According to current practice, the Saudi trademark office requires a commercial registration certificate from local entities along with the trademark application. It is not a requirement to provide evidence of use or statement of intention to use a trademark.
The new trademark law has extended the subject matter of trademarks in Saudi Arabia. The law provides a non-exhaustive list of registrable trademarks. Anything with distinctive character can be a trademark, such as names, words, signatures, letters, symbols, numbers, titles, stamps, drawings, pictures, inscriptions, packaging, figurative elements, shapes or colours, groups of colours, or combinations thereof, or any sign or a group of signs used or intended to be used to distinguish the goods or services of one undertaking from the goods or services of another undertaking or intended to identify a service or as a certification mark in respect of goods or services.
For the first time in Saudi Arabia, the law has explicitly recognised smells and sounds as trademarks. The test of distinctiveness will, however, be applicable in each case, which may be strictly applied in the case of non-conventional trademarks. Presently there is no standard approach to three-dimensional trademarks other than in some cases (eg, shapes of bottles are registered in Saudi Arabia). In the new law, the inclusion of the term ‘packaging’ in the subject matter of a trademark seems to be an attempt to include three-dimensional marks.
marks that contain the following words or phrases: ‘Patent’, ‘Patented’, ‘Registered’, ‘Registered drawing’ or ‘copyright’ or similar words and phrases.
In practice, certain goods and services, inter alia, having religious connotation such as a Christmas tree, or prohibited under shariah law, for example, bars, dance clubs and any product or service with a reference to alcohol cannot be covered under trademark registration.
In Saudi Arabia, common law rights are not recognised. Trademark rights are acquired only after registration of trademarks. The quasi-judicial bodies and courts in Saudi Arabia are reluctant to recognise unregistered trademark rights. The exception to this rule is only for well-known trademarks. There is a heavy burden of proof upon the claimant of a well-known mark to establish the fame of a mark in Saudi Arabia, and the law specifies the requirement. The fame of a trademark will be determined by different factors, including the recognition of the mark in the eyes of the consumers concerned, the length of the period of use or registration in the case of a registered mark, the number of international registrations and the commercial impact it has produced in the markets.
If a claimant is able to provide sufficient evidence in court, rights over an unregistered well-known mark can be recognised.
The online registration process in Saudi Arabia is relatively fast track. The registration process from filing to issuance of registration may take up to four months. The estimated time may increase in the case of office actions issued by trademark office, which may include a condition of disclaimer, deletion of certain terms and amendment of the trademark. In the case of opposition, the estimated time may be further delayed by nine to 12 months.
The documentation required for filing of trademark application is legalised power of attorney up to the Saudi consulate and notarisation in case of a Saudi entity, a clear image of the trademark, priority document if priority is claimed and a commercial registration certificate for Saudi applicants in some cases. According to the online procedure, the first step is to upload a power of attorney for examination by the trademark office. After acceptance of the power of attorney, which does not usually take more than half a working day, a further process for application can be initiated. The trademark office does not consider uploading of the power of attorney as the initiation of the filing process, and this, in some (rare) cases, has the effect of missing the deadline for claiming priority. It is therefore not recommended to apply for trademarks with a priority claim on the deadline of a priority claim.
The total official cost from filing to registration of one trademark in one class, without opposition, is US$2,405. Attorney fees may vary.
Saudi Arabia has adopted the international Nice Classifications. The online portal for filing applications substantially includes all goods and services as provided under the international Nice Classification. However, to ensure that prohibited goods and services are not covered by trademark applications, the Saudi trademark office has either removed some such goods or services from the online portal or the portal is programmed in such a way that it is not possible to select such prohibited goods or services, even if available.
As mentioned in question 2, prohibited goods or services, inter alia, include goods or services with a religious connotation, such as a Christmas tree, or those prohibited under shariah law, for example, bars, dance clubs and any product or service with a reference to alcohol.
Under the trademark law effective from 27 September 2016, there is provision for multi-class filings; however, the trademark office is yet to issue the procedure and cost for filing such applications.
there is a condition to put a disclaimer on certain descriptive terms.
The applicant may respond with the required amendment, and the trademark office may issue an acceptance or refusal decision. Failure to respond within the stipulated period may lead to the refusal of the trademark. It is possible, although very rare, that the trademark office may issue a second chance to amend the mark. Letters of consent or coexistence agreements generally are not acceptable. In special cases, they may be acceptable.
Since the filing procedure from start to end is online, it is therefore usually not possible to submit arguments to the trademark office. The applicants or their legal representatives can visit the trademark office to discuss any objections raised by the trademark office, but this is not stipulated procedure.
Once a trademark is accepted, it is published on the website of the Ministry of Commerce and Investment, usually on the same day of acceptance. The 2016 law changed the opposition period from 90 days to 60 days. If no opposition is filed, the applicant will be asked to submit a registration fee for issuance of an online registration certificate.
It is not a requirement of law to provide evidence of actual use or undertaking of intention to use for filing application; therefore the applicant is not required to submit such document.
Non-use of a registered trademark during any five-year consecutive period renders it vulnerable to cancellation action. A registered trademark can be cancelled by third-party action on the basis of non-use before a competent court.
An action of non-use can be defended if the registrant provides reasonable justification for non-use. Acceptable justification may be reasons beyond the control of the registrant such as during war, import sanctions or any other justifiable reason that can prove that the registrant had no intention of stopping using the registered mark. A single invoice has been accepted as sufficient evidence to defeat a non-use cancellation action in Saudi Arabia.
Saudi trademark law does not define what constitutes ‘use’ of a trademark.
Being a member of the Paris Convention, Saudi Arabia grants a right of priority to applications filed in convention states within a period of six months post filing. Substantial similarity of a priority application with the application filed in Saudi Arabia and within the same class is a condition of claiming priority. Minor amendments in later trademarks are allowed.
An appeal can be filed against a refusal decision and also against the imposition of conditions by the trademark office, within 60 days of issuance of the refusal decision or imposition of conditions. Appeals are filed with the trademark office in writing form. Within the 30-day period for filing an appeal, the trademark committee will provide a copy of the appeal statement to the applicant for submission of a written reply within 60 days. The committee may also conduct hearings upon request filed by either party in the appeal, provided that the prescribed fee is payable by the party requesting the hearing. Fees are applicable for filing oppositions and for each hearing request.
The decision of the trademark committee can be appealed by the aggrieved party to the Administrative Court within a 60-day period. The Administrative Court issues a hearing notice to both parties and conducts hearings. Both parties will submit written arguments and rebuttals. There are no court fees applicable in Saudi Arabia.
A decision of the Administrative Court can be further appealed before the Court of Appeal. The Court of Appeal may either reject the appeal or remand the case back to the Administrative Court, along with observations. In case of refusal of appeal, the Court of Appeal will issue a written judgment, which will be final and enforceable. There is only one hearing conducted in the Court of Appeal and that is on the day of pronouncing judgments only.
If a case is remanded back to the Administrative Court with observation, the Administrative Court may reconduct hearings by issuance of notice to both parties. The Administrative Court may reverse its judgment or maintain its earlier judgment. In either case, the judgment will be appealable to the Court of Appeal by the aggrieved party.
Accepted applications are published on the website of the Ministry of Commerce and Investment for a period of 60 days. Within this period, the application is open to opposition by third parties. Under the new law, opposition can be filed with the trademark office in physical form. It is expected that an online portal may be created for filing online oppositions.
Oppositions can be filed on the basis of legal justification, which can be earlier registered trademark rights or an earlier pending application in Saudi Arabia. Oppositions can also be filed on the basis of rights established by unregistered well-known marks having fame in Saudi Arabia. Other than earlier conflicting registered trademarks or applications, it is also possible to file opposition on the basis of any legal provisions that prohibit registration of certain marks in Saudi Arabia (eg, indistinctiveness, being contrary to public order and morality, based on religious connotations, covering prohibited goods or services, exclusionary subject matter) or challenging the competence of the applicant to acquire registration in Saudi Arabia.
Within the 30-day period of filing opposition, the trademark office will provide a copy of the opposition statement to the applicant for submission of a written reply within 60 days. Hearings may also be conducted upon a request filed by either party to the opposition provided that the prescribed fee is payable by the party requesting the hearing. Fees are applicable for each hearing request.
The decision of the trademark opposition committee can be appealed by the aggrieved party to the Administrative Court within a 30-day period. The decision of the Administrative Court can be further appealed before the Court of Appeal.
The procedure for adjudication of a dispute by the Administrative Court and Court of Appeal is discussed in question 8.
It is possible to challenge the existing registration of a trademark. A cancellation action can be initiated within a period of five years of registration by any concerned party on the basis of a prior use claim and by proving that registration was not acquired in good faith or on the plea that the trademark was not lawfully registered. Such actions will, however, not be maintainable after completion of five years of registration and use with no legal action commenced against such registration.
In cancellation actions initiated by the owners of well-known marks, the extent of their fame in Saudi Arabia has to be established. Other than a case initiated on the basis of a well-known mark, it is very difficult to cancel a registered trademark in Saudi Arabia on the basis of earlier unregistered trademark rights.
The total inclusive fee for opposition before trademark committee may be in a range of US$2,000 to 2,500. The attorney fee for a cancellation action in court may range from US$15,000 to US$25,000. There are no court fees in Saudi Arabia.
The duration of trademark registration is for 10 hijrah years. The hijrah (lunar) year applicable in Saudi Arabia is 11 days shorter than the Gregorian year. To maintain registration, the registrant shall file renewal during the last year of expiry. There is a six-month grace period post expiry of trademark, with an additional fee payable as penalty. After the six-month grace period, the trademark will be declared cancelled and further renewals will not be possible. As per Saudi trademark law, an expired mark cannot be registered in favour of any third party for a period of three years post expiry or cancellation.
Use of the trademark is required in order to avoid non-use cancellation action by any third parties. Continuous non-use for five consecutive years makes a registered mark vulnerable to cancellation action. Saudi trademark law does not define ‘use’; however, in a true legal sense, a registered trademark will be considered as used if the registered trademark or substantially similar mark is used on all or any of the goods and services covered under the registration.
A single invoice has been accepted as sufficient evidence of use to defeat a non-use cancellation action in Saudi Arabia.
there are no common-law rights. The only exception is well-known marks, which places a heavy burden of proof upon a claimant to declare the mark as well known in Saudi Arabia.
Recordal of a trademark licence with the trademark office is optional in Saudi Arabia. Under the new trademark law, non-recordal does not have any legal detriment. From the point of view of enforcement of trademark in relation to third parties, it is always advisable to record a licence agreement for easy recognition of the licensee’s right to legal action by the Saudi courts.
Recordal of licence also provides better protection to the licensee. A licensee of a recorded licence can object to the removal of a licence from the trademark register on proper grounds.
A registered trademark can be assigned, wholly or partly, to any third party competent to acquire a registered trademark in Saudi Arabia. A trademark may be assigned with or without goodwill. Ownership of a registered trademark can also be transferred by will and succession.
In order to make a trademark assignment effective in relation to a third party, it is mandatory to record the assignment with the trademark office.
In transactions of transfer of ownership of actual business or investment projects, trademarks have been declared as an integral part of such transactions; however, even in such cases, it is not mandatory to assignment the trademark; the parties to transactions can agree otherwise.
certified Arabic translation of power of attorney.
Trademark assignment is examined by the trademark office and published in the Online Gazette. After publication, a trademark certificate is issued in the name of the assignee. This whole process may take up to two months, occasionally delayed.
Saudi trademark law provides that in order to make the assignment of a trademark effective in relation to a third party, it is mandatory to record the assignment with the trademark office. The consequence of non-recordal of assignment is clearly provided in the law. As far as validity of assignment is concerned, it cannot be effected owing to non-recordal. However, it is in the interest of both assignor and assignee to record the assignment with the trademark office.
Security interest is recognised and notarised, or legalised security interest can be recorded against a registered trademark. Security interest, unless recorded with the trademark office and published, shall not be deemed effective in relation to third parties.
The law does not provide any marking as such. In practice, however, it is common to use the ® sign for a registered trademark. For an indication of trademark use, the ™ symbol is used; however, this is not common practice in Saudi Arabia. Use of the ® sign provides an indication to other parties that the mark is exclusively registered and not free to use. However, use of the ® sign is not a requirement to initiate infringement action, and non-use cannot be pleaded as a defence against infringement if otherwise infringement is established.
Indication of an unregistered mark as a registered mark is a punishable offence in Saudi trademark law; therefore use of the ® sign for an unregistered mark may be risky from this perspective.
There are two types of proceedings available in Saudi Arabia for trademark infringement actions: administrative action and court action.
Administrative action can be initiated before the Anti Commercial Fraud Department (ACFD) in Riyadh. The ACFD has recently introduced a centralised complaint management system, and therefore a complaint can be filed with the ACFD headquarters in Riyadh against infringement occurring in any Saudi city. The ACFD requires evidence of infringement in the form of a sample of genuine and infringing products, purchase bills from outlets selling infringing products and the address of the location. The process includes submission of an online complaint along with evidence, study of the case by the ACFD, raids on outlets offering infringing products and destruction of the infringing products.
Although the ACFD operates under its own law (Anti Commercial Fraud Law), in some of the court’s judgments trademark infringement cases were dismissed and plaintiffs were advised to first resort to administrative procedure. The court also stated in its (debatable) judgment that any trademark infringement case will be premature and not maintainable if, prior to filing an infringement action, administrative action was not taken by the trademark owners. Administrative procedures are usually speedy, and in cases of prima facie infringement ACFD inspectors may conclude complaints within a two-month period.
Apart from administrative action, trademark infringement actions can also be filed with commercial courts in Saudi Arabia. In each type of action, registration of trademark is a precondition for success. Unregistered rights are not recognised in Saudi Arabia except in the case of well-known trademarks, in which case the plaintiff is under a heavy burden of proof.
Border control measures are considered as a very effective approach in Saudi Arabia. The customs authorities in Saudi Arabia have set up a procedure to record registered trademarks with customs for vigilance in all upcoming consignments of imports into Saudi Arabia. The customs authorities will stop, either on their own suspicion or by request filed by trademark owner, any suspected shipment, and will contact the registered trademark owner or its legal representative to confirm whether the suspected held products are genuine or counterfeit. Customs authorities are cooperative in this procedure and usually share pictures of suspected products very quickly and, where required, samples are also provided for the purpose of confirmation.
In any case, the trademark owner is obliged to initiate a case before a competent court within 10 days for the issuance of the order to destroy the imported goods or remove them from the channel of business. Goods harmful to public health and the environment are usually destroyed.
knowingly possessing tools or material intended to be used in the imitation of registered trademarks or famous trademarks.
Infringement proceedings are initiated by submitting a statement of claims to a competent court, or an online complaint before the administrative authority in the case of administrative action. In court proceedings, statements of claims will be served upon the defendants with instructions to submit a written statement on the date of the scheduled hearing. In Saudi Arabia, litigation is conducted through an exchange of written documents and oral arguments. In the case of technical matters, the judge can appoint an expert to submit his or her advice on any specific issue, although it is not the usual practice of courts. Oral testimony is acceptable as evidence. The case is decided by a presiding judge.
Criminal proceedings in trademark cases are initiated by a public prosecutor upon the recommendation of the ACFD. Saudi criminal procedure law is applicable to all criminal proceedings.
In Saudi Arabia trademark rights are acquired through registration; therefore a registration certificate is sine qua non to bring an infringement action. It is also the duty of the plaintiff to establish confusing similarity. In the case of unregistered well-known trademarks, the plaintiff is under an additional burden to prove that the mark is famous. The new trademark law stipulates the criteria for establishing the fame of a trademark, which are the extent of its recognition by the concerned consumers as a result of its promotion, the length of period of registration or use thereof, the number of countries of registration or fame or the value of the mark and the extent of its impact in the promotion of goods or services that the mark is used to distinguish.
In any action based on a well-known mark, all the above elements shall be proved by the plaintiff. If a well-known mark is actually used in Saudi Arabia, it is usually very convincing in proceedings.
The owner of a registered trademark or a licensee, authorised under agreement to do so, may bring a civil trademark infringement action if any third party has commercially exploited the registered trademark without authorisation. A criminal complaint may be initiated by the ACFD if, inter alia, the trademark infringement also has elements of fraud to consumers. The ACFD may initiate such actions suo moto or on a complaint submitted by the rights holder. In the latter case, the ACFD will examine the presence of criminal elements independently.
In such cases, foreign activities outside Saudi Arabia should establish cause of action in Saudi Arabia. Any unauthorised exploitation of registered trademarks through activities done outside the jurisdiction of Saudi Arabia will establish actionable cause if such goods are attempted to be imported into Saudi Arabia. The Saudi customs department has a strong mechanism of border control. Any suspected infringing or counterfeit goods are seized at the border, either by a complaint or on the initiative of customs officials. The customs officials will communicate with the rights holder or its authorised representative (recorded with custom) to confirm the status of the seized goods. In the case of counterfeit goods, the consignment is seized at the border and the customs department will initiate a procedure to destroy the goods or remove them from commercial channels.
There are no legal provisions in place for a discovery procedure. In practice, discovery of fact or discovery of documents is not possible in legal proceedings. The judge can, however, depending on the circumstances, ask any party to produce certain documents, but the law does not oblige litigating parties to produce them.
The time frame for litigation varies from case to case. Preliminary injunction proceedings can be concluded within two months. At trial level, it may take 12 to 16 months. Appeals before the Court of Appeal are usually concluded within four to six months.
Administrative infringement actions can be concluded within three to four months.
A typical infringement action may cost from US$15,000 to US$25,000 before Saudi courts. Administrative actions before ACFD usually cost from US$5,000 to US$7,000.
The award of damages is possible only in theory. Although Saudi trademark law has provisions on the award of damages, the Saudi courts follow shariah (Islamic) principles on damages. Under the Islamic principle, the damages should be actual, quantifiable and not based on speculation. Reputational damages are not recognised under this principle. The heavy burden of proof upon the plaintiff makes it difficult to establish damages to the satisfaction of the court, and in practice damages are not awarded.
In infringement and cancellation actions, the decision of the first instance court can be appealed by the aggrieved party before the Court of Appeal. The Court of Appeal may either reject the appeal or remand the case back to the first instance court along with observations. In the case of a refusal of appeal, the Court of Appeal will issue a written judgment, which will be final and enforceable.
See questions 8 and 9 for the appeal process in trademark refusals and opposition proceedings.
if the infringement action is brought by the owner of unregistered well-known marks, the defendant can dispute the fame of the well-known mark in Saudi Arabia.
A successful infringement case, whether administrative or in court, can end up in the issuance of an order to destroy the infringing goods. The actual damages and lost profits can be considered for apportionment of monetary relief, but in practice this is rarely granted. Award of damages or monetary relief is possible only in theory. Although Saudi trademark law has provisions on the award of damages, Saudi courts follow shariah principles on damages. Under the Islamic principle, the damages should be actual, quantifiable and not based on speculation. Reputational damages are not recognised under this principle. The heavy burden of proof upon the plaintiff makes it difficult to establish damages to the satisfaction of the court, and in practice damages or monetary relief are not awarded.
Interim injunctions are available in law, but in practice hardly granted by Saudi courts. Application for interim injunctions should be based on a prima facie case, which should include proof of trademark registration, and prima facie infringement of the registered trademark. Where the nature of imitation is such that a question of similarity between the marks may be subject to consideration, an interim injunction will not be granted.
Depending on the offence committed, monetary punishments can be between 1,000 and 1 million Saudi riyals. A recidivist can be punished with double punishments as provided for specific offences and reoffending may also lead to temporary closure of his or her business.
ADR is highly encouraged under Islamic principles. Mediation and arbitration between parties to disputes is encouraged in all forms of litigation and has strong roots in shariah law and traditions.
Arbitration in Saudi Arabia is governed under the new Law of Arbitration, issued by Royal Decree No. M/34, which is based on the UNCITRAL Model Law on international commercial arbitration, although not a verbatim adoption. Under this law, parties can exclude the jurisdiction of Saudi courts to take cognisance of a dispute between parties. Recourse to arbitration may save the parties time in a dispute and they may select a specialised arbitrator who has the relevant knowledge and skill to settle a dispute. The parties can adopt the language of the proceedings and place of arbitration. A notable concern is that the provisions of an arbitration agreement, either separately executed or by reference in a main agreement, cannot exclude the jurisdiction of Saudi courts on the invalidation proceedings of awards. The law provides a list of provisions for bringing an invalidation action; therefore, bearing in mind the Saudi legal system, there is always an element of uncertainty in the enforcement of awards, especially where the arbitration was held outside Saudi Arabia or by application of a non-Saudi law.
Saudi trademark law has provisions on criteria to establish a well-known trademark. According to the law, the fame of the mark shall be determined by the extent of its recognition by the concerned consumers as a result of its promotion, the length of period of registration or use thereof, the number of countries of registration or the fame or the value of the mark and the extent of its impact in the promotion of goods or services which the mark is used to distinguish.
Subject to the above provisions, a well-known trademark can be enforced against infringers if the use of the mark were to indicate a connection between the goods or services required to be distinguished by it and the goods or services of the owner of the well-known mark or the use of the mark would lead to the possibility of damage to the owner of the well-known mark.
Saudi courts also recognise provisions of multilateral intellectual property conventions and agreements relating to well-known marks.
well-known marks, whether registered or unregistered, are enforceable against a third party’s infringement.
the Saudi government announced the establishment of a new IP Authority in March 2017. The Saudi Intellectual Property Authority (SIPA) is considered one of the initiatives of the Trade and Investment System within the National Transformation Program 2020. The Trade and Investment System has worked to bring SIPA into existence and has set up the regularity arrangements to enable the authority to achieve its objectives. This is all with a view to the unification, under one umbrella, of the competent authorities that have a direct relation to the protection of intellectual property rights in the Kingdom.
Kadasa was founded 30 years ago by the renowned Saudi attorney Nassir Ali Kadasa in Riyadh, the Saudi Capital, under Associated Patent Attorneys. Mr Kadasa has the distinction of being the first Saudi attorney to prosecute and win an infringement lawsuit on behalf of a foreign entity against a national infringer.