- Ownership of marks
Who may apply?
According to the new trademark law adopted in Saudi Arabia, effective from September 27, 2016, the following entities are entitled to register their respective trademarks:
1. Any natural or legal person who is a national of a Gulf Cooperation Council (GCC) state and an owner of a factory or a product, a craftsman or trader, or owner of a private service project.
2. Foreigners residing in any of the GCC states and who are licensed to engage in any activities relating to trade, industry, craft or service.
3. Foreigners who are nationals of a country which is a member of an international multilateral treaty that a state of the GCC countries is a party to or persons residing in that country.
4. Public agencies.
According to current practice, Saudi trademark office requires commercial registration certificate from local entities along with trademark application. It is not a requirement to provide evidence of use or statement of intention to use trademark.
- Scope of trademark
What may and may not be protected and registered as a trademark? (Please distinguish between rights pursuant to registration and rights under the common law, if any, and note whether service marks or ‘non-traditional’ marks, such as sounds, smells, designs, etc, may also be registered).
The new trademark law has extended subject matter of trademark in Saudi Arabia. The law provides non-exhaustive list of registrable trademarks. Anything with distinctive character can be a trademark, such as names, words, signatures, letters, symbols, numbers, titles, stamps, drawings, pictures, inscriptions, packaging, figurative elements, shapes or color, groups of colors, or combinations thereof, or any sign or a group of signs used or intended to be used to distinguish the goods or services of one undertaking from the goods or services of another undertaking or intended to identify a service or as a certification mark in respect of goods or services.
For the first time in Saudi Arabia, the law has explicitly recognized smell and sounds as trademarks. The test of distinctiveness will be however applicable in each case, which may be strictly applied in case of non-conventional trademarks. Presently there is no standard approach towards three-dimensional trademarks, however, some trademarks e.g shape of bottles are registered in Saudi Arabia. In the new law, inclusion of term “packaging” in subject matter of trademark seems as an attempt to include three-dimensional marks.
The law provides detailed list of exclusionary subject matters.
- A mark which is devoid of any distinctive character or which consists of representations that are no more than customary names given by custom to goods and services, or conventional drawings and ordinary images of the goods.
- Expressions, drawings or marks that contravenes public morals or public order.
- Public emblems, flags, military emblems and other insignia belonging to any of GCC states, other states, Arab or international organizations or any of their agencies, or any imitation of any of them.
- Symbols the Red Crescent or Red Cross and any other similar symbols. As well as imitations of any of them.
- Marks that are identical or similar to symbols of a purely religious nature.
- Geographic names, if their use is likely to cause confusion regarding the source or origin of the goods or services.
- The name of another, surname, photograph or logo, unless he or his successors has previously consented to its use.
- Information relating to honorary or academic degrees which the applicant for registration cannot prove a legal entitlement.
- Marks which are likely to mislead the public, or contain a false information as to the origin or source of the goods or services or their characteristics and other marks which contain a fictitious, imitated or forged commercial name.
- Marks owned by natural or legal persons with whom dealing is banned pursuant to a decision issued in this respect by the competent authority.
- Marks that are identical or similar to a mark previously filed or registered by others in respect of the same goods or services or similar goods or services if the use of the mark to be registered would generate linkage with the other owner’s registered goods or services or damage his interests.
- Marks whose registration for some goods or services may reduce the value of the goods or services distinguished by the previous mark.
- Marks which are copies, imitation or translation of a famous trademark or part thereof which is owned by others, to be used to distinguish goods or services identical or similar to those distinguished by the famous mark.
- Marks which are copies, imitation or translation of a famous trademark or an essential part thereof owned by others, to be used to distinguish goods or services not identical or similar to those distinguished by the famous mark, if such use indicates a connection between such goods and services and the famous mark and could likely damage the interests of the owner of the famous mark.
- Marks which contain the following words or phrases:“Patent”, “Patented”, “Registered” or “Registered drawing” or “copyright “ or similar words and phrases.
In practice, certain goods and services, inter alia, having religious connotation such as Christmas tree, or prohibited under Shariah law, for example, bars, dance clubs and any product or services with reference to alcohol cannot be covered under trademark registration.
- Common law trademarks
Can trademark rights be established without registration?
In Saudi Arabia, common law rights are not recognized. Trademark rights are acquired only after registration of trademarks. The quasi-judicial bodies and courts in Saudi Arabia are reluctant to recognize unregistered trademark rights. Exception to this rule is only for well-known trademarks. There is a heavy burden of proof upon claimant of well-known mark to establish fame of mark in Saudi Arabia, and the law specifies the requirement. Fame of trademark will be determined by different factors including recognition of mark in eyes of concerned consumers, length of period of use or registration in case of registered mark, number of international registrations and commercial impact it has produced in markets.
If a claimant is able to provide sufficient evidence in court, rights over unregistered well-known mark can be recognized.
- Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration? What additional documentation is needed to file a trademark application (eg, power of attorney, certificate of corporate good standing, etc)? (It might be useful to the reader to know what an average total cost is in relation to the registration of an average mark in a single class.)
The online registration process in Saudi Arabia is relatively fast track. Registration process from filing to issuance of registration may take upto 04 months. The estimated time may increase in case of office actions issued by trademark office, which may include condition of disclaimer, deletion of certain terms, and amendment in trademark. In case of opposition, the estimated time may be further delayed by 09 to 12 months.
Documentations required for filing of trademark application is legalized power of attorney upto Saudi consulate and notarization in case of Saudi entity, clear image of trademark, priority document if priority is claimed, and commercial registration certificate for Saudi applicants in some cases. According to online procedure, the first step is to upload power of attorney for examination by trademark office. After acceptance of power of attorney, which usually does not take more than half of a working day, further process for application can be initiated. The trademark office does not consider uploading of power of attorney as initiation of filing process and this, in some (rare) cases, has effect of losing deadline for claiming priority. It is therefore not recommended to apply for trademarks with priority claim on the deadline of priority claim.
The total official cost from filing to registration of one trademark in one class, without opposition, is USD 2405. Attorney fee may vary.
- Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
For registration of a mark, Saudi Arabia has adopted international nice classifications. The online portal for filing applications substantially includes all goods and services as provided under international nice classification. However, in order to ensure that prohibited goods and services are not covered by trademark applications, Saudi trademark office has either removed some of such goods or services from online portal or the portal is programmed in such a way that it is not possible to select such prohibited goods or services, even if available.
As mentioned in paragraph 2 above, prohibited goods or services, inter alia, includes goods or services with religious connotation such as Christmas tree or prohibited under Shariah (Islamic) law, for example, bars, dance clubs and any product or services with reference to alcohol.
Under new trademark law effective from September 27, 2016, there is provision for multi-class filings, however, the trademark office is yet to issue procedure and cost for filing such applications.
- Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? May applicants respond to rejections by the trademark office?
In Saudi Arabia, the trademark office will first examine power of attorney. Once accepted, the applicant will file online application. The trademark office will then examine application on both absolute and relative grounds. As per current practice, the trademark office provides one chance to amend the application if (i) there is conflicting mark cited, or (ii) the mark is considered as descriptive or generic, or (iii) is not registrable due to any other reason stipulated in law, or (iv) there is condition to put disclaimer on certain descriptive terms.
The applicant may respond with required amendment, and trademark office may issue acceptance or refusal decision. Failure to respond within stipulated period may lead to refusal of trademark. It is possible, although in very rare cases, that trademark office may issue second chance to amend the mark.
Since filing procedure from start to end is online, therefore it is usually not possible to submit arguments with trademark office. The applicants or their legal representatives can visit trademark office to discuss objections raised by trademark office, but this is not stipulated procedure.
Once a trademark is accepted, it is published in the website of Ministry of Commerce and Investment, usually on the same day of acceptance. The new law changed the opposition period from 90 days to 60 days. If no opposition is filed, the applicant will be asked to submit registration fee for issuance of online registration certificate.
- Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
It is not a requirement of law to provide evidence of actual use or undertaking of intention to use for filing application, therefore the applicant is not required to submit such document.
Non-use of a registered trademark render it vulnerable to cancellation action during any 05 years consecutive period of non-use. A registered trademark can be cancelled by third party motion on the basis of non-use before a competent court.
Action of non-use can be defended if the registrant provides reasonable justification for non-use. Acceptable justification may be reasons beyond control of registrant such as during war, import sanctions or any other justifiable reason which can prove that registrant had no intention to stop using registered mark. A single invoice has been accepted as a sufficient evidence to defeat non-use cancellation action in Saudi Arabia.
Saudi trademark law does not define what constitutes ‘use’ of a trademark.
Being a member of Paris convention, Saudi Arabia grants right of priority to applications filed in convention states within period of 06 months post filing. Substantial similarity of priority application with application filed in Saudi Arabia and within same class is a condition to claim priority. Minor amendments in later trademarks are allowed.
- Appealing a denied application
Is there an appeal process if the application is denied? (Please include a discussion of both administrative – eg, within the Trademark Office – and judicial appellate procedures.)
Under new trademark law, appeal against refusal decision can be filed before an administrative trademark committee. Before implementation of new law, effective from September 27, 2016, appellate jurisdiction against refusal decisions was administrative court.
Appeal can be filed against refusal decision and also against imposition of condition by the trademark office, within 60 days of issuance of refusal decision or imposition of condition. Appeals are filed with trademark office in writing form. Within 30 days period of filing appeal, the trademark committee will provide copy of appeal statement to applicant for submission of written reply within 60 days. Committee may also conduct hearings upon request filed by either party to appeal provided that prescribed fee will be payable by party requesting for hearing. Fee are applicable for filing oppositions and for each hearing request.
The decision of trademark committee can be appealed by aggrieved party to administrative court within 60 days period. The administrative court issues a hearing notice to both parties and conducts hearings. Both parties will submit written arguments and rebuttals. There are no court fee applicable in Saudi Arabia.
Decision of administrative court can be further appealed before court of appeal. The court of appeal may either reject appeal or remand the case back to administrative court alongwith observation. In case of refusal of appeal, the court of appeal will issue written judgement, which will be final and enforceable. There is only one hearing conducted in court of appeal and that is on the day of pronouncing judgements only.
If case is remanded back to administrative court with observation, the administrative court may re-conduct hearings by issuance of notice to both parties. The administrative court may reverse its judgement or maintain its earlier judgement. In either case, the judgement will be appealable to court of appeal by aggrieved party.
- Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Accepted applications are published on website of Ministry of Commerce and Investment for a period of 60 days. Within this period, the application is open to opposition by third parties. Under new law, opposition can be filed with trademark office in physical form. It is expected that online portal may be created for filing online oppositions.
Oppositions can be filed on the basis of legal justification, which can be an earlier registered trademark rights or earlier pending application in Saudi Arabia. Oppositions can also be filed on the basis of rights established by unregistered well-known marks having fame in Saudi Arabia. Other than earlier conflicting registered trademarks or applications, it is also possible to file opposition on the basis of any legal provisions which prohibits registration of certain marks in Saudi Arabia. For example indistinctiveness, contrary to public order and morality, based on religious connotations, marks covering prohibited goods or services, exclusionary subject matter, or challenging competence of applicant to acquire registration in Saudi Arabia.
Within 30 days period of filing opposition, the trademark office will provide copy of opposition statement to applicant for submission of written reply within 60 days. Hearings may also be conducted upon request filed by either party to opposition provided that prescribed fee will be payable by the party requesting for hearing. Fee are applicable for each hearing request.
The decision of trademark office can be appealed by aggrieved party to administrative court within 60 days period. Decision of administrative court can be further appealed before court of appeal.
The procedure for adjudication of dispute by administrative court and court of appeal is discussed in paragraph 8 above.
It is possible to challenge existing registration of trademark in Saudi Arabia. Cancellation action can be initiated within period of five years of registration by any concerned party on the basis of prior use claim and by proving that registration was not acquired in good faith or on the plea that the trademark was not lawfully registered. Such actions will however not be maintainable after completion of five years of registration and use with no legal action commenced against such registration.
In cancellation actions initiated by the owners of well-known marks, extent of fame in Saudi Arabia has to be established. Other than case initiated on the basis of well-known mark, it is very difficult to cancel a registered trademark in Saudi Arabia on the basis of earlier unregistered trademark rights.
Total inclusive fee for opposition before trademark committee may be between a range of USD 2000 to 2500. Attorney fee for cancellation action in court may be in range of USD 15,000 to 25000. There are no court fee in Saudi Arabia.
- Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
The duration of trademark registration is for ten Hijra years. The Hijra (lunar) year applicable in Saudi Arabia is 11 days shorter than Gregorian year. To maintain registration, the registrant shall file renewal during last year of expiry. There is 06 months grace period post expiry of trademark with additional fee payable as penalty. After 06 months grace period, the trademark will be declared as cancelled and further renewals will not be possible. As per Saudi trademark law, expired mark cannot be registered in favour of any third party for period of three years post expiry or cancellation.
Use of trademark is required in order to avoid non-use cancellation action by any third parties. Continuous non-use for consecutive five years makes registered mark vulnerable to cancellation action. Saudi trademark law does not define ‘use’, however in a true legal sense, registered trademark will be considered as used, if registered trademark or substantially similar mark is used on all or any of goods and services covered under registered.
A single invoice has been accepted as sufficient evidence of use to defeat non-use cancellation action in Saudi Arabia.
Please also see answer in paragraph 7.
- The benefits of registration
What are the benefits of registration (eg, increased remedies for infringement, access to specialised courts, legal presumptions, availability of border enforcement mechanisms against unauthorised goods)?
Registration provides following benefits to registrant:
- Ownership in trademark is acquired through registration in Saudi Arabia.
- The registration provides presumption of lawful and true ownership unless proved to the contrary in cancellation action.
- There will be presumption of confusion to public in the event of unauthorised use of similar marks by any third party.
- Owner of registered acquires exclusive right to use its trademark.
- Right to license is recognized only for registered marks in Saudi Arabia.
- In case of opposing third party trademarks or in infringement actions, the owner of registered mark does not need to prove any other evidence in relation to ownership claims.
- Infringement actions in Saudi Arabia whether administrative or before courts are recognized only for registered trademarks.
- Owner of registered marks can record its trademark with Saudi Custom authorities for taking advantage of effective border control measures in Saudi Arabia.
There are no common law rights. The only exception is well-known marks which puts heavy burden of proof upon claimant to declare the mark as well-known in Saudi Arabia.
May a licence be recorded against a mark in the jurisdiction? Are there any benefits to doing so or detriments to not doing so?
Recordal of trademark license with trademark office is optional in Saudi Arabia. Under new trademark law, non-recordal does not have any legal detriment. From point of view of enforcement of trademark vis-à-vis third parties, it is always advisable to record license agreement for easy recognition of licensee right to legal action by Saudi courts.
Recordal of license also provides better protection to licensee as well. A licensee of recorded license can object removal of license from trademark register on proper grounds.
What can be assigned? (Trademark with goodwill? Without goodwill? All or some of the goods and services? Must other business assets be assigned to make it a valid transaction?)
A registered trademark can be assigned, wholly or partly, to any third party competent to acquire registered trademark in Saudi Arabia. A trademark may be assigned with or without goodwill. Ownership of a registered trademark can also be transferred by will and succession.
In order to make assignment of trademark effective vis-à-vis third party, it is mandatory to record assignment with trademark office.
In transactions of transfer of ownership of actual business or investment projects, trademark has been declared as integral part of such transactions, however even in such cases, it is not mandatory to assignment trademark; parties to transactions can agree otherwise.
- Assignment documentation
What documents are required for assignment and what form must they take (eg, notarisation)?
Following documents are required for assignment of trademark and recordal of assignment:
- Assignment deed with complete details of both parties, notarized and legalized upto Saudi consulate.
- Certified Arabic translation of assignment deed.
- Original Trademark Certificate.
- Power of Attorney, notarized and legalized upto Saudi consulate.
- Certified Arabic translation of power of attorney.
Trademark assignment is examined by the trademark office and published in online gazette. After publication, trademark certificate is issued in the name of assignee. This whole process may take upto 02 months, occasionally delayed.
- Validity of assignment
Must the assignment be recorded for purposes of its validity?
Saudi trademark law provides that in order to make assignment of trademark effective vis-à-vis third party, it is mandatory to record assignment with trademark office. The consequence of non-recordal of assignment is clearly provided in the law. As far as validity of assignment is concerned, it cannot be effected due to non-recordal. However, it is in interest of both assignor and assignee to record the assignment with the trademark office.
Please also see paragraph 13.
- Security interests
Are security interests recognised and what form must they take (eg, notarisation)? Must the security interest be recorded for purposes of its validity or enforceability?
Security interest are recognized and notarized/legalized security interest can be recorded against a registered trademark. Security interest, unless recorded with trademark office and published, shall not be deemed effective vis-à-vis third parties.
What words or symbols (if any) can be used to indicate trademark use or registration?
Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
The law does not provide any marking as such. In practice however it common to use ® sign for registered trademark. For indication of trademark use, TM symbol is used, however this is not common practice in Saudi Arabia. Apparently, use of ® sign provides indication to other parties that the mark is exclusively registered and not free to use. However the use of such sign ® is not requirement to intiate infringement action or non-use cannot be pleaded as defense against infringement if otherwise infringement is established.
Indication of unregistered mark as registered mark is punishable offence in Saudi trademark law, therefore, use of ® sign for unregistered mark may be risky from this perspective.
- Trademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions (eg, border enforcement mechanisms against unauthorised goods)? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
There are two types of proceedings available in Saudi Arabia for trademark infringement actions i.e administrative action and court action.
Administrative action can be initiated before Anti Commercial Fraud Department (ACFD) in Riyadh. ACFD has recently introduced centralised complaint management system, and therefore complaint can be filed with ACFD headquarters Riyadh against infringement occurring in any city of Saudi Arabia. ACFD requires evidence of infringement in form of sample of genuine and infringing product, purchase bills from outlets selling infringing products, and address of location. The process includes submission of online complaint alongwith evidence, study of case by ACFD, raids on outlets offering infringing products, and destruction of infringing products.
Although ACFD operates under its own law i.e Anti Commercial Fraud Law, however in some of court’s judgements, trademark infringement cases were dismissed and plaintiffs were advised to first recourse to administrative procedure. The court also stated in its (debatable) judgement that any trademark infringement case will be premature and not maintainable if prior to filing infringement action, administrative action was not taken by the trademark owners. Administrative procedures are usually speedy and in cases of prima facie infringement, ACFD inspectors may conclude complaints within 02 months period.
Apart from administrative action, trademark infringement actions can also be filed with commercial courts in Saudi Arabia. In each type of action, registration of trademark is pre-condition for success. Unregistered rights are not recognized in Saudi Arabia except in case of well-known trademarks in which case the Plaintiff is under heavy burden of proof.
Border control measures are considered as a very effective approach in Saudi Arabia. The custom authorities in Saudi Arabia has created procedure to record registered trademarks with custom for vigilance in all upcoming consignments of imports inside Saudi Arabia. The custom authorities will stop, either by its own or by request filed by trademark owner, any suspected shipment, and will contact registered trademark owner or its legal representative to confirm whether the suspected held products are genuine or counterfeit. Custom authorities are cooperative in such procedure and usually share pictures of suspected products very quickly and in case where required, samples are also provided for purpose of confirmation.
In any case, the trademark owner is obliged to intiate case before competent court, within ten days, for issuance of order to destroy imported goods or remove it outside channel of business. Goods harmful to public health and environment are usually destroyed.
Other than Saudi trademark law providing criminal provisions, the provisions of Anti Commercial Fraud Law may be extended to trademark infringement in exceptional circumstances. Under Saudi trademark law following offences are provided:
- Counterfeited or imitated a registered mark so as to mislead or confuse the public, or using in bad faith any counterfeited or imitated mark.
- Identifying his goods or services in bad faith with a mark owned by others.
- Knowingly selling, offering for sale or trading, or possessing with the intention of trading any goods bearing counterfeited or imitated marks; or unlawfully uses such marks or offers services under them.
- Uses a non-registered mark in cases provided for in items from 2 to 11 of article 3 herein.
- Unlawfully inscribes upon his mark, papers or commercial documents a representation that might lead to the belief that he has obtained registration of such mark.
- Deliberately and in bad faith fails to affix his registered trademark on the goods or services if distinguishes.
- Knowingly possesses tools or material intended to be used in the imitation of registered trademarks or famous trademarks.
- Procedural format and timing
What is the format of the infringement proceeding? (Is discovery allowed? Live testimony? Experts? Who decides the case? How long does the proceeding typically last? If there is a criminal enforcement mechanism, what is that procedure?)
Infringement proceedings are initiated by submitting a statement of claims to competent court, or an online complaint before administrative authority in case of administrative action. In court proceedings, statement of claims will be served upon the defendants with instructions to submit written statement on the date of scheduled hearing. In Saudi Arabia, litigations are conducted through exchange of written documents, and oral arguments. In case of technical matters, judge can appoint an expert to submit his/her advise on any specific issue, although it is not usual practice of courts. Oral testimony is acceptable as an evidence. The case is decided by a presiding judge.
Criminal proceedings in trademark cases are initiated by public prosecutor upon recommendations of ACFD. Saudi criminal procedure law is applicable to all criminal proceedings.
- Burden of proof
What is the burden of proof to establish infringement or dilution (or any other relevant claim specific to your jurisdiction)?
In Saudi Arabia trademark rights are acquired through registration, therefore registration certificate is sine qua non to bring infringement action. It is also duty of the plaintiff to establish confusing similarity. In case of unregistered well-known trademarks, the plaintiff is under additional burden to prove that the mark is famous. The new trademark law stipulates criteria for establishing fame of trademark, which is the extent of its recognition by the concerned consumers as a result of its promotion, the length of period of registration or use thereof, the number of countries of registrations or fame or the value of the mark and the extent of its impact in the promotion of goods or services for which the mark is used to distinguish.
In any action based on well-known mark, all the above elements shall be proved by the plaintiff. If a well-known mark is actually used in Saudi Arabia, it is usually very convincing in proceedings.
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