"Do enforcement actions take place?" A common question when it comes to Saudi Arabia and other countries in the region.
We can confirm that enforcement actions do take place, though much depends on the rights the client has in the country. In recent times we have had successful seizures through both Customs and administrative bodies in Saudi Arabia for tens of thousands of counterfeit and infringing products.
So, what options are available?
For trade mark owners with registrations in place, it is relatively straightforward to bring an enforcement action in relation to counterfeit goods at a retail and wholesale level and for border infringements. There are four main options for bringing enforcement action against infringers in Saudi. We have set out below a short overview of each of these options:
1 Administrative complaints
The Ministry of Commerce and Industry (MOCI) in Saudi Arabia accepts complaints in relation to routine counterfeit matters and it has authority to raid both retail outlets and warehouses.
The MOCI has a local section in each province and the complaint needs to be filed with the relevant office for the province where the infringing goods have been identified. Once a complaint has been filed, the MOCI will send inspectors to raid the relevant retail outlets and seizure and destroy any infringing products.
A traders dealing in infringing goods will also be fined, although the value of the fine is usually nominal. In addition the trader may be required to sign an undertaking in favour of the MOCI, which can be helpful in preventing repeat infringements.
2 Criminal complaint
Although it is possible to file a criminal complaint, the police are only likely to pursue the trader when the infringer is carrying large quantities of infringing products, or it is a suspected wholesaler with warehouse or wholesale premises.
The procedure for conducting a criminal raid will depend on the province, although, generally, the complaint must be filed with the local office of the Public Prosecutor. The Public Prosecutor will decide on whether to accept the complaint and then co-ordinate with the police in the specific province in regards to conducting a raid.
3 Civil claim
A civil claim is usually more appropriate for the non-routine cases, for example in trade dress infringement, lookalike cases or where there has been a previous distribution or agency agreement between the parties.
A civil claim is filed with the Board of Grievances. There is little oral advocacy in Court proceedings and litigation is conducted through the exchange of written pleadings. There are usually a number of rounds of pleadings exchanged according to the directions of the Judge, before the Court will adjourn the proceedings to issue judgment.
All Court proceedings are conducted in Arabic. Pleadings and evidence must be submitted in Arabic.
The cost of civil proceedings is high as a party's legal costs will largely be non-recoverable, as the Courts usually only award nominal legal costs to the successful party. It is also possible to claim damages, which must be evidenced and calculated on the basis of compensation to the loss caused to the trade mark owner. However, in practice, the Court may only be prepared to award nominal damages and there can be difficulty in enforcing orders for damages.
4 Customs complaint
A complaint can be filed with Customs requesting that infringing products being imported be seized and destroyed. Before filing a complaint, the trade mark owner must hold trade mark registrations in Saudi Arabia for the relevant trade mark being infringed.
It is not a requirement to record trade marks with Customs. If suspected counterfeit goods are detained by Customs, they will inform the brand owner's local representative and provide images or a sample of the detained goods. The brand owner will be notified of the deadline for responding with a complaint, usually 10 days. The brand owner must then file a complaint with Customs, requesting that the goods be seized and destroyed.
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.