Introduction
Customs recordals and seizures
Administrative complaints
Court proceedings
Comment
Saudi Arabia's approach to intellectual property is continuing to evolve and strengthen. The creation of the Saudi Authority for Intellectual Property (SAIP) in 2018 paved the way for the local approach to align with international standards, which is a continuous work in progress.
As changes continue to take place, this article briefly outlines the current measures available to brand owners to protect their trademarks in Saudi Arabia – namely:
- customs recordals and seizures;
- administrative complaints; and
- court proceedings.
This article will provide a summary of each. Legal advice should be sought with respect to each fact pattern.
Customs recordals and seizures
Recordal of trademarks with customs is possible if it is filed by a local agent that has a memorandum of understanding with the customs authority. As with most jurisdictions around the world, customs recordals in Saudi Arabia are quick and relatively inexpensive to complete. Yearly renewal is required and, due to the authorities' proactiveness in this area, customs recordals are recommended.
Should a third-party infringer be discovered, it is possible to file an administrative complaint with the Anti-counterfeit and Fraud Department (ACFD). Successful complaints are usually limited to strict counterfeit goods; however, other cases may be actioned depending on the degree of similarity between the marks. Proper legal advice should be sought in advance regarding the suitability of such an action.
In time, this function is due to be absorbed by the SAIP, which will bring a more cohesive approach to local enforcement. For now, complaints with the ACFD must be submitted in writing and contain all of the required information. As with most administrative actions, complaints are the most time- and cost-effective method of trademark protection.
Alternatively, or further to an unsuccessful ACFD complaint, brand owners can pursue court proceedings. Criminal complaints must be filed with the police and are then assessed by the public prosecutor. If the public prosecutor believes that there is a case to answer, it will pursue the case without any real involvement from the brand owner. While the Gulf Cooperation Council Trademark Law does allow for imprisonment, this penalty is rarely imposed and fines are most often ordered instead.
Alternatively, or on the back of a successful criminal complaint, a brand owner may file a civil infringement claim with the Commercial Court, seeking:
- damages;
- a stop order; and/or
- destruction of the goods.
While interim injunctions are unavailable in Saudi Arabia, the Trademark Law allows for a similar action known as a "precautionary measure". However, as they are rarely requested, they remain relatively untested. In comparison with other jurisdictions, a damages award is rarely significant in Saudi Arabia so this should not be the main driver in pursuing court action. As the costs of litigation can be high, they are unlikely to be recovered by any penalty imposed on the infringer.
In light of the ongoing changes in Saudi Arabia, including the implementation of its 2030 Vision, enforcement of intellectual property is an area that will continue to mature. It is therefore important for brand owners to remain abreast of upcoming changes so that appropriate action can be taken to curtail and avoid infringements.
For further information on this topic please contact Renee Nugent at Bird & Bird by telephone (+971 4 309 3222) or email ([email protected]). The Bird & Bird website can be accessed at www.twobirds.com.