Saudi Arabia: Trademarks Comparative Guide

Last Updated: 30 July 2019
Article by Asif Iqbal
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1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The statutory sources of trademarks rights in Saudi Arabia are as follows:

  • the Gulf Cooperation Council Trademark Law, which entered into force on 27 September 2016 by virtue of Royal Decree M/51 of 26.07.1435H and its implementing regulations;
  • the Anti-commercial Fraud Law, promulgated by Royal Decree M/19 of 23.04.1429H (29 April 2008) and its implementing regulations issued by Ministerial Resolution 155 of 06.01.1431H (23 December 2009); and
  • the Border Measures Regulations, issued pursuant to Ministerial Resolution 1277 (3 July 2004).

1.2 How do trademark rights arise (ie, through use or registration)?

In Saudi Arabia, trademark ownership is established by registration with the Saudi Trademark Office. However, prior use provides a right of action to prior users of trademarks by way of opposition or cancellation proceedings. It is difficult to enforce unregistered trademark rights in Saudi Arabia, unless the mark is well known in accordance with the requirements of Saudi law.

1.3 What is the statutory or other source of the trademark registration scheme?

See question 1.1.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

Under Saudi trademark law, a trademark can be anything that takes a distinctive shape, such as names, words, signatures, letters, symbols, numbers, titles, stamps, drawings, pictures, inscriptions, packaging, figurative elements, shapes or colours, groups of colours or combinations thereof; or any sign or group of signs used or intended to be used to distinguish the goods or services of one undertaking from those of others, or intended to identify a service, or used as a certification mark in respect of goods or services.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

See question 2.1.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

Under Saudi trademark law, the following cannot be considered as a trademark or part of a trademark:

  • a mark which is devoid of distinctive character or which consists of representations that are customary names given to goods and services, or conventional drawings and ordinary images of goods;
  • expressions, drawings or marks that contravene public morals or public order;
  • public emblems, flags, military emblems and other insignia belonging to any of the Gulf Cooperation Council states, other states, Arab or international organisations or any of their agencies, or any imitation thereof;
  • symbols of the Red Crescent or Red Cross and any other similar symbols, as well as imitations thereof;
  • marks that are identical or similar to symbols of a purely religious nature;
  • geographical names, if their use is likely to cause confusion regarding the source or origin of the goods or services;
  • the name, surname, photograph or logo or another person, unless that person or his or her successors have previously consented to its use;
  • information relating to honorary or academic degrees to which the applicant for registration cannot prove a legal entitlement;
  • marks which are likely to mislead the public, or which contain 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 which 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 a third party in respect of the same goods or services, or similar goods or services if the use of the later mark indicates a connection with the previous owner's registered goods or services or damage its interests;
  • marks whose registration for some goods or services may reduce the value of goods or services distinguished by a previous mark;
  • marks which are a copy, imitation or translation of a third party's famous trademark or part thereof, to be used to distinguish goods or services which are identical or similar to those distinguished by the famous mark;
  • marks which are a copy, imitation or translation of a third party's famous trademark or an essential part thereof, to be used to distinguish goods or services which are 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 is likely to damage the interests of the owner of the famous mark; and
  • marks which contain the following words or phrases: ‘patent', ‘patented', ‘registered', ‘registered drawing', ‘copyright' or similar.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The Ministry of Commerce and Investment currently controls the registration process. However, following the recent establishment of the Saudi Authority for Intellectual Property (SAIP), the administration of trademarks will be taken over by SAIP.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

The total official fee from filing to registration of one trademark in one class is $2,405.

3.3 Does the trademark office use the Nice Classification scheme?

Yes, Saudi Arabia has adopted the 10th edition of the Nice Classification.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

A trademark applicant in Saudi Arabia can file for the whole class, including either the class heading or specific goods or services of interest. The class heading cannot be partially selected. The goods or services must be selected from an online system and the applicant cannot change the nomenclature of terms.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

The trademark office requires no such declaration.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes, the trademark office will search its database and examine a filed trademark application on relative grounds. Any identical or confusingly similar trademarks will be cited against the application. In practice, the trademark office gives the applicant a 10-day period to amend its application accordingly. After submission of the amendment, the trademark application will be re-examined.

3.7 What types of examinations does the trademark office perform other than relative examination?

The trademark office also examines trademark applications on absolute grounds. Any trademark which falls within the categories specified in question 2.3 will be refused on absolute grounds.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Expressions, drawings or marks that contravene public morals or public order, or marks which have religious connotations, cannot be accepted for registration in Saudi Arabia (see question 2.3).

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

No. Opposition is possible only after publication of the trademark.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

There is no such requirement.

3.12 How much time does it typically take from filing an application to the first office action?

In Saudi Arabia, it takes three to four months from filing to registration, unless there are further office actions, in which case it may take one month more.

3.13 How much time does it typically take from filing an application to publication?

This may take 15 to 20 days.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

Appeal against refusal of a trademark application or the imposition of conditions by the trademark office can be filed before the Administrative Trademark Committee within 60 days of issuance. Appeals are filed through an online portal. No hearings are conducted.

If the appeal is rejected, the applicant can appeal the decision of the Administrative Trademark Committee to the Administrative Court within a 60-day period. The Administrative Court will issue a hearing notice to both parties and conduct hearings.

The decision of the Administrative Court may be further appealed before the Administrative Court of Appeal. If the Administrative Court of Appeal remands the case to the Administrative Court with observations, the Administrative Court may reconduct hearings by issuance of notice to both parties. The Administrative Court may either reverse or maintain its earlier judgment; this decision may again be appealed to the Administrative Court of Appeal by the aggrieved party, in which case the Administrative Court of Appeal will decide the matter. A final appeal can be filed before the Administrative High Court on points of law only.

4.2 What is the procedure for appealing a trademark office refusal?

See question 4.1.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

See question 4.1.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes; under Saudi trademark law, accepted applications are published on the website of the Ministry of Commerce and Investment for a 60-day period, during which they can be opposed by interested parties. Oppositions are filed through an online portal to the Opposition Committee of the trademark office.

5.2 Who has standing to oppose a trademark application?

Oppositions can be filed based on an earlier registered trademark right or earlier pending application in Saudi Arabia. Oppositions can also be filed based on rights established by unregistered well-known marks that have become famous in Saudi Arabia.

Although such oppositions are rare, it is also possible to oppose a trademark based on any legal provision that prohibits the registration of certain marks in Saudi Arabia ƒ{ for example, where the mark is non-distinctive, is contrary to public order and morality, has religious connotations, covers prohibited goods or services, or incorporates exclusionary subject matter ƒ{ or by challenging the applicant¡¦s standing to obtain registration in Saudi Arabia.

5.3 What is the timeframe for opposing a trademark application?

Within 60 days of publication.

5.4 Which body hears oppositions?

The Opposition Committee of the trademark office.

5.5 What is the process by which an opposition proceeds?

After an online opposition is submitted, the Opposition Committee will issue a notice to the applicant, requesting the submission of a written reply. It is possible to request a hearing at the time of filing the opposition; however, a later request for hearings will not be entertained. Official fees are applicable for each hearing request.

After submission of a written response from the applicant, the Opposition Committee will issue its decision.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

The decision of the Opposition Committee can be appealed to the Administrative Court within a 30-day period.

The decision of the Administrative Court may be further appealed to the Administrative Court of Appeal. If the Administrative Court of Appeal remands the case to the Administrative Court with observations, the Administrative Court may reconduct hearings by issuance of notice to both parties. The Administrative Court may either reverse or maintain its earlier judgment; this decision may again be appealed to the Administrative Court of Appeal by the aggrieved party, in which case the Administrative Court of Appeal will decide the matter. A final appeal may be filed before the Administrative High Court on points of law only.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

The Saudi Arabian legal system does not recognise common law rights. Trademark rights are acquired through registration only. The sole exception to this rule concerns well-known trademarks which are recognised as famous in Saudi Arabia. The claimant bears the burden of proving that the mark is famous in Saudi Arabia. Saudi law clearly specifies the requirements that must be satisfied to this end.

According to Saudi trademark law, the fame of a trademark is determined by different factors, including:

  • recognition of the mark in the eyes of the relevant consumers;
  • length of period of use or registration, in the case of a registered mark;
  • the number of international registrations; and
  • the commercial impact that the mark has produced on the market.

However, Saudi trademark law recognises prior use rights in opposition and cancellation proceedings.

6.2 What legal rights are conferred by a trademark registration?

The following rights are acquired through registration:

  • The registered trademark owner acquires the exclusive right to use the trademark in Saudi Arabia and the right to initiate action against any unauthorised use of an identical or confusingly similar trademark by any third party without permission.
  • Under Saudi trademark law, the right to license is recognised for registered marks only.
  • Registration affords a presumption of lawful and true ownership, unless proved to the contrary in a cancellation action.
  • There will also be a presumption of confusion among the public in the event of unauthorised use of a similar mark by any third party.
  • When opposing third-party trademarks or in infringement actions, the owner of a registered mark need not provide any other evidence in relation to ownership claims.
  • Infringement actions in Saudi Arabia, whether administrative or before the courts, are recognised only for registered trademarks.
  • The registered trademark owner is entitled to the benefits of border control measures in Saudi Arabia against the import of counterfeit goods.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

Not applicable in Saudi Arabia.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

The following remedies are available under Saudi trademark law:

  • interim injunction and precautionary measures. In practice, the Saudi courts rarely grant interim injunctions;
  • permanent injunction restraining the defendant from further infringement;
  • court order for the destruction of all infringing goods;
  • award of damages to the plaintiff. This should be based on:
    • the profits earned by the defendant;
    • the value of the goods or services infringed, based on their retail price; or
    • any other criterion which the court deems fit under the circumstances;
  • award of adequate compensation other than infringer's profits, in case of deliberate imitation of the established mark;
  • court order obliging the defendant to disclose information about all persons or entities that contributed to the infringement, through either the production or distribution of infringing goods; and
  • depending on the nature of the infringement, financial penalties., which may be doubled in case of repeated infringement.

7.2 What remedies are available against trademark dilution?

Saudi trademark law does not specify remedies or legal action against dilution.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Under Saudi trademark law, a registered trademark owner has the right to initiate a cancellation action against any unlawfully registered trademark. A registered trademark owner is also entitled to the benefits of border control measures against the import of counterfeit goods.

7.4 What is the procedure for pursuing claims for trademark infringement?

A trademark owner has the following options to initiate an infringement action:

  • An administrative action may be filed before the Anti-commercial Fraud Department. The complaint should be filed in writing with all evidence of infringement and registered rights over the trademark. The location of the infringing goods should also be specified.
  • The Commercial Court has also jurisdiction over trademark infringement matters. However, in a couple of recent cases the Commercial Court refused to accept jurisdiction over trademark infringement matters, ruling that its jurisdiction is limited to claims of financial compensation. These decisions are challenged by way of appeal in the higher courts. A statement of claims must be filed before the court in writing. There are no pre-trial procedures.

7.5 What typical defences are available to a defendant in trademark litigation?

Under Saudi trademark law, the following defences are available:

  • The defendant's trademark is sufficiently distinguishable from the plaintiff's mark;
  • The defendant is using the mark for goods or services which do not conflict with those covered by the registered trademark;
  • The defendant's use of the trademark is descriptive;
  • The plaintiff's trademark is subject to disclaimer and such use does not constitute infringement;
  • The plaintiff's trademark is unregistered and is not famous in Saudi Arabia;
  • The defendant has a trade name registration and the right to use its trade name; and
  • The defendant used the mark in good faith and without knowledge of the registration of a similar or identical trademark in Saudi Arabia.

7.6 What is the procedure for appealing a decision in trademark litigation?

A decision of the Commercial Court of First Instance may be appealed before the Commercial Court of Appeal within 30 days of issuance. A final appeal may be filed before the Commercial High Court on points of law only.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

The duration of trademark registration is for 10 Hijra years and renewable for the same term. The Hijra (lunar) year applicable in Saudi Arabia is 11 days shorter than the Gregorian year.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

An application for renewal, along with a notarised and legalised power of attorney and a copy of the trademark certificate.

8.3 What are the grounds for cancelling a trademark registration?

A trademark which is not used for consecutive five years can be cancelled by way of a non-use cancellation action before the Administrative Court of First Instance. The trademark owner can defend such action by providing reasonable justification for non-use, which may relate to reasons beyond its control, such as war, import sanctions or any other justifiable reason that can prove that it had no intention of stopping use of the registered mark. A single invoice has been accepted as sufficient evidence to defeat a non-use cancellation action in Saudi Arabia.

A registered trademark can also be cancelled through a cancellation action before the Administrative Court of First Instance if the trademark was unlawfully registered. There is no definition of such unlawfulness in the law; however, prior registration and prior use can be strong grounds for a cancellation action.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

Under Saudi trademark law, no such right is reserved for the trademark office.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

See question 8.3.

8.6 What is the procedure for appealing a decision cancelling a registration?

A decision of the Administrative Court of First Instance may be further appealed to the Administrative Court of Appeal. If the Administrative Court of Appeal remands the case to the Administrative Court with observations, the Administrative Court may reconduct hearings by issuance of notice to both parties. The Administrative Court may either reverse or maintain its earlier judgment; this decision may again be appealed to the Administrative Court of Appeal by the aggrieved party, in which case the Administrative Court of Appeal will decide the matter. A final appeal can be filed before the Administrative High Court on points of law only.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

It is not mandatory to include quality control clauses in a trademark licence. However, a licence must include the following information:

  • the trademark registration number;
  • the trademark owner's name and nationality;
  • the licensee's name, address, domicile and nationality;
  • the registered goods and services;
  • the licence start and expiry dates; and
  • the geographical territory of the licence (if any).

9.2 Must trademark licences be recorded with the trademark office or other governing body?

No, this is not mandatory.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

No.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

A foreign trademark is enforceable in Saudi Arabia only if it is a well-known mark and such fame extends to Saudi Arabia.

According to Saudi trademark law, the fame of a trademark is determined by different factors, including:

  • recognition of the mark in the eyes of the relevant consumers;
  • length of period of use or registration, in the case of a registered mark;
  • the number of international registrations; and
  • the commercial impact that the mark has produced on the market.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Saudi Arabia is not a member of the Madrid System. Foreign registrations may help to overcome certain objections during the registration process; however, an applicant cannot claim foreign registration as a matter of right to register the same trademark in Saudi Arabia.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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