Trade mark registrations are obtained through the Trade Mark Office which forms part of the Ministry of Commerce and Industry (MOCI) in Riyadh. In the last two years, the officials have developed an in-house computer system so that trade mark applications are now filed and published online. This has significantly expedited the timeline for registering applications that do not meet with objections. Registrations can be obtained in under nine months. It is possible to secure registered trade marks for products and services in Saudi Arabia. However, there are restrictions where the products or services do not meet with local cultural sensitivities. For example alcohol related products and services cannot be protected.
Saudi operates a single class filing system and with online filing adopted a new classification system. The officials use an adapted version of the 10th Edition of the Nice Classification, but applicants are restricted to pre-approved terms only. This can pose significant issues as everyday terms such as “retail services” or “streaming services” are not included in the acceptable list.
Careful thought and knowledge of what is, and what is not, acceptable in Saudi Arabia is required in order obtain protection which is suitable for the needs of the business.
Unlike many other countries, opposition proceedings against trade mark applications are filed before an administrative court (the Board of Grievances). More often than not, the proceedings are brought by the opponent against the Trade Mark Office (MOCI) rather than against the applicant.
Our ‘top tips’ for registering trade marks in Saudi Arabia are:
- Search – ensure pre-filing searches are conducted, as the Trade Mark Office will issue a straight refusal if a conflicting mark is identified on examination;
- Register – registration is key and we recommend filing early … before speaking with local partners; – Al Arabiya – Arabic is the main language of Saudi Arabia and the wider region. It is therefore important to develop, protect and use Arabic branding and not rely on an English-only approach;
- Goods/services – some are not permitted (alcohol for example) consider what options are open to you to protect your interests;
- Classification – with the introduction of online filing, only pre-approved terms are permitted … not all goods or services are covered and so careful choices need to be made to try and obtain protection;
- Class headings – unless the products or services of interest are specifically mentioned in the class heading, we advise against using class headings (as this may result in the enforcement authorities being unwilling to take action);
- The mark – objections may be raised on moral grounds to marks which are easily registered elsewhere, and the mark may need to be changed in order to be used and registered in Saudi;
- Marketing – for the same reason some rights holders have to change their marketing campaigns from those used in other countries;
- Consistency – ensure the Arabic name and address used is consistent with what has been used before, or you may have a rejection based on your own rights;
- Stay up to date – update names and addresses for Saudi matters as they occur and avoid the temptation of updating names or addresses on renewals. Due to the need for supporting documents and Powers of Attorneys for such actions, this can pose a false economy when trying to pull together the documentation required at the time of renewal;
- Act fast – applications are for the most part examined within days of being filed, and published on the day the fees are paid to the Trade Marks Office; and
- Dates - the official calendar in the Kingdom is the Hijiri Calendar. On average, a Hijiri year is 11 days shorter than a Gregorian year. Rights holders are advised to always work from the Hijiri calendar for renewal dates, so as not to miss renewing registered rights.