Law No. 13 of 2015 Approving the Trademark Law (Regulation) of the GCC States

Law No. 13 of 2015
Approving the Trademark Law (Regulation) of the States of the Cooperation Council for the Arab States of the Gulf

Articles of Promulgation

Article One

The Trademark Law (Regulation) of the States of the Cooperation Council for the Arab States of the Gulf, the texts of which are attached to this Law, is hereby approved, without prejudice to the provisions of the following Articles.

Article Two

Without prejudice to any more severe penalty provided for in another law, the following shall be punished by imprisonment for a term of not less than one month and not more than three years and a fine of not less than three hundred and eighty-five dinars and not more than seventy-seven thousand dinars, or by either of these two penalties:
1 – Any person who forges a mark registered in accordance with the Law (Regulation), or imitates it in a manner likely to mislead the public, and any person who, in bad faith, uses a forged or imitated mark.
2 – Any person who, in bad faith, places on goods, or uses in connection with his services, a mark owned by another person.

Article Three

Without prejudice to any more severe penalty provided for in another law, the following shall be punished by imprisonment for a term of not less than one month and not more than one year and a fine of not less than eighty dinars and not more than seven thousand seven hundred dinars, or by either of these two penalties:
1 – Any person who sells, offers for sale or circulation, or possesses with intent to sell, goods bearing a forged, imitated, or unlawfully affixed or used mark, with knowledge thereof, and any person who offers services under such a mark.
2 – Any person who uses an unregistered mark in the cases provided for in Clauses (2 to 11) of Article (3) of the Law (Regulation).
3 – Any person who unlawfully indicates on his mark or on his commercial papers or documents anything leading to the belief that the mark has been registered.
4 – Any person who deliberately, in bad faith, omits to affix his registered trademark to the goods or services that it distinguishes.
5 – Any person who possesses tools or materials with intent to use them in imitating or forging registered or well-known trademarks.

Article Four

In the case of recidivism, the recidivist shall be punished by a penalty not exceeding twice the maximum penalty prescribed for the violation, together with the closure of the commercial establishment or project for a period of not less than fifteen days and not more than six months, and the publication of the judgment at the expense of the violator in accordance with the procedures specified by the Executive Regulations.
For the purposes of applying the provisions of the Law (Regulation), a recidivist is any person who has been convicted of one of the violations provided for therein and commits another similar violation within three years from the date on which the judgment against him in the previous violation became final.

Article Five

Employees competent to implement the provisions of the Law (Regulation) and the decisions issued in implementation thereof, who are designated by a decision of the Minister of Commerce and Industry, shall have the capacity of judicial police officers, and in this capacity they shall have the right to enter places whose activities fall within the scope of the provisions of the Law (Regulation) for the purpose of detecting violations.
The relevant authorities shall provide the necessary facilities to these employees to enable them to carry out their work.

Article Six

Section One of Chapter Two, Clauses 1, 2 and 3 of Article 92, and Articles 93, 94 and 95 of Section Three of Part Three of the Commercial Law referred to above, and any provision contrary to the provisions of the Law (Regulation), are hereby repealed.

Article Seven

The Minister of Commerce and Industry shall issue the Executive Regulations and shall specify the fees to be collected for the procedures carried out under the Law (Regulation), taking into account the provisions of Articles 50 and 52 thereof.

Article Eight

The regulations and decisions in force shall continue to apply, insofar as they do not conflict with the provisions of the Law (Regulation), until they are amended or repealed.

Article Nine

The Ministers, each within his competence, shall implement this Law, which shall come into force from the date of its publication in the Official Gazette.

Trademark Law (Regulation)
of the States of the Cooperation Council for the Arab States of the Gulf

Part One: Definitions

Article 1

Definitions:
In applying the provisions of this Law (Regulation), each of the following terms shall have the meaning assigned to it opposite thereto, unless the context of the text requires otherwise:
Council States: the States of the Cooperation Council for the Arab States of the Gulf.
Competent Authority: the ministry responsible for commercial affairs in each of the Council States, which is the authority competent to implement this Law (Regulation).
Minister: the minister concerned with applying the provisions of this Law (Regulation).
Executive Regulations: the regulations issued by the Commercial Cooperation Committee in implementation of this Law (Regulation).
Register: the Trademark Register.

Article 2

Trademark: anything that takes a distinctive form, such as names, words, signatures, letters, symbols, numbers, addresses, seals, drawings, pictures, engravings, packaging, figurative elements, shapes, colour, groups of colours, or a combination thereof, or any sign or group of signs, if used or intended to be used to distinguish the goods or services of an establishment from the goods or services of other establishments, or to indicate the rendering of a service, or the carrying out of control or inspection of goods or services.
A mark relating to sound or smell may be considered a trademark.

Part Two: Procedures

Chapter One: Procedures for the Registration of Trademarks

Article 3

The following shall not be considered a trademark or part thereof, and may not be registered as such:
1- A mark devoid of any distinctive character, or marks consisting of particulars that are merely the name customarily given to goods and services, or the familiar drawings and ordinary pictures of goods.
2- Expressions, drawings or marks that offend public morals or are contrary to public order.
3- Public emblems, flags, military and honorary badges, national and foreign decorations, coins and banknotes, and other symbols of any of the Council States or of any other State, or of Arab or international organisations or any of their institutions, or any imitation of any of the foregoing.
4- The symbols of the Red Crescent or the Red Cross, and other similar symbols, as well as marks that are imitations thereof.
5- Marks identical or similar to symbols of a purely religious nature.
6- Geographical names and particulars, if their use is likely to cause confusion as to the source or origin of the goods or services.
7- The name, title, picture or emblem of another person, unless he or his heirs consent in advance to its use.
8- Particulars relating to honorary distinctions or academic degrees to which the applicant for registration does not prove that he is legally entitled.
9- Marks that are likely to mislead the public, or that contain false particulars as to the origin or source of the goods or services or as to their other qualities, as well as marks containing a fictitious, imitated or forged trade name.
10- Marks owned by natural or legal persons with whom dealing is prohibited in accordance with a decision issued in this regard by the Competent Authority.
11- Any trademark identical or similar to a mark previously filed or registered by others for the same goods or services, or for related goods or services, if the use of the mark sought to be registered is likely to create an impression of a connection between it and the goods or services of the owner of the registered mark, or to harm his interests.
12- Marks whose registration for certain goods or services would result in diminishing the value of the goods or services distinguished by the earlier mark.
13- Marks that constitute a copy, imitation or translation of a well-known trademark, or of part thereof, owned by another person, for use in distinguishing goods or services identical or similar to those which the well-known mark is used to distinguish.
14 – Marks that constitute a copy, imitation or translation of a well-known trademark owned by another person, or of an essential part thereof, for use in distinguishing goods or services identical or not similar to those distinguished by the well-known mark, if such use would indicate a connection between those goods or services and the well-known mark, and it is likely that the interests of the owner of the well-known mark would be harmed.
15- Marks that include the following words or expressions:
Patent, Patented, Registered, Registered Design, Copyright, or similar words and expressions.

Article 4

1- A well-known trademark whose reputation has extended beyond the borders of the country in which it is registered to other countries may not be registered for identical or similar goods or services, unless an application to that effect is filed by the owner of the well-known mark or with his express consent.
2- In determining whether a mark is well-known, regard shall be had to the extent of its knowledge among the relevant public as a result of its promotion, the length of the period of its registration or use, the number of countries in which it is registered or has become well-known, or the value of the mark and the extent of its influence on the promotion of the goods or services which the mark is used to distinguish.
3- Well-known marks may not be registered to distinguish goods or services that are not identical or similar to those distinguished by such marks, if:
A- The use of the mark indicates a connection between the goods or services sought to be distinguished and the goods or services of the owner of the well-known mark.
B- The use of the mark would lead to the likelihood of harm to the interests of the owner of the well-known mark.

Article 5

The following categories shall have the right to register their trademarks:
1- Every natural or legal person holding the nationality of any of the Council States, whether a factory owner, producer, trader, craftsman or owner of a services project.
2- Foreigners residing in any of the Council States who are licensed to practise a commercial, industrial, craft or service business.
3- Foreigners belonging to a State that is a member of a multilateral international convention to which the State, being one of the Council States, is a party, or those residing in such a State.
4- Public departments.

Article 6

1 – A register called the Trademark Register shall be maintained at the Competent Authority, in which all marks shall be recorded, together with the names, addresses and descriptions of the goods or services of their owners, and any transfer of ownership, assignment, licence to use, pledge, renewal, cancellation or any other amendments affecting the marks. Any interested person shall have the right to inspect this Register and to obtain a certified extract therefrom.
2 – The Trademark Register existing at the time this Law (Regulation) comes into force shall be merged into the Register provided for in the preceding clause and shall be considered an integral part thereof.

Article 7

1- Whoever registers a trademark in good faith shall be considered its owner, and ownership of the mark may not be disputed if the registration of the mark has been coupled with its use for a period of at least five years without any judicial dispute regarding it.
2- Whoever was first to use the mark before the person in whose name it was registered may request the competent court to cancel this registration within five years from the date of registration, unless it is proven that the former consented, expressly or impliedly, to the use of the mark by the person in whose name it was registered.

Article 8

An application for registration of a mark shall be submitted to the authority competent to register trademarks, on the form prepared for that purpose, by the person concerned or his representative, in accordance with the conditions specified by the Executive Regulations of this Law (Regulation).

Article 9

1 – A trademark may be registered for one or more classes of goods or services, in accordance with what is specified by the Executive Regulations of this Law (Regulation).
2 – Goods or services shall not be considered similar to each other merely because they are listed in the same class, nor shall goods or services be considered different from each other merely because they are listed in different classes of the same classification.

Article 10

If two or more persons apply at the same time to register the same mark, or close or similar marks, for one class of products or services, all applications shall be suspended until a waiver signed by the disputing parties and certified by the Competent Authority is submitted in favour of one of them, or until a final judgment is rendered in the dispute.

Article 11

If an applicant for registration of a mark, or his successor, wishes to enjoy the right of priority on the basis of an earlier application filed in a State that is a member of a multilateral international convention to which the State, being one of the Council States, is a party, he shall attach to his application a copy of the earlier application and a declaration stating the date and number of the earlier application and the State in which it was filed, within six months from the date of the application for registration on which the right of priority is based; otherwise his right to claim this right shall lapse.

Article 12

1- The Competent Authority may impose such restrictions and amendments as it deems necessary to define and clarify the trademark in a manner that prevents its confusion with another mark previously registered or for which an application for registration has previously been filed, or for any other reason it deems fit.
2- If the applicant for registration does not respond to the Competent Authority within ninety days from the date of being notified thereof, he shall be deemed to have abandoned his application.
3- If the Competent Authority refuses to register the trademark for a reason it deems fit, or makes the registration subject to restrictions or amendments, it shall notify the applicant or his representative in writing of the reasons for its decision.
4- In all cases, the Competent Authority shall decide on the application for registration within a period of ninety days from the date of its submission, if it fulfils the conditions provided for in this Law (Regulation) and its Executive Regulations.

Article 13

1- The applicant for registration or his delegate may file a grievance against the decision of the Competent Authority refusing registration or making it subject to a condition, within sixty days from the date of being notified thereof, before a committee specified by the Executive Regulations of this Law (Regulation), and he may challenge the decision of the committee before the competent court within sixty days from the date of being notified thereof.
2- If the applicant for registration does not file a grievance against the decision refusing registration or making it subject to a condition within the prescribed time limit, or does not carry out what the Competent Authority has requested within this time limit, he shall be deemed to have abandoned his application.

Article 14

1- If the Competent Authority accepts the trademark, it shall, before registering it, announce it by the means of publication specified by the Executive Regulations of this Law (Regulation), and the applicant for registration shall bear the costs of publication.
2- Any interested person may, within sixty days from the date of publication, submit to the Competent Authority a written opposition to the registration of the mark, and the Competent Authority shall notify the applicant for registration of a copy of the opposition within thirty days from the date of its submission. The applicant for registration shall submit to the Competent Authority a written reply to the opposition within sixty days from the date of being notified thereof; otherwise he shall be deemed to have abandoned the application for registration.

Article 15

1- The Competent Authority shall decide on the opposition referred to it, after hearing the opponent and the applicant for registration, or either of them, if necessary.
2- The Competent Authority shall issue a decision accepting or refusing the registration, and in the case of acceptance it may impose such restrictions as it deems necessary.
3- Any interested person may challenge the decision of the Competent Authority before the competent court within thirty days from the date of being notified thereof. A challenge to the decision accepting the registration of the trademark shall not suspend the registration procedures, unless the competent court decides otherwise.

Article 16

If the period specified for opposition expires without any opposition being submitted regarding the acceptance of the application for registration of the trademark, the Competent Authority shall register the trademark immediately upon the expiry of the period specified for opposition.

Article 17

1- If the mark is registered, the effect of registration shall revert to the date of submission of the application, and the owner of the mark shall, as soon as its registration is completed, be given a certificate containing the following particulars:
A – The registration number of the mark.
B- The priority number and date and the State in which the application was filed, if any.
C- The date of submission of the application, the date of registration of the mark, and the date of expiry of the protection period.
D- The name, title, place of residence and nationality of the owner of the mark.
E – A true representation of the mark.
F- A statement of the goods or services for which the mark is designated, and a statement of their class.
2- The owner of the registered trademark shall have the exclusive right to use the mark and to prevent third parties who have not obtained his consent from using it, and from using any sign identical or similar to it – including any geographical indication – in the course of trade to distinguish goods or services related to those for which the trademark is registered, if such use is likely to cause confusion among the public. Such confusion shall be presumed in the case of use of the same mark, or of a mark similar to it, to distinguish goods or services identical to those for which the mark is registered.

Article 18

The owner of a previously registered mark may at any time submit an application to the Competent Authority to make any addition or amendment to his mark, unless this substantially affects the identity of the mark. The Competent Authority shall issue a decision on this application in accordance with the conditions and procedures applicable to original applications for registration,
and a grievance may be filed against, and a challenge made to, that decision by the same means prescribed for decisions issued on such applications.

Article 19

The Competent Authority may add to the Register any particular whose recording has been omitted, and it may amend or delete any particular recorded in the Register without right or that does not correspond to the truth.
Any interested person may also challenge before the competent court any measure taken by the Competent Authority in this regard.

Chapter Two: Period of Trademark Protection

Article 20

1- The period of protection resulting from the registration of a mark shall be ten years. If the right holder wishes to continue the protection for equal periods, he may submit an application for renewal during the last year, under the conditions provided for in this Law (Regulation) and its Executive Regulations.
2- The owner of the trademark shall have the right to renew the registration of the registered mark within the six months following the expiry of the registration.
3- If the six months following the date of expiry of the registration period elapse without the owner of the mark submitting an application for renewal, the Competent Authority shall cancel the mark from the Register.
4- Renewal shall take place without any new examination and shall be announced by the means of publication specified by the Executive Regulations of this Law (Regulation), and without regard to any opposition by third parties.

Article 21

Marks placed on goods displayed at official or officially recognised international exhibitions held within the State shall enjoy temporary protection during the period of their display, if they fulfil the conditions of registration provided for in this Law (Regulation). The Executive Regulations shall specify the rules and procedures for granting temporary protection.

Chapter Three: Cancellation of Trademark Registration

Article 22

Without prejudice to the provisions of Article (7) of this Law, the Competent Authority and any interested person may resort to the competent court with a request for a judgment cancelling a trademark that has been registered without right, and the Competent Authority shall cancel the registration when a final judgment to that effect is submitted to it.

Article 23

The owner of a trademark may request the Competent Authority to cancel the mark from the Register, whether for all the goods or services for which the mark is registered or for part of them only. The application for cancellation shall be submitted in accordance with the conditions and procedures specified by the Executive Regulations of this Law (Regulation). If the use of the mark is licensed under a contract recorded in the Register, it may not be cancelled except with the written consent of the licensee, unless the licensee has expressly waived this right.

Article 24

The competent court may, at the request of any interested person, order the cancellation of the mark from the Register if it is proven to the court that the mark has not been genuinely used for five consecutive years, unless the owner of the mark provides justification for its non-use.

Article 25

If a mark is cancelled from the Register, it may not be re-registered in favour of third parties for the same goods or services, or for similar goods or services, until three years have elapsed from the date of cancellation, unless the cancellation was made pursuant to a judgment of the competent court and that judgment specified a shorter period for the re-registration of the mark.

Article 26

The cancellation of a mark from the Register shall be published by the means of publication specified by the Executive Regulations of this Law (Regulation).

Chapter Four: Transfer of Ownership, Pledge and Attachment of the Mark

Article 27

1- Ownership of a trademark may be transferred, wholly or partly, for consideration or without consideration, or it may be pledged or attached, together with the commercial establishment or the exploitation project whose goods or services the mark is used to distinguish, unless otherwise agreed.
2- Ownership of a trademark may be transferred by inheritance, by will or by gift.
3- In all cases, the transfer of ownership of the mark, or its pledge or attachment, shall not be effective against third parties until it has been recorded in the Trademark Register and published by any means of publication specified by the Executive Regulations of this Law (Regulation).

Article 28

1- The transfer of ownership of the commercial establishment or the exploitation project shall include the marks registered in the name of the transferor that may be considered closely connected with the commercial establishment or the project, unless otherwise agreed.
2- If ownership of the commercial establishment or the project is transferred without transferring ownership of the mark itself, the transferor may continue to manufacture the same goods, or provide the same services, for which the mark is registered, or to trade in them, unless otherwise agreed.

Part Three: Licence Contracts

Article 29

The owner of a mark may license any natural or legal person to use it for all or some of the goods or services for which the mark is registered. The owner of the mark shall have the right to license other persons to use the same mark, and he may also use it himself, unless otherwise agreed. The term of the licence may not exceed the period prescribed for the protection of the mark.

Article 30

No restrictions may be imposed on the licensee that do not arise from the rights conferred by the registration of the mark or that are not necessary for the preservation of these rights.
Nevertheless, the licence contract may include the following restrictions:
1- Defining the scope of the territory or the period of use of the mark.
2- Conditions required by the requirements of effective control of the quality of the goods or services.
3- Obligations imposed on the licensee to refrain from all acts that may result in harm to the trademark.

Article 31

A licence contract for the use of a trademark shall not be recognised unless it is in writing. Its recording in the Register shall not be required; if it is recorded in the Register, the Executive Regulations shall specify the manner in which it is recorded and published.

Article 32

The licensee may not assign the licence to others or grant sub-licences thereunder, unless otherwise agreed.

Article 33

The recordal of the licence contract shall be cancelled from the Register at the request of the owner of the mark or the licensee, after submission of proof of the expiry or rescission of the licence contract.
The Competent Authority shall notify the other party of the request to cancel the recordal of the licence, and the cancellation shall not take place until the Competent Authority has notified the other party of the request to cancel the licence; in this case, the other party may object thereto in accordance with the procedures provided for in the Executive Regulations.

Part Four: Collective Marks, Control Marks, and Marks of Bodies of Public Benefit and Professional Institutions

Article 34

1 – Collective marks, which are used to distinguish the goods or services of establishments belonging to members of a particular entity having legal personality, may be registered.
The application for registration of the collective mark shall be submitted by the representative of this entity, to be used by its members in accordance with the conditions and terms that it specifies, provided that this is approved by the Competent Authority.
2 – The applicant for registration of collective marks shall state in the application for registration that it concerns a collective mark, and shall attach to the application a copy of the conditions for use of the mark sought to be registered.
In all cases, the owner of the registered collective mark shall notify the Competent Authority of any changes to those conditions, and the change shall not be effective until approved by the Competent Authority.
3 – If a collective mark is cancelled, it may not be re-registered in favour of third parties for identical or similar goods or services.
4 – The competent court may, at the request of interested persons, order the cancellation of the registration of a collective mark if it is proven to the court that the registered owner uses the collective mark alone, or that he uses it or permits its use in a manner contrary to the conditions referred to in Clause (2) of this Article, or uses it in a manner likely to mislead the public as to the origin of the goods or any common characteristic of the goods or services for which the collective mark is registered.

Article 35

1 – Legal persons who undertake the control or inspection of certain goods or services as to their source, components, method of manufacture, quality, identity or any other characteristic may request the Competent Authority to register a mark designated for them to indicate the carrying out of control or inspection.
In all cases, this mark may not be registered, nor may its ownership be transferred, except with the approval of the Competent Authority.
2 – The applicant for registration of a control mark shall indicate in the application for registration that it relates to a control or inspection mark, and shall attach to the application a copy of the conditions for use of the marks sought to be registered.
In all cases, the owner of the registered mark shall notify the Competent Authority of any changes to those conditions, and such changes shall not be effective until approved by the Competent Authority.

Article 36

A mark may be registered for non-commercial purposes, such as emblems adopted by bodies of public benefit or used by professional institutions to distinguish their correspondence or to serve as badges for their members.

Article 37

1 – Signs that may be used in the course of trade as geographical indications may constitute a certification mark or a collective mark.
2 – The Executive Regulations shall specify the conditions and rules for registering the marks provided for in Articles (34), (35) and (36) of this Law (Regulation), the documents to be submitted for the purpose of registration, and all other organisational matters relating thereto. The registration of any of those marks shall give rise to all the effects provided for in this Law (Regulation).

Part Five: Enforcement of Rights

Article 38

1 – The right holder, if he has valid grounds for believing that goods that are counterfeit or forged, or that bear a mark similar to his registered trademark in a manner leading to confusion among the public, may be imported, may submit a written application to the authority competent for customs release to suspend the customs release of these goods and not to permit their circulation.
The application shall be supported by evidence sufficient to satisfy the authority competent for customs release that there is, prima facie, an infringement of the applicant’s right in the mark, and the application shall contain sufficient information that may reasonably be available to the applicant to enable that authority to identify the goods concerned reasonably.
2 – The authority competent for customs release shall notify the applicant in writing of its decision on his application within seven days from the date of submission of the application. If the application is accepted, the decision shall be valid for one year from the date of its submission or for the remaining period of protection of the trademark, whichever is earlier, unless the applicant requests a shorter period.
3- The authority competent for customs release may require the applicant to provide an appropriate bond or equivalent security sufficient to protect the defendant and the competent authorities and to prevent abuse of the right to request the suspension of customs release.
4- Without prejudice to the provisions of the preceding clauses, the authority competent for customs release may, on its own initiative, without the need for a complaint or request from the right holder or from third parties, issue a decision suspending the customs release of goods that are imported, in transit or intended for export, upon their arrival in the customs area subject to its jurisdiction, if there is sufficient evidence – prima facie – that these goods are counterfeit or bear without right a mark similar to a registered trademark in a manner leading to confusion among the public.
5- If the authority competent for customs release decides, in application of the provisions of this Article, to suspend the release of goods that have arrived in the customs area subject to its jurisdiction, it shall:
A- Notify the importer of the goods and the right holder of the decision suspending customs release immediately upon its issuance.
B- Notify the right holder, upon his written request, of the names and addresses of the consignor, the importer and the consignee of the goods, and of their quantities.
C – Permit the persons concerned to inspect the goods in accordance with the customs procedures followed in this regard.
The right holder may file an action on the merits of the dispute before the competent court and notify the authority competent for customs release thereof within a period not exceeding ten working days from the date of being notified of the decision suspending the customs release of these goods; otherwise the decision shall be deemed never to have existed, unless that authority or the competent court decides to extend this time limit, in the cases it deems appropriate, for a period not exceeding a further ten days. If an action on the merits of the dispute is filed, the court may uphold, amend or revoke the order.
6- Except in the cases the court deems appropriate, if it is proven to the court that the goods whose customs release has been suspended are counterfeit or forged, or bear without right a trademark similar to a registered trademark in a manner leading to confusion among the public, it shall order the destruction of these goods at the expense of their importer, or their disposal outside commercial channels if their destruction would cause unacceptable harm to public health or the environment.
7- In all cases, the customs release of the goods into commercial channels, or permission for their re-exportation, may not be granted merely by removing the trademark unlawfully affixed.
8- The Minister of Finance, after coordination with the Competent Minister, shall issue a decision specifying the particulars, conditions, rules and procedures relating to the submission of an application to suspend customs release and to deciding on it, and the documents to be attached to such application. In specifying those particulars, regard shall be had to ensuring that this does not lead to deterring recourse to requesting the measure referred to.
For the purposes of this Article, the expression (counterfeit goods) means goods, including packaging, bearing without authorisation a mark identical to a trademark registered for such goods, or a mark that cannot be distinguished in its essential elements from the registered trademark.

Article 39

The provisions of Article (38) of this Law (Regulation) shall not apply to the following:
A – Small quantities of goods of a non-commercial nature contained in travellers’ personal luggage or sent in small consignments.
B – Goods that have been put into circulation in the markets of the exporting country by the owner of the right in the trademark or with his consent.

Article 40

1 – Upon infringement, or to prevent an imminent infringement, of any of the rights established under the provisions of this Law (Regulation), the right holder may obtain an order on petition from the court competent to hear the merits of the dispute to take one or more appropriate provisional measures, including the following:
A – Making a detailed description of the alleged infringement, the goods subject to this infringement, and the materials, tools and equipment used or to be used in any of the foregoing, and preserving the relevant evidence.
B – Attaching the items referred to in the preceding paragraph and the proceeds resulting from the alleged infringement.
C – Preventing goods involving the alleged infringement from entering commercial channels and preventing their export, including imported goods immediately after their customs release.
D – Stopping the infringement or preventing its occurrence.
2 – The court may require the petitioner to submit the evidence in his possession indicating that an infringement of the right has occurred or that an infringement is imminent, and may require him to provide information sufficient to enable the authority competent to execute the provisional measure to identify the goods concerned.
3 – The court shall decide on the petition within a period not exceeding ten days from the date of its submission, except in exceptional cases that it deems appropriate.
4 – The court may, where necessary, issue the order at the request of the petitioner without summoning the other party, if any delay in issuing the order is likely to cause irreparable harm to the claimant, or if there is a fear that the evidence may disappear or be destroyed. In this case, the other party shall be notified of the order without delay immediately upon its issuance, and the notification may, where necessary, be made immediately after the execution of the order.
5 – If the court orders a provisional measure to be taken without summoning the other party, the defendant may, after being notified of the order, file a grievance against it before the competent court within twenty days from the date of his notification, and the court may in this case uphold, amend or revoke the order.
6 – The court may require the petitioner to provide an appropriate bond or equivalent security sufficient to protect the defendant and to prevent abuse of the right. The amount of the bond or equivalent security shall not be so large as to unreasonably deter recourse to requesting the provisional measures referred to.
7 – The right holder shall file the action on the merits of the dispute within twenty days from the date of issuance of the order to take the provisional measure, or from the date of being notified of the rejection of the grievance provided for in Clause (5) of this Article, as the case may be; otherwise this order shall be revoked at the request of the defendant.

Article 41

1 – The right holder, if he has suffered direct harm arising from the infringement of any of his rights established under the provisions of this Law (Regulation), may file an action before the competent court seeking a judgment awarding him compensation sufficient to make good the damage he has suffered as a result of the infringement, including the profits earned by the defendant.
The court shall determine the compensation in the amount it considers sufficient to make good the damage, provided that among the matters the court takes into account in this regard is the value of the goods or service – subject of the infringement – according to what the claimant specifies regarding the retail price or any other legitimate criterion he requests to be applied, or by means of expert opinion.
2 – The right holder may, instead of claiming compensation to make good the damage, including the profits earned by the infringer in accordance with the provisions of the preceding paragraph, request at any time before judgment is rendered in the action that he be awarded appropriate compensation, if it is proven that the infringement consisted of using the trademark in deliberate imitation of the goods or took any other form.
3 – The competent court may, when hearing actions relating to the rights established under the provisions of this Law (Regulation), order the following:
A – The seizure of goods suspected of involving an infringement, the seizure of any materials or tools connected therewith, and any documentary evidence relating to the infringement.
B – Obliging the infringer to stop this infringement, including preventing the export of goods involving an infringement of any of the rights established under the provisions of this Law (Regulation), and preventing imported goods from entering commercial channels immediately after their customs release.
C – Obliging the infringer to provide the competent court or the right holder with the information he has regarding every person or entity that participated in any aspect of the infringement, and regarding the methods of production and channels of distribution of these goods or services, including stating the identity of every person who participated in the production or distribution of the goods or services and identifying his channels of distribution.
4 – The competent court shall, at the request of the right holder, order the destruction of goods proven to be counterfeit, except in exceptional cases, without compensation of any kind to the defendant. It may, without delay, order the destruction of the materials and tools used in the manufacture or production of the counterfeit goods without compensation of any kind to the defendant. The court may, in exceptional cases it deems appropriate, order the disposal of those goods outside commercial channels in a manner that prevents the likelihood of further infringements.
Instead of destroying the goods and the materials and tools used in the manufacture or production of the counterfeit goods, an order may be made for their disposal outside commercial channels, if their destruction would result in unacceptable harm to public health or the environment.
5 – The mere removal of the trademark affixed without right to counterfeit goods shall not be sufficient justification for their release into commercial channels.
6 – The competent court shall assess the expenses and fees of the experts and specialists it delegates to carry out any mission in the action, in a manner commensurate with the size and nature of the mission assigned to them, and in a manner that does not unreasonably prevent recourse to such procedures.

Part Six: Penalties

Article 42

A- Without prejudice to any more severe penalty provided for in another law, the following shall be punished by imprisonment for a term of not less than one month and not more than three years, and a fine of not less than five thousand Saudi riyals, or its equivalent in the currencies of the Council States, and not more than one million riyals, or by either of these two penalties:
1- Any person who forges a mark registered in accordance with this Law (Regulation), or imitates it in a manner likely to mislead the public, and any person who, in bad faith, uses a forged or imitated mark.
2- Any person who, in bad faith, places on goods, or uses in connection with his services, a mark owned by another person.
B- Without prejudice to any more severe penalty provided for in another law, the following shall be punished by imprisonment for a term of not less than one month and not more than one year, and a fine of not less than one thousand Saudi riyals, or its equivalent in the currencies of the Council States, and not more than one hundred thousand riyals, or by either of these two penalties:
1- Any person who sells, offers for sale or circulation, or possesses with intent to sell, goods bearing a forged, imitated, or unlawfully affixed or used mark, with knowledge thereof, as well as any person who offers services under such a mark.
2- Any person who uses an unregistered mark in the cases provided for in Clauses (from 2 to 11) of Article (3).
3- Any person who unlawfully indicates on his mark or on his commercial papers or documents anything leading to the belief that the mark has been registered.
4- Any person who deliberately, in bad faith, omits to affix his registered trademark to the goods or services that it distinguishes.
5- Any person who possesses tools or materials with intent to use them in imitating or forging registered or well-known trademarks.

Article 43

In the case of recidivism, the recidivist shall be punished by a penalty not exceeding twice the maximum penalty prescribed for the violation, together with the closure of the commercial establishment or project for a period of not less than fifteen days and not more than six months, and the publication of the judgment at the expense of the violator in accordance with the procedures specified by the Executive Regulations.
For the purposes of applying the provisions of this Law (Regulation), a recidivist is any person who has been convicted of one of the violations provided for herein and commits another similar violation within three years from the date on which the judgment against him in the previous violation became final.

Article 44

The defendant may take proceedings to claim from the claimant acting in bad faith the compensation that may be due to him as a result of the claimant’s taking the measures provided for in Article (40) of this Law (Regulation), within ninety days from the date of expiry of the time limit provided for in that Article if the attaching party does not file his action, or from the date of issuance of the final judgment in the attaching party’s action relating to the trademark. In all cases, the financial guarantee may not be released to the attaching party except after the issuance of a final judgment in the action brought by the party against whom the attachment was made, finding against him, or after the expiry of the time limit prescribed for that party without such action being filed, unless the judgment issued in the attaching party’s action has decided on the matter of the financial guarantee.

Part Seven: Final Provisions

Article 45

Employees competent to implement the provisions of this Law (Regulation) and the decisions issued in implementation thereof, who are designated by a decision in accordance with the procedures followed in each Council State, shall have the capacity of judicial police officers, and in this capacity they shall have the right to enter places whose activities fall within the scope of the provisions of this Law (Regulation) for the purpose of detecting violations.
The relevant authorities shall provide the necessary facilities to these employees to enable them to carry out their work.

Article 46

The Competent Authority may establish an electronic system and an electronic database available to the public, including a database on the Internet, for submitting applications for the registration and renewal of registration of trademarks and for following up and completing the procedures necessary for registering these marks.

Article 47

Marks registered in accordance with the provisions of the laws, decisions and regulations in force before the date on which the provisions of this Law (Regulation) come into force shall be recognised, and these marks shall enjoy the protection prescribed herein.

Article 48

The provisions of this Law (Regulation) shall apply to applications for the registration of trademarks submitted before the date on which its provisions come into force and not yet decided upon, provided that these applications are amended in accordance with the provisions of this Law (Regulation).

Article 49

[The provisions of this Law (Regulation) shall not prejudice the rules and obligations provided for in the bilateral and international agreements in force in the State]

Article 50

The Executive Regulations shall specify the fees to be collected for the procedures carried out under this Regulation (Law) and its Executive Regulations.

Article 51

The Commercial Cooperation Committee shall have the right to interpret and to propose amendments to this Law (Regulation).

Article 52

The Commercial Cooperation Committee shall issue the Executive Regulations of this Law (Regulation).
* See the Executive Regulations of this Law (Regulation).

Issued on 11 March 2015 and published in the Official Gazette Kuwait Al-Youm on 22 March 2015.