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