Saudi Arabia: Letters Of Consent In Saudi Arabia – An Effective Means Of Overcoming Citations?

Last Updated: 15 December 2016
Article by David Harper

Letters of consent may, in certain circumstances, be an effective means for overcoming a refusal of a trade mark application that has been refused on relative grounds.

Relative ground refusals are encountered frequently in Saudi Arabia and, once raised, they can be difficult to overcome by argument alone. This is because the Trade Marks Office operates a strict classification system. Specifications often cover the entire class heading or are comprised of items selected from an exhaustive list prescribed by the Trade Marks Office. As there is no scope to craft a narrow specification or to add a limitation to the nature or type of goods and services, applications will often cover a much broader array of goods and/or services than necessary, which in turn means that refusals based on prior marks covering identical terms is more common place.

As a result, applicants often look to use letters of consent as a means of overcoming refusals based on prior rights. However, as the acceptance of a letter of consent is ultimately at the sole discretion of the decision maker, the costs, timeframe and uncertainty associated with the process usually means that trade mark applicants would only use letters of consent as a measure of last resort.

Accordingly, trade mark applicants are best advised to conduct comprehensive clearance searches in Saudi Arabia before proceeding to file an application to ensure that an application does not encounter a refusal on relative grounds by the Trade Marks Office.

Trade Marks Office refusals

Currently, the Trade Marks Office in Saudi Arabia is examining trade mark applications within a week of filing the application online.

Accordingly, where prior conflicting marks are present on the register, refusals are often issued before the applicant has an opportunity to seek consent from the owner of the prior mark. In such cases, the only means of redress is to appeal the examiner's determination to the competent court (the Ministry of Commerce and Industry (MOCI) in Saudi Arabia) within the stipulated 60 day time period.

During the 60 days, it may be possible (depending on the location of the owner of the cited mark) for the trade mark applicant to seek consent from the owner of the cited mark, and to arrange for a letter of consent to be drafted, executed, notarised and legalised up to the Embassy of Saudi Arabia in the applicant's home country.

However, often 60 days is not enough time to complete the legalisation process in the applicant's home country. Further, even if the trade mark applicant is in a position to submit a duly legalised letter of consent to MOCI, the decision maker may very well be reluctant to overturn the decision of the Trade Marks Office examiner to refuse the application based on the prior conflicting mark. Indeed, in our experience, unless there is an obvious error of fact or in law, then the decision maker at the MOCI will usually follow the examiner's decision and refuse the appeal.

It is at the next level of appeal – to the administrative court – where letters of consent are more likely to be accepted as a means of overcoming a refusal based on relative grounds.

Appeals to the Board of Grievances (Administrative Court)

If the trade mark applicant is able to obtain a duly legalised letter of consent from the owner of the cited mark, then it should consider appealing the further refusal of the application by the MOCI to the Administrative court.

Similar to the older Saudi Arabian Trade Mark Law of 2002, the new Unified GCC Trade Marks Law which was implemented in Saudi Arabia at the end of September 2016, does not contain any express provisions governing the acceptability of letters of consent as a means of overcoming refusals based on relative grounds. However we have had success in overcoming refusal of an application based on relative grounds before the Administrative Court.

Article 17 (2) of the new Unified GCC law states "The owner of the registered trademark shall have the exclusive right to use the mark and to prevent others who do not get his approval from using it or using any similar or identical sign including any geographical indication in the commerce context to distinguish goods or services related to those in respect of which the trademark is registered if such use my result in confusion for the public.

While the wording of Article 17 (2) is geared at establishing the need for a third party to seek consent prior to using a registered trade mark right (or similar mark) a similar interpretation may be adopted with regard to the registration of a trade mark.

Discretion

Given the absence of an express provision in the law or settled practice guidelines, the decision as to whether or not the MOCI or the administrative court accept the letter of consent falls to the sole discretion of the decision maker. As such, trade mark applicants can expect inconsistencies in the rule being applied.

That said, if the marks in question are materially different from one another and evidence of peaceful co-existence can be put forward from other countries (particularly in the region, especially other GCC countries), then in our experience, the decision maker would be more likely to exercise its discretion to accept the letter of consent as a means of overcoming the refusal.

Risks of seeking consent

While a letter of consent may, in certain circumstances, offer a solution to trade mark applicants for overcoming refusals based on relative grounds, approaching the owner of the prior mark can also carry a certain degree of risk.

Necessarily, an approach for consent to the owner of a cited mark alerts that party to the (potentially) conflicting application. Accordingly, if consent is refused, but the trade mark applicant overcomes the refusal by using a different method, then its trade mark application is more likely to be opposed during the opposition period by the owner of the cited mark. As such, the risk of approaching the owner of the cited mark for consent needs to be weighed up against the potential benefit of obtaining a letter of consent.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions