In Oman, the registration, use and enforcement of trademarks is regulated by the Law of Industrial Property Rights, promulgated under Royal Decree No. 67/2008, the (“IP Law
”). The Ministry of Commerce and Industry (“MOCI
”) issued the Executive Regulations of the IP law, which govern the application of the law and its provision, under Ministerial Decision No. 105/2008 (the “Executive Regulations
Pursuant to the Royal Decree No. 33/2017, Oman ratified the GCC Trademark Law and it was indicated that the law would be effective in Oman following publication. However, in the absence of implementing regulations, the GCC Trademark Law has not formally superseded the existing IP Law. Where the GCC Trademark Law is silent, as per the Royal Decree No.33/2017, the IP Law will be considered applicable. Since there is some ambiguity about which law is applicable, it is advisable to be informed of and refer to both laws when dealing with trademarks in Oman.
The IP Law does not positively define what constitutes a trademark within the Decree however, in accordance with the GCC Trademark Law, it is considered that a ‘trademark is anything having a distinctive form such as names, words, signatures, letters, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, packs or any other mark or group of marks if used or intended to be used either to distinguish goods, products or services of a facility or other facilities or to indicate the rendering of a service or the control of inspection of goods or services. Sounds and smells shall be considered as capable of being a trademark’.
Any trademark which is contrary to public order or morality is explicitly excluded from registration.
In addition to the governing laws, the Sultanate of Oman is party to many conventions and treaties related to intellectual property rights, such as: “The World Trade Organization (“WTO
”), the Gulf Cooperation Council (“GCC
”), the World Intellectual Property Organization (“WIPO
”), the Paris Convention, the Berne Convention, the Madrid Protocol, the Hague Conventions, and the Patent Cooperation Treaty.
By Oman joining the Madrid Agreement, a trademark owner can obtain trademark protection in Oman by filing a single application in another member state and designating Oman. Similarly, any Applicant who is resident or a national of any member state can file an international registration application in Oman and designate any of the member states. This means that only one fee is applicable for protection across multiple jurisdictions and any amendments and/or renewals of the registration will be affected through a single administrative process.
Registration process and the required documents
In order to register a trademark, an application must be lodged before the Intellectual Property Department (the “IP Department
”) at the MOCI. At present, there is no online mechanism to facilitate the filing of a trademark, therefore a representative must visit the Ministry in person and lodge a paper application.
As per Oman’s membership to the Nice agreement and the Paris Convention, goods and services must be classified in accordance with the Nice International Classification System, the 11th edition of such is currently in use in Oman. A separate application must be filed for each class of goods or services. It should also be noted that Oman will not permit the registration of goods filed under class 33 related to alcohol, or pork products which fall in class 29. It is recommended that these goods are removed prior to application to avoid any unnecessary objection from the MOCI.
The required documents for application are as follows:
- a Power of Attorney (apostilled or legalized up to the Consulate of Oman);
- a Certificate of Incorporation (apostilled or legalized up to the Consulate of Oman);
- copies of the trademark;
- the list of the goods or services to be covered by the application;
- a certified copy of the priority document (should priority be claimed) within three months as of the filing date of the application.
As Oman is a member of the Hague Convention, apostilled documents will be accepted providing the applicant’s place of domicile is also a member of the Hague Convention. This negates the need for further legalization of the Power of Attorney (or other legal documents) up to the Omani Consulate.
Once the application is submitted, the IP department will examine the application on absolute and relative grounds. Following examination, a decision will be issued either permitting the trademark to progress to publication, to reject the trademark, or to prescribe an amendment to the application e.g. an association request or a disclaimer.
In the case of a rejection or amendment, the Applicant will be able to appeal the decision within a period of 60 days.
Upon acceptance of the application, the applicant shall be permitted to publish the trademark application in the Official Gazette and in a daily newspaper. The opposition period is for a duration of 60 days from the date of the publication (the “Opposition Period
”). The purpose of the opposition period is to allow any concerned party to submit an objection on the registering of the trademark. Such objection may be based on conflicts of interests or potential similarities with a concerned parties existing trademark registrations. Any objection must be strictly submitted within a period of 60 days and it is not possible to obtain an extension to object to an application.
In the case of trademarks filed under the Madrid system, the opposition period begins once the trademark has been published in the Gazette of International Marks and also lasts for a duration of 60 days. It should be noted that, since national applications are required to be published in a local newspaper, it is best practice for IR applications to follow the same procedure. This will ensure that the validity of the IR is never questioned in case of opposition or similar action.
If a written objection is filed by any interested party before the MOCI, the applicant will be granted a period of 60 days from the date of receiving the objection, to respond in writing and convince the MOCI to reject the objection to registration. The concerned party will be able to obtain a copy of the written response. If one party requests a hearing, the MOCI will set a session to hear from both parties and reach a decision following the arguments presented at the hearing. However, if neither party requests a hearing from the outset, a decision will be issued and sent to both parties. Each party will reserve the right to appeal the decision.
If the MOCI supported the acceptance of the registration of the trademark, the applicant will be able to obtain the trademark certificate after paying the prescribed fees.
Where the trademark has been filed under the Madrid System, although you will obtain a statement of grant of protection from WIPO, it is best practice to obtain a local certificate directly from the MOCI in Oman following local and international publication formalities.
A trademark registration in Oman is valid for 10 years from the date of application and renewable for periods of 10 years thereafter.
Prescribed fees by MOCI
The MOCI sets out the registration of trademark fees, which are required to be paid prior to obtaining the trademark certificate. The following table elaborates the service and its official fees/disbursements under the current practice and regulations:
|Filing the application before MOCI.
|Publishing the trademark in the official gazette and Ministry of Trade.
|Publishing the trademark in a daily newspaper
|Obtaining the trademark certificate
*note: these fees are for each application
Infringements of trademarks under IP law
The owner of a registered trademark is entitled to prevent a third party from using identical or similar trademarks of goods and services related to those the mark has been registered for, if such use is likely to create confusion.
The acts of unauthorized usage of the registered trademark or illegal usage of such trademarks i.e. using a counterfeit mark, imitation of trademark, misleading the consumer by using a similar registered trademark, etc. are considered as infringement and must be subject to administrative and criminal punishments, under the IP Law and the GCC Trademark Law.
The owner of the trademark may seek the court to rule a compensation equal to the caused harms and damages and the gain lost and the profits gained by the offender. The court shall take in consideration the value of the products or/and the services subject to infringement. The court also may rule to destruct the products in exceptional circumstances without ruling any kind of compensation.
If infringing products are imported to the Sultanate of Oman, the owner may seek the customs department to stop the shipments based on evidence provided by the trademark owner that there is an infringement is taking place. The customs department is also entitled to seize the products and investigate illegitimate activity should it be suspected.
Authored by Associate, Noor Ambusaidi
Verified by Associate, Felicity Hammond
For further information, please contact Dubai based Partner and Head of Intellectual Property,Munir Suboh
and Oman based Partner, Mundhir Albarwani