has acceded to certain international conventions and treaties such as WIPO Convention, WTO treaty, Paris Convention, Nice agreements, etc.

The trademark law applies equally to all GCC countries such as UAE, Saudi Arabia, Oman, Qatar, Kuwait, Bahrain. Law Number 6 of 2104 was issued in Bahrain and came into force on May 29, 2016. Since the Trademark law was enforced, it became the principal source for the trademark regulations which govern all the issues related to it. Bahrain also considers the precedent of an international treaty concerning dealing with any of their problems or disputes which the Kingdom signs.

The judiciary of Bahrain is generally classified as two when it comes to the distribution of the Court. The Civil Law Courts and the Sharia Law Courts are the two courts that deal with all the issues in Bahrain. The Civil Courts are entrusted with the jurisdiction of all civil, criminal, and commercial matters. In contrast, the Sharia Law Courts of Bahrain will deal with personal issues, such as marriage, divorce, and inheritance.
There are no specialized courts in Bahrain for dealing with the cases related to the trademarks and are tried by the General Courts of Bahrain. The judges of General Courts are not experts in the trademarks but will develop their experience in the trademark cases over time. In many cases, the Court will also seek the help of the experts to resolve the matters entangled. The procedures of the Bahrain Courts in relation to a trademark are as follows:

Any person who imitates, forge, or counterfeit the registered trademark of a person. The person will be termed an infringer, and the person will be imposed with specific penalties, including confinement or fines. Under the virtue of Article 42 of trademark law, it is expounded that an infringer who has committed infringements will be imprisoned for the period between one month and three years. Infringers will be held liable for such acts. The infringer will be imposed with a fine not exceeding BHD 100 and BHD 100,000 or both in some cases.

Any infringer who is repeating the same offenses will be held liable with the doubled penalties. Under the virtue of Article 43 of trademark law, the infringer will also be sometimes imposed with the forced closure of the enterprise or with suspension activity. The suspension activity may range from 15 days to 6 months, depending on the decree of the dispute. The competent court also published in the gazette, and the convicted party must carry out all the expenses.

The competent court, along with imposing penalties on the infringer, also awards remedies for the affected. Any infringer whose actions of counterfeit, imitation, and forging of registered goodwill often end up demeaning the goodwill of the products and the enterprise. So, to recover the goodwill and to compensate for the damages incurred by the owner of the trademark, the competent Court will often award remedies, and they are following: