Answer ... 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.
Answer ... 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.
Answer ... Not applicable in Saudi Arabia.