The international classification of goods and services is followed in Saudi Arabia. Trademarks covering alcoholic goods are not registrable. The Trademark Law which was promulgated by the Council of Ministers' Resolution No. 75 dated 13.04.1404 A. H. (January 16, 1984) provides for the protection of service marks in international classes 35 to 42 with the exception of retail and wholesale store services in class 42. A separate application should be filed with respect to each class of goods or services.
Once a trademark or a service mark application is filed, it is examined as to its availability, registrability, and coverage. If the Registrar objects in writing to certain aspects of the mark in the course of examination, such as the scope of goods or services or asks for modification of the mark, a grace period of 3 months is given to the applicant concerned to comply with the Registrar's request. Once the application is formally rejected, a complaint against the rejection can be filed to the Oppositions and Complaints Committee within 30 days from the date of notification of the rejection. The decision of the Committee may be appealed to the Minister of Commerce and Minister's decision may be appealed to the Grievances Board (Court). The trademark or service mark applications accepted for registration by the Registrar are published in the Official Gazette of Saudi Arabia (Ummulqura).
Publication is an invitation to any interested party to oppose the registration of trademarks or service marks conflicting with their interests. There is a three-month period open for filing opposition by any interested party. An opposition to the registration of a trademark or service mark should be filed within the term of the opposition period, i.e., 90 days from the date of publication of the notice in the Official Gazette. The case is referred to the Opposition and Complaints Committee and, if the decision is not satisfactory to either party, they may file an appeal within 30 days to the Grievances Board (Court).
The duration of a trademark or a service mark registration is for 10 years from the filing date according to the Hijri (Islamic) calendar (equivalent to approximately 9 years and 8 months). The registration is renewable for similar periods of 10 years each. According to the provisions of the Trademark Law, no grace period is allowed for filing a renewal application. However, a fresh trademark application can be filed for the re-registration of a cancelled trademark or service mark.
The assignment of a trademark or a service mark can be recorded once the mark is registered in the country. In fact, unless an assignment has been entered against a trademark or a service mark in the register and published in the Official Gazette, the assignment shall not be effective vis-a-vis third parties. The Registry does not give any importance to the goodwill associated with a trademark nor to the consideration amount involved in the assignment. The registrant of a trademark or service mark is also obliged to record any change in its name and/or address with the Registry.
Use of trademarks is not compulsory in Saudi Arabia for filing applications to obtain registration nor for maintaining registrations in force. However, a trademark becomes vulnerable to cancellation by any interested party who can establish that the trademark was not actually used for a period of five years in succession, unless the owner of the mark presents a reasonable excuse to justify his/her non-use of the mark.
Unauthorized use of a trademark registered under the law, an imitation of such trademark applied on goods or in relation with services of the same class, sale, storing for the purpose of sale, exhibiting for sale of goods bearing a counterfeit mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods or services of the same class are offences punishable under the law.
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.
Abu-Ghazaleh Intellectual Property Bulletins
For further information you make also like to view the Intellectual Property Bulletins published monthly by Abu-Ghazaleh Intellectual Property - IP Bulletins