Getting your Trade Marks Registration in Oman

Oman, officially known as the Sultanate of Oman, is a major country in the Western Asia sharing its land borders with Saudi Arabia, United Arab Emirates and Yemen. Oman has marked itself in having a strong geopolitical impact in the region being the member of United Nations, Arab League, Gulf Co-operation Council, Organisation of Islamic Co-operation. Not only with this, Oman has a strong economy owing to its tourism, trading and agricultural produce where it has been categorized as a high-income economy. With the huge dependency of oil exports, mineral fuels have accounted for 82.2% of total produce exports. Tourism is the fastest growing industry in Oman.

^{[Picture Credit : Shutterstock]}

With the socio-economic structure being hyper-centralized rentier welfare state, 80% of the nationals are employers in the private sector. Moreover, the free trade agreement with the United States has eliminated tariff barriers on all consumer and industrial products, and also provided strong protections for foreign businesses investing in Oman. In terms of foreign direct investment (FDI), total investments in 2017 exceeded US$24billion. The highest share of FDI went to the oil and gas sector, which represented around US$13billion (54.2 percent), followed by financial intermediation, which represented US$3.66billion (15.3 percent). FDI is dominated by the United Kingdom with an estimated value of US$11.56billion (48 percent), followed by the UAE USD 2.6billion (10.8 percent), followed by Kuwait USD 1.1billion (4.6 percent).

Trademark in Oman

A trademark is a sign or form used to distinguish the goods, products, or services of one establishment from those of other establishments. The Law on Trademarks was updated in 2000 by Royal Decree 38/2000, which sets out specific rules as to which trademarks may be registered and provides a list of permitted trademarks. In order to be fully protected, a trademark must be registered in the Register of Trademarks and Trade Names at the Ministry of Commerce and Industry in Oman. The registration of a trademark provides protection for 10 years, after which time the registration may be renewed.

Filing requirements

At the time of filing of the trademark application, the applicant needs to provide:

• Copy of the mark.
• Applicant info (name, address, and nationality).
• A list of the goods to be covered by the application (Classes) – translated to Arabic.
• Power of Attorney (POA): Original should be notarized and legalized at the Omani embassy or apostilled and submitted within 60 days of filing.
• A certified copy of the priority document in case claimed should be provided within 3 months of filing date.
• A copy of the commercial certificate translated to Arabic is required at filing.

In case the applicant requires to change the name or address, then certain documents need to be there: Details of the mark; Details of the change specifications; A certified document proving the change of name and/or address submitted at filing; Power of Attorney (POA): Original should be notarized and legalized at the Omani embassy or apostilled submitted at filing.

In case of Assignment of the trademark, the documents required are-

• Power of Attorney signed by the assignee.
• An assignment deed signed by the assignor and the assignee, (indicating the trademark number, trademark and class).
• A simple copy of the Certificate of Incorporation of the assignee or an extract of their entry in the Commercial or a Certificate of Good Standing (along with a simple English translation, if it is not in English).
• Name, address, nationality and profession or nature of business of the assignee.

Examination

The whole process of registration takes around 12-15 months where the application is examined by the TM office within the first couple of months. The examining authority post examination, will issue decision for either acceptance of the application where the publication fees should be settled within 60 days from the official notification date to publish the mark in the official gazette and a local newspaper, otherwise the application will be considered withdrawn. The examining authority can conditionally accept the application, you may appeal the decision or comply with the said conditions within a period of 60 days from the official notification date, otherwise the application would be considered withdrawn or the application will be rejected where the applicant can appeal the decision within a period of 60 days from the official notification date, otherwise the application would be considered withdrawn.

Also, any interested party can oppose the publication of the trademark application within 60 days from the date of publication in the official gazette.

(Time Limit may vary. Clients are requested to check the official website or be in touch with our attorney)

Trademark Renewal

For the trademark renewal, the process takes up 2-3 months to be completed. The renewal application should be filed within the last year of the valid protection period where 6 months grace period after the expiry of the valid protection period is granted for filing late renewal; subject to late penalty fees. After recording the renewal in the TMO database within 1 month from filing the renewal application, the applicant may proceed with settling the publication fees to publish the renewal in the official gazette which is for informative and no one can oppose it. Finally, the certificate will be issued within one week where it will be valid for next 10 years.

Penal Provisions

Article 35 of the Law on Trademarks (Royal Decree No: 38/2000) states as follows:

A punishment by imprisonment for a period not exceeding two years and/or fine not exceeding [Omani Rial] RO 2000 shall be applicable to any person who:

• counterfeits a mark registered under this law, imitates such a mark in a manner that is likely to mislead the public or uses in bad faith a counterfeited or imitated mark;
• knowingly sells, offers for sale or circulation or possesses with the intention to sell products bearing a counterfeited, imitated or illicitly placed mark;
• uses in bad faith a mark identical with or similar to a well-known mark, whether registered or not registered, in a manner that is likely to mislead the public, provided that in the case of a well known mark that is not registered, goods or services are identical or similar;
• contravenes in bad faith provisions on trade indications; and
• intentionally contravenes provisions on unfair competition or protection of trade secrets.

Article 36 discusses preliminary injunctive relief available for trademark infringement and reads as follows:

The owner of a mark may, at any time even before filing a commercial or criminal action, request, by a petition accompanied by an official certificate of the registration of the mark, that the chief judge of the Commerce Court issue an order to take the necessary conservative measures, particularly the seizure of equipment and implements likely to be used or effectively used in committing the offense. The same shall apply to products, goods, titles, packages, papers or whatever bears the infringing mark or indications.

Author:  Saransh Chaturvedi (Advocate, LLM (IIT Kharagpur) – in case of any queries please write back us via email at support@ipandlegalfilings.com or at IP And Legal Filings.