02-07-2012 (Newsletter Issue 2/12)Requirements for Legalization of Documents ChangedThe Omani Ministry of Foreign Affairs has issued a notification declaring the accession of Oman to the Apostille Convention (Hague Convention Abolishing the Requirements of Legalization of Foreign Public Documents) by virtue of Sultanate Decree No. 47/2009. The Convention has been effective in Oman as of January 30, 2012.
As such, Oman will start accepting Apostille legalization of documents related to trademarks, patents, industrial designs and all other IP related matters. There will be no need for further legalization up to the Omani Consulate as long as the applicant’s home country is a member of the Apostille Convention.
Source: JAH & Co. IP , Doha, Qatar
05-28-2010 (Newsletter Issue 11/10)
Official Fees Increased
The Omani Commerce and industry minister issued on 28 of April 2010 a decision regarding a substantial increase of all official fees pertaining to all intellectual property (Patents, trademarks; design, etc .) effective from 15th of June 2010.
Legal basis is the Sultanic Decree No. 38/2000, the law of Trademarks, Trade Date, Undisclosed Trade Information and Protection from Unfair Competition.
Oman is a member of the Madrid Protocol and Paris Convention for the Protection of Industrial Property.
Ministerial decision No. 62/2005 stipulating the issuance of the Implementing Regulations for Law of Trademarks, Trade Data, Undisclosed Trade Information, and Protection of Unfair Competition, promulgated by the Sultanic Decree No. 38/2000 was issued on June 25th, 2005.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification, 10th edition
Exception: trademarks cannot be registered for alcoholic beverages.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, colours, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, trade names and titles of establishment.
The application is filed at the Industrial Property Directorate.
A separate application has to be filed for each class.
Foreign applicants need a local agent.
The Apostille Convention (Hague Convention Abolishing the Requirements of Legalization of Foreign Public Documents) has been effective in Oman as of January 30, 2012. As such, Oman accepts Apostille legalization of documents related to trademarks, patents, industrial designs and all other IP related matters. There is no need for further legalization of the power of attorney up to the Omani Consulate as long as the applicant’s home country is a member of the Apostille Convention. If the applicant’s home country is not a member of the Haque Convention, the power of attorney should be authenticated by an Oman consulate.
Foreign applicants do not need a domestic registration. In lieu of a domestic registration a simple copy of the extract from the commercial register of the applicant is needed.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use, or after submission of a copy of the registration certificate of the mark in another country following a substantive examination system.
The processing time from first filing to registration is approx. 6 to 12 months.
Prior to registration, the trademark application is published in the Official Gazette and in a local newspaper.
The opposition period is 90 days from the date of the publication in the Official Gazette.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
90 days from publication date in the WIPO Gazette
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
According to Omani law the owner of the mark has a grace period not exceeding 6 months from the expiration date of the mark to pay the renewal fee.
If the trademark has not been used within 3 years from registration, it may be subject to cancellation by any interested party and before the competent court unless the owner of the mark presents a reasonable excuse to justify his non-use of the mark. A trademark registration will be incontestable, if it gains uninterrupted use for 3 years as of the registration date without any successful legal action against it during that period.
Unauthorized use of a trademark registered under the law, an imitation of such trademark applied on goods or in relation with services of the same class, sale, storing for the purpose of sale, or exhibiting for sale of goods bearing a counterfeit mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods or services of the same class are offenses punishable under the law.
The official fees for filing are USD 135.00 (approx. EUR 110.00), for publication USD 270.00 (approx. EUR 220.00) and for registration USD 135.00 (approx. EUR 110.00) and USD 85 for publication in a local newspaper.
Trademark Licence Agreement
In Oman a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The licensor may also use the mark unless otherwise agreed upon in the contract. The sale of a registered trademark automatically terminates the licence.
According to Omani Law the licence contract must provide the right of the trademark owner to monitor the quality of the licensed goods or services unless otherwise agreed upon by the parties
There are provisions in law for the recordal of a licensee. Recordal is mandatory. The licence must be recorded at the Trademark Office’s Register once the agreement has been signed. There is no prescribed form for the validity of a licence agreement.
The following documents are required for a recordal:
1. The licence agreement executed by the parties, notarised and legalised up to an Omani Consulate (along with a simple Arabic translation)
2. Powers of attorney from the licensor and licensee, legalised up to an Omani Consulate
3. A certified copy of the certificate of incorporation of the licensee, or an extract from the Commercial Register (along with a simple Arabic translation)
The licence agreement becomes effective and enforceable against third parties upon its recordal in the Register. It is published in the Official Gazette.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and may call upon the owner to initiate infringement proceedings. He may also initiate proceedings in his own name if the proprietor refuses or neglects to do so. The licensee does not need to cite the trademark owner as co-defendant in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
Al Alawi & Co Advocates & Legal Consultants, Muscat, OmanJAH & CO. IP
, Doha, Qatar Licensing
Al Alawi & Co Advocates & Legal Consultants, Muscat, Oman