LEGO Case

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.

IP Decisions KSA