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Before Administrative Court in Riyadh

Opposition on the basis of imitation of family name by the applicant of trademark.

A dictionary word cannot be refused registration merely on the basis of a family name of any person.

In this case, the plaintiff filed an opposition against the decision of Ministry of Commerce and Industry (MoCI) to accept the word Al Jazzar in favor of applicant, in that this name is the family name of the plaintiff and under Saudi trademark law, it is prohibited to register names of other people, pictures, or trade names unless those people or their heirs agree to such use.

The defendant argued that the two trademarks are different in that the applied trademark consists of the words, PARK AVENUE, written distinctively within a framed rectangle whereas the plaintiff trademark consists of the word, AVENUE. The defendant further argued that both trademarks differ in pronunciation and form in a way that there are no chances of confusion to consumers. The applicant further added that its trademark is also registered in country of origin before the plaintiff registered its trademark in the Kingdom of Saudi Arabia (KSA), and therefore the plaintiff has no cause to object the accepted mark.

In its decision the learned judge ruled that a personal name means a name that identifies a specific person and Al Jazzar is not the name of a specific person; thus it does not identify the plaintiff only. The trademark, subject of registration application, consists of a number of elements: the word Al Jazzar written in Arabic letters, as well as a circular flower like-drawing with two ribbons hanging from it. The English translation of Al Jazzar is the Butcher.

The court further ruled that the trademark protection is not merely for the word Al Jazzar rather the protection will be for a trademark as whole. The word Al Jazzar contained in the trademark denotes a person who works as a butcher, not a family name; hence it is not included in the prohibition provided for in trademark law as relied upon by the plaintiff. The legal memoranda approved by the Minister of MoCI, prohibiting the registration of family names, are explanatory memoranda to the Law. The court stressed on the fact that Linguistically, a person who works as a butcher is called Al Jazzar, therefore the term is not used to denote a family name and is not an attempt to use the family name of plaintiff. The registration decision was declared as consistent with the Law and the case was dismissed.

Case No 7151, q, 1436H, between BENTELY Motors CO. vs. Ministry of Commerce

Cancellation of non-used trademark

An un-used trademark for consecutive five years warrants cancellation under Saudi trademark law.

In this case, the plaintiff Bentley Motors Company applied for registration of trademark (BENTLEY), class (14), and the trademark office refused the application on the ground that there was a formerly identical registered trademark in the name of OSARA S.A. The plaintiff brought this cancellation action based on Article (25) of the Trademark Law which provides that: “Authorized directorate and any interested party may claim cancellation of trademark in the following cases: (1) if the trademark owner has not used his mark for more than consecutive five years without a legitimate cause” the trademark BENTELY in class (14) was registered in since 1418, however, the owner is no longer using the mark and therefore, it should be cancelled from the record.

The defendant “trademark registration office” pleaded that the trademark BENTELY AND B was refused because of existence of former identical mark BENTELY, and plaintiff’s application is contrary to Article (2/y) which provided for refusal of registration of any sign identical or similar to a mark already registered in KSA for identical or similar goods or services. Registration of this mark in favor of plaintiff means infringement of third parties intellectual rights which is contrary to the law and Islamic sharia as well.

 Based on Article (25) above mentioned, the court concluded that: the only point that plaintiff has to prove is whether the mark is in actual use in the market or not. The court added that the survey conducted by an authorized office proved that on their visit to more than (30) stores and sale points of watches and their accessories, in KSA big cities, there was no use of any products in the name of BENTELY trademark. Accordingly, the court concluded that, there is no way other than to apply Article (25) and rule in favor of the plaintiff by ordering cancellation of the mark.

Case No. 645 Novartis AG vs Saudi Generic Company

Registration of pharmaceutical generic product with drugs department does not exempt generics from liability of patent infringement.

In the subject case, the Plaintiff Novartis AG filed patent infringement case against local generic company on the basis of GCC Patent for its drug exjade. The case was filed before Patent Dispute Committee, having original jurisdiction to adjudicate the case.

The stance of plaintiff was that the defendant has started commercial exploitation of infringing product chelaton in Saudi Arabia, which is exclusively reserved for plaintiff under GCC Patent law, enforceable in Saudi Arabia. The plaintiff relied upon the rights granted under GCC Patent law, and enforcement provisions as provided under national Saudi patent law.

The defendant argued that its product is registered with Saudi Food and Drugs Authority (SFDA) and as such the defendant has been granted right to make commercial exploitation of the registered drug by a government body.

The issue before committee as framed in the case was, whether drugs registration provides exemption to such registrant from liability of infringement under patent law.

The plaintiff argued that since the two laws are distinct and addresses different subject matters, therefore registration under SFDA laws does not remove potential liability under patent law. The plaintiff further argued that establishing safety and efficacy under SFDA laws is nowhere mentioned as an exception or exemption to liability under patent law, therefore the infringement established as per evidence brought forward by plaintiff makes the defendant liable for patent infringement.

In its judgement, the committee ruled that once a patent is granted by issuing authority, any further exploitation by any entity without authorization is an infringement under GCC patent law and this is irrespective of registration with SFDA. Permanent injunction was issued ordering defendant not to make commercial exploitation of infringing product.

Case No. 1443/1/q of 1436H

Cancellation of Trademark on the basis of Fraudulent registration

Mere similarity with earlier marks does not establish fraud. Fraud shall be proved separately.

The summary of the case facts is that the Plaintiff filed a complaint to Administrative Court in Riyadh with a request to cancel the registration of a registered trademark in Class 43 due to the fact that it is the prior creator, user and registrants of the mark in different countries for the same class. The Plaintiff argued that since it is the owner of other registrations of the same mark in most countries of the world, and that the defendant was aware of its international fame including in Saudi Arabia, the trademark registration is under violated of Saudi trademark law and is tantamount to bad faith registration. According to applicable trademark law to the dispute, if a trademark was registered through fraud or false information, an aggrieved party could file cancellation proceedings.

The defendant mainly argued on the fact that the trademark registration was acquired through proper channel and that the plaintiff did not oppose the acceptance during publication period, therefore the allegation of fraud does not stand in this case.

In its decision the learned judge mentioned that an action brought on the basis of fraudulent registration has a necessary element, which is similarity between impugned trademark and the earlier mark of the plaintiff. The court further ruled out that similarity per se is not decisive in case of fraudulent registrations and that similarity does not (always) itself proves fraud on part of defendants. If a plaintiff is pleading Fraudulent registration, the burden of proof is upon the plaintiff to establish that fraud actually occurred. Unless fraud is established to the satisfaction of court with evidence, the court cannot infer fraud by comparing two trademarks.

The case was refused. In this case, court did not specify what would constitute fraud if earlier international registrations, prior use and similarity are not sufficient to infer fraud. This judgement conflicts with some other judgements in Saudi Arabia where similarity, earlier registrations and use in Saudi Arabia were relied upon to declare fraudulent registrations, which ultimately led to cancellation order from court.

Case No. 4169 between LEDVANCE Gmbh vs Ministry of Commerce & Investment (MoCI)

Assignment filed during appeal is a new fact and cannot be applied to trademark application filed prior to change of status.

Refusal of Trademark on relative ground. Citation of earlier mark owned by a related company. Assignment made during appeal stage.

LEDVANCE Gmbh filed a trademark application with MoCI Riyadh for registration of a trademark LEDVANCE. At examination stage, trademark office issued a refusal notice and cited a similar earlier registered trademark LEDVANCE & device in the name of OSRAM Gmbh in the same class.

The Applicant filed appeal arguing that owner of cited mark is a related company to applicant and that both companies are from the same group. During appeal to trademark appeal committee, the applicant made an assignment of cited mark in order to overcome the refusal. Appeal committee refused appeal on the basis of similarity between the two marks which may lead to public confusion.

Applicant filed appeal to Administrative Court arguing two main points, first that the owner of cited mark is a related company to applicant and second that the cited mark is now assigned to the applicant. The applicant requested the court to allow applied mark to registration since the new facts before court (assignment) does not justify refusal of this mark.

In its decision, the learned judge ruled that the appeal before court will be decided on the basis of the facts prevailing at the time of filing application. The new legal status as a new fact cannot be applied to trademark application filed prior to change of status, therefore the applicant (appellant) cannot claim any relief on the basis of new facts. The court refused the argument that the citation is wrongful due to the fact that earlier mark was owned by a related company. Appeal was denied and appellant was advised to file a new trademark application. 

Saudi courts have shown different approaches to similar cases. In some of earlier cases, courts have accepted new facts arised during appeal stage. On the point of related companies, the dominant practice of courts is that an earlier conflicting mark owned by a related company is a barrier to registration, and that for application of trademark law, such related entities will be considered as separate entities.

Case No. 12230/1/q between Roxtec International AB Vs. Mashareq Commercial Technical Institution.

Infringement of a registered trademark

Goods not from original source shall be destroyed. Damages will require cause-and-effect relationship

This case was filed on the basis of a registered trademark ROXTEC in Saudi Arabia. The claim of the plaintiff was that the defendant is selling counterfeit products using the registered trademark of the plaintiff which is prohibited under Saudi trademark law. Proceedings were initiated before Administrative Court in Riyadh.

The defendant pleaded that the products were purchased from a third party as an intermediary, and that intermediary had purchased the goods from manufacturer. On this basis, the stance of defendant was that there is no liability of infringement. The defendant also relied on decision in criminal proceedings, in a same case, initiated separately by Bureau of Investigation and Prosecution where the court declared that defendant is not liable since the goods were purchased from third party and such third party had purchased this from manufacturer.

The Administrative Court relied on the outcome of Criminal proceedings and did not put liability upon the defendant, however the court further ruled that it is clear from the investigation report of government agency that the goods are not from the original source, therefore the goods are infringing goods under Saudi trademark law. The court ordered the defendant to stop dealing in such infringing goods and further ordered that all the infringing goods shall be destructed.

Court refused to award compensation due to lack of sufficient evidence which could establish cause and effect relationship as required under Islamic shariah law. The fact that defendant had purchased goods from intermediary, and lack of sufficient evidence to prove damages were relied upon for refusal of compensation award.

Case No. 27621/1/s

Opposition against acceptance of trademark by MoCI.

Similarity in dominant part will lead to confusion in market.

In this case, the plaintiff brought an action against decision of MoCI for accepting and publishing trademark SUPER STAR. The argument of the opponent (plaintiff) was that the published mark is similar to the earlier registered trademark of opponent in the same class and that the MoCI decision of acceptance is in violation of Saudi trademark law. The opponent further argued that   the defendant’s mark (SUPER STAR) violates its intellectual property rights in the mark (ALL STAR), while the MoCI accept the application despite the existence of former registration.

In support of its assertions over similarity, the opponent argued that the two marks are similar in the second syllable (STAR) and that the applicant has merely added a different word in the second part, which does not make the two marks distinguishable for an average unwary consumer. The argument of defendant was that the two marks are different since the applied mark is not a STAR rather a combination of SUPER, STAR and a device, which as makes is distinguishable from opponent’s mark.

The court ruled that the mark subject matter of opposition is acceptance of mark which consists of words SUPER STAR, in Latin letters and red star drawing, and the plaintiff’s mark which consists of the words ALL STAR in Latin letters, and pentagram drawing, inside a circle. Upon examination of the two trademarks, the court decided that the two marks are similar generally, and identical in the major element (star) drawing as well as their registration in the same class (25), therefor, this similarity will ultimately mislead the public and lead to confusion between the two marks, and such confusion will cause harm to the registered mark owner. Consequently, the court nullified the decision of MoCI.

Case No. 9798 between Tolife Technologies Pty Ltd vs Fares Yahya Mashreqi Trading Co.

Opposition on the basis of un-registered well-known trademark

Earlier use and fame in Saudi Arabia is sufficient cause to cancel a later trademark application.

In this case before Administrative Court in Riyadh a trademark V-COMB accepted and published for registration was challenged by Tolife Technologies of Australia on the basis of foreign registrations and use of mark in Saudi Arabia. The trademark of opponent was not registered in Saudi Arabia.

The opponent argued that the applicant has wholly copied its trademark V-COMB and that the applicant was well aware of the fame of V-COMB in favor of opponent. MoCI as a second respondent argued that since the mark of opponent is not registered in MoCI records, the only reason for court to reverse the acceptance decision will be if opponent proves fame of mark in Saudi Arabia. The opponent filed evidence of use in Saudi Arabia and submitted a copy of local distribution agreement. Advertising material used in Saudi Arabia were also submitted with court alongwith foreign registrations details in multiple countries.

In its judgement the learned judge ruled that the earlier registrations in different countries and fame of opponent’s trademark is established with the evidence on record including local distributor agreement and advertising material. The fact that opponent’s mark is used in Saudi Arabia under identical trademark as filed by applicant (defendant) clearly establish imitation. The court further ruled that well-known marks should also be protected under international conventions to which Saudi Arabia is a member. The applied mark was refused by the court.

This case is a landmark case for enforcement of an unregistered trademark with a prior use in Saudi Arabia.

LEGO

A mark similar or identical to an unregistered well-known mark cannot be registered by third parties in Saudi Arabia.

In this opposition, Kadasa IP represented the opponent against publication of trademark LEGO in Latin characters in Class 35, concerning advertising matters. The opponent alleged that the opposed mark is identical with its trademark LEGO registered in the same class and many other classes. The opponent further pleaded that acceptance of the published mark by the trademark office will cause confusion since the two marks are identical and the published mark is a blatant imitation of   well-known mark registered in multiple classes internationally.

The applicant responded that even if opponent has multiple registrations for LEGO in many countries including Saudi Arabia, nevertheless, there is no registration for LEGO in Class 35 in Saudi Arabia. Applicant further argued that registration in many classes in Saudi Arabia does not prevent others from registering the same mark in any class for which opponent does not have registration.

The trademark office evaluated positions taken by both parties and issued decision based on provision related to confusing similarity with earlier trademarks under the GCC Trademark Law. The decision stated that the published mark LEGO is truly identical with the registered mark, and that the law prevents registration of any mark which is similar to or identical with a prior registered trademark. In the current situation, registration of the published mark will ultimately lead to confusion in consumers’ minds, which is prohibited by the law.

The decision further stated that the published mark could neither be registered in Class 35 nor in any other class for the reason that the trademark LEGO is a famous and well-known mark in view of the evidence submitted by the opponent. The decision further stated that the well-known status of opponent’s mark prevents the published mark from registration in Saudi Arabia even though the trademark LEGO is not registered in Class 35 in Saudi Arabia.

This decision indicates the trend towards recognition of well-known marks in Saudi Arabia. Although the trend is encouraging however due to possibility of conflicting judgements, it is advisable for owners of famous brands to register trademarks in all classes of interest and specially in classes with broad scope, e.g. Class 35.

Descriptive marks

Decision in Administrative case No: (1121- 1436) H

Trademarks describing the goods or services applied for should not be accepted.

Facts:

This case discusses the requirement of distinctiveness under Saudi trademark law. Trademark application for AGE REVITALIZE in Class 3 was refused by the Trademark Office on the basis of descriptiveness for the goods covered in the application.

The applicant filed appeal to the administrative court seeking revocation of the decision of the Trademark Committee which upheld examiner’s decision of refusal of registration of the word mark “AGE REVITALIZE), in Latin characters in class (3). The refusal was based on Article 2 of the former Saudi Trademarks Law equivalent to article 3 of the current GCC Trademark Law, applicable in Saudi, which provides as follows:

“Marks devoid of any distinctive character or describe the goods or services etc.”

The applicant contested that article 2 is not applicable to his client trademark since the mark is distinctive and does not describe the features of the goods covered. The applicant further pleaded that the mark is in compliance with Article 1 of the former Saudi Trademarks Law “article 2 in the current law” which defined the trademark as any mark having a distinctive form such as names, words, signatures, letters, figures, drawings, logos,… etc.” and that his client mark is a combination of words capable of distinguishing goods and services. The applicant requested the court to cancel the decision of the Trademark Committee and allow the mark for registration. The defendant (MoCI) responded to the applicant memorandum and asserted that the mark “AGE REVITALIZE” is clearly descriptive in that the mark describes the goods covered as giving new life or energy or activity, therefore, the mark is contrary to article 2 of the law. The court was requested to dismiss the plaintiff’s case.

The administrative court in Riyadh upheld the decision of the Trademark Committee and refused registration of the mark “AGE REVITALIZE” on the ground of descriptiveness of the mark. The court mentioned that the word “REVITALIZE” is undeniably descriptive, it gives clear identification to the goods covered as giving life or energy or activity which is prohibited in view of Article 2 of the Trademark Law.