Registration process for a trademark

The protection of a trademark can be obtained by registering it at the national and regional levels.371 _{An applicant may complete an application}

369 _{Art 19.}

370 _{R.D. 67/2008, art 42(2) and its amendment under GCCUTML (R.D. 33/2017, art 23.} 371 _{Chapter 1 of GCCUTML (R.D. 33/2017) GCCUTML.}

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at the national or regional trademark office and pay the required fee. At an international level, an applicant has two routes: either they may file the required application with the trademark office of each nation or they may file by using the WIPO Madrid System. This system is considered to be a one-stop solution for registration and management of trademarks in the 98 countries, of which Oman is one.372 _{Table 3.3 below shows the}

registration process for a trademark in Oman.

Table 3.3 Registration process for a trademark and appeal

Steps Procedure Appeal

Application Applicant can file a written request to register a mark at the IPD.373

Application prosecution

Registrar can accept the application or impose a conditional acceptance, reject an application.374

If an application has received a conditional acceptance, or has been refused, an applicant has the right to appeal the registrar’s final decision to a committee within 60 days of being informed of the registrar’s final decision. If the committee refuses the appeal, the applicant has the right to appeal the committee’s final decision to the administrative court within 60

372 _{WIPO, ‘Madrid – The International Trademark System’ (Wipo.int, 2017)} <http://www.wipo.int/madrid/en/> accessed 14 February 2017. It should be noted that Oman is part of the Protocol Relating to the Madrid Agreement and it entered into force on 16 October 2007. See http://www.wipo.int/treaties/en/notifications/madridp- gp/treaty_madridp_gp_175.html.

373 _{The Executive Regulations of Industrial Property Law, Ministerial Decision No}

(105/2008), art 3.

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days of being informed of the registrar’s final decision.375

Opposition217 _{Within 60 days of}

registration’s announcement in the Official Gazette,376 _any

interested person can file a written opposition to the IPD about the registration of a trademark.

The registrar should notify both parties within the time limit set under Gulf Cooperation Council Unified Trade Mark law (GCCUTML).377

The opposition decision can be appealed to the court within 60 days.378

Post-registration The right holder of a registered trademark has the right at any time to apply to the registrar to make any additions or modifications to their mark, but it required that additions or modifications should not

An applicant has the right to appeal the registrar’s final decision.380

375 _{R.D. 67/2008, art 38 (3) (B) and its amendment by GCCUTML (R.D. 33/2017), art}

12.

376 _{The Executive Regulations of Industrial Property Law, Ministerial Decision No}

105/2008 Article 12. In Oman, The Official Gazette considers ‘a governmental publication for laws, royal decrees, royal decision, regulations, ministerial decisions, official and commercial announcements, and any other materials deemed to be necessary for the development and regulation of Omani society. The Official Gazette is regulated by the Law of the Official Gazette.’ See http://mola.gov.om/eng/publications.aspx.

377 _{R.D. 67/2008, art 38(2)(B,C,D) and its amendment under GCCUTML (R.D. 33/2017),}

art 13(2).

378 _{R.D. 67/2008, art 38(2)(B) and its amendment under GCCUTML (R.D. 33/2017), art}

14.

380 _{It applies the same rules stipulated under R.D. 67/2008, art 38(3)(B) and its}

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considerably affect the trademark’s essence.379 _The

effect of trademark registration is to confer these exclusive rights for a period of 10 years. The right holder can renew their trademark for additional periods.

Table 3.3 above clarifies the registration process for a trademark granted under Omani law for the applicant of a trademark and any interested person, as well as the appeal process.381 _{Any interested person can}

oppose an advertised trademark by relying on absolute or relative grounds. ‘Absolute grounds’ means that they can oppose the entire application by proving that the registration of the trademark is in error, for example the mark is non-distinctive or is descriptive of a product and/or services. The assessment under these grounds examines the mark itself. Conversely, ‘relative grounds’ means that the owner of an earlier trademark or right can oppose on these grounds because the applicant’s trademark would conflict with their trademark.382 _{The result of the}

trademark registration is that a right holder can be conferred with the exclusive right to its use or license it to another party to use in return for a required fee. In the event of litigation, it also provides them with legal certainty and enhances an owner’s position during the litigation.383

Furthermore, the owner of a trademark has the right to take legal action

379 _{GCCUTML (R.D. 33/2017), art 17.}

381 _{So a question is whether the Omani government faces any challenges in examining}

trademark applications, which will be the subject of Chapter 5.

382 _{Charlotte Waelde and others, Contemporary Intellectual Property (4th revised edn,}

OUP 2016) 601.

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because civil384 _{and criminal}385 _{remedies have been provided for under}

Omani law, which lists several punishable violations, such as a counterfeit registered trademark and unlawful use of a registered trademark.

This section has explored the legal system for registration and protection of trademarks in Oman. In summary, the Omani legislation benefits from the TRIPS Agreement and OUSFTA, as it brings domestic law into compliance with this agreement.

3.6 Conclusion

The essential international IP treaties and conventions in terms of copyright, patents and trademarks have been explored, and have included the Berne Convention, the Paris Convention and TRIPS. Additionally, the developments related to IP in Oman pre-TRIPS and since TRIPS and OUSFTA have been examined. Oman is a party to a number of international and regional agreements in relation to IPRs and, as a result of becoming a member of WTO and OUSFTA, Oman put a great effort into improving its IP standards. The IP legal framework in Oman has been amended several times to be brought into line with its international commitments under TRIPS and OUSFTA.

The three main IP terms, namely copyright, patents and trademarks, have been discussed. With regard to the copyright system, the owner of copyrighted work has the moral and economic rights, which allow authors to prevent modifications of their works even when the ownership of such works has been passed to another individual. The copyright owner has the right to transfer their copyright ownership to anyone they choose by licence. The law clarifies fair use policy to balance the right holder and public interest. This means copyright framework does not give the owner

384 _{For example, confiscation orders, destruction orders and precautionary measures.} 385 _{R.D. 67/2008 under Chapter 6 and its amendment under GCCUTML (R.D. 33/2017),}

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an exclusive right to benefit from this framework, but it leaves room for safeguarding the public interest through the fair use policy. In addition to that, it is not obligatory to register or deposit copyrighted work. Thus, this system can promote cultural and economic development.

In terms of patents, Oman’s patent system succeeded in making the patent law more compatible with international standards (TRIPS and OUSFTA). It clarifies the conditions of patentability, which stipulate that the invention needs to be new, possess an inventive step and be capable of industrial application. The Omani legislation lists under Article 2(1) and (2) such subject matter that is not patentable; in particular, inventions that are contrary to public order and morality do not qualify for patent protection.386 _{With regard to trademarks, Oman has made a contribution}

in expanding the scope of protection; for example, the OUSFTA has a great impact on the IPRL387 _{in terms of defining trademarks. It obliges}

the Omani legislation to accept the registration of a sign which is recognizable by sight, such as sounds and scents.388 _{It also simplifies the}

procedure of registration, promotes legal certainty and so on. A right holder can confer an exclusive right to use it or license it to another party in return for a fee.

Despite this successes in improving the Omani IP legal system, challenges still exist, which will be subject of subsequent chapters.

Chapter 4 addresses various challenges including the extent to which IP rights protection in Oman can be recognized under Islamic law. A further question concerns the extent to which Islamic law regulates the scope of Western concepts of IP law, which underpin the Omani national IP law.

386 _{(Which will be discussed under Chapter 5 as an instrument that can be used by Oman}

to protect its culture.)

387 _{IPRL R.D. 67/2008.}

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Chapter 5 examines the role of IP administrative institutions in serving Omani Islamic culture and economy by managing IP rights (protection, enforcement) and activation-related IP legal authority and increasing the level of IP awareness within Omani businesses. In addition, it evaluates the extent to which Oman can adopt an Islamic IP approach through the MERA as a way of enhancing IP framework awareness and understanding to serve its cultural and economic growth.

Finally, Chapter 6 aims to achieves its objectives by gathering primary data to determine the level of IP awareness within SMEs. It is followed by an analysis which identifies general patterns in the perceptions and opinions of SMEs. The results have been critically interpreted to develop a better understanding in relation to level of IP awareness and the factors which affect their understanding.

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CHAPTER 4 AN ISLAMIC APPROACH TO IPR