Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Saudi Arabia are the following:

  • the Trademarks Law of the Gulf Cooperation Council States (GCC Trademarks Law) adopted under Royal Decree No. M/51 of 26 April 2014;
  • the implementing regulations of the GCC Trademarks Law;
  • Anti-Commercial Fraud Law promulgated by Royal Decree No. M/19 of 29 April 2008;
  • the Implementing Regulations of Anti-Commercial Fraud Law issued by Ministerial Resolution No. 155 of 23 December 2009;
  • the Border Measures Regulations issued pursuant to ministerial resolution No. 1277 of 3 July 2004; and
  • the Law of Trade Names issued by Royal Decree No. M/15 on 20 November 1999.
International law

Which international trademark agreements has your jurisdiction signed?

Saudi Arabia is a member of Paris Convention for the Protection of Industrial Property (Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights of the World Trade Organization.

Regulators

Which government bodies regulate trademark law?

The Ministry of Commerce and Investment (MoCI) used to govern trademark law; however, recently, the Saudi Authority for Intellectual Property (SAIP) was created and this authority is taking over trademark administration.

Registration and use

Ownership of marks

Who may apply for registration?

According to the trademark law adopted in Saudi Arabia, effective from 27 September 2016, the following entities are entitled to register their respective trademarks:

  • any natural or legal person who is a national of a GCC state and an owner of a factory or a product, a craftsman or trader, or owner of a private service project;
  • foreigners residing in any of the GCC states and who are licensed to engage in any activities relating to a trade, industry, craft or service;
  • foreigners who are nationals of a country that is a member of an international multilateral treaty to which a state of the GCC countries is a party to or persons residing in that country; and
  • public agencies.

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.

Scope of trademark

What may and may not be protected and registered as 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.

The law provides a detailed list of exclusionary subject matter:

  • a mark that is devoid of any distinctive character or consists of representations that are no more than customary names given by custom to goods and services, or conventional drawings and ordinary images of the goods;
  • expressions, drawings or marks that contravenes public morals or public order;
  • public emblems, flags, military emblems and other insignia belonging to any of the GCC states, other states, Arab or international organisations or any of their agencies or any imitation of any of them;
  • symbols of the International Red Crescent or Red Cross and any other similar symbols, as well as their imitations;
  • marks that are identical or similar to symbols of a purely religious nature;
  • geographic names, if their use is likely to cause confusion regarding the source or origin of the goods or services;
  • the name of another, surname, photograph or logo, unless the owner or successors have previously consented to its use;
  • information relating to honorary or academic degrees to which the applicant for registration cannot prove a legal entitlement;
  • marks that are likely to mislead the public, or contain false information as to the origin or source of the goods or services or their characteristics and other marks that contain a fictitious, imitated or forged commercial name;
  • marks owned by natural or legal persons with whom dealing is banned pursuant to a decision issued in this respect by the competent authority;
  • marks that are identical or similar to a mark previously filed or registered by others in respect of the same goods or services or similar goods or services if the use of the mark to be registered would generate links with the other owner’s registered goods or services or damage his or her interests;
  • marks whose registration for some goods or services may reduce the value of the goods or services distinguished by the previous mark;
  • marks that are copies, imitations or translations of a famous trademark or part thereof that is owned by others, to be used to distinguish goods or services identical or similar to those distinguished by the famous mark;
  • marks that are copies, imitations or translations of a famous trademark or an essential part thereof owned by others, to be used to distinguish goods or services not identical or similar to those distinguished by the famous mark, if such use indicates a connection between such goods and services and the famous mark and could damage the interests of the famous mark’s owner; and
  • 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 sharia law, for example, bars, dance clubs and any product or service with a reference to alcohol cannot be covered under trademark registration. Certification and collective marks are also acceptable under prescribed terms and conditions.

Unregistered trademarks

Can trademark rights be established without 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.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A famous foreign mark or a well-known mark can be afforded protection in Saudi Arabia under condition that the fame of a mark extends to Saudi Arabia. The law specifies the requirements for establishing fame. 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. While 'use' is one of the requirements for establishing fame, it may or may not be a 'use' in Saudi Arabia.

An unregistered well-known mark owner can successfully oppose identical or similar applications in Saudi Arabia. It is also possible to initiate cancellation action against a registered mark which imitates an un-registered well-known mark. Although registration of trademark provides very strong protection in Saudi Arabia, infringement action may be initiated based on an unregistered well-known mark.

Saudi courts recognise unregistered well-known marks and the current trend is very encouraging in this regard.

The benefits of registration

What are the benefits of registration?

Registration provides the following benefits to the registrant:

  • ownership of a trademark is acquired through registration in Saudi Arabia;
  • the registration provides presumption of lawful and true ownership unless proved to the contrary in a cancellation action;
  • there will be a presumption of confusion to the public in the event of unauthorised use of similar marks by any third party;
  • the owner of the registered mark acquires an exclusive right to use its trademark;
  • the right to licence is recognised only for registered marks in Saudi Arabia;
  • in the case of opposing third-party trademarks or in infringement actions, the owner of a registered mark does not need to prove any other evidence in relation to ownership claims;
  • infringement actions in Saudi Arabia, whether administrative or before courts, are recognised only for registered trademarks;
  • the owner of a registered mark can record its trademark with Saudi customs authorities to take advantage of effective border control measures 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; and
  • the registered trademark owner can also utilise Saudi border-control measures for anti-counterfeiting programmes.
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The documentation required for filing a trademark application is the legalised power of attorney from a 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 last date of a priority claim. For electronic filing, a trademark shall be filed in accordance with technical specification of the e-filing system.

Applicants can file trademark clearing searches by filing a simple application online. The official fee for a single trademark search is US$270 per class.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The online registration process in Saudi Arabia is relatively fast. 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 the 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 a trademark application is a legalised power of attorney from a Saudi consulate and notarisation, in the case of a Saudi entity, a clear image of the trademark, a 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. Registration of trademark starts from the date of filing.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Saudi Arabia has adopted the Nice Classification. 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 sharia 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.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

In Saudi Arabia, the trademark office will first examine the power of attorney. Once accepted, the applicant will file an online application. The trademark office will then examine the application on both absolute and relative grounds. As per current practice, the trademark office provides for one chance to amend the application if:

  • there is a conflicting mark cited;
  • the mark is considered descriptive or generic;
  • it is not registrable for to any other reason stipulated in law; or
  • 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 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 beginning 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 MoCI, 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.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

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.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

There are no provisions in Saudi laws on marking. In practice, a ™ symbol is used to indicate an unregistered trademark and a ® symbol is used to indicate that a mark is registered. Indicating a mark as registered without having formal registration in Saudi Arabia is a criminal offence.

Appealing a denied application

Is there an appeal process if the application is denied?

Under the trademark law, an appeal against a refusal decision can be filed before an administrative trademark committee. Before implementation of the new law, effective from 27 September 2016, appellate jurisdiction against refusal decisions was with the Minister of Commerce and Investment, and a further appeal could be filed before the administrative court and Court of Appeal

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.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Accepted applications are published on the website of the MOCI for a period of 60 days. Within this period, the application is open to opposition by third parties. Under the new procedure, opposition can be filed with the trademark office through an online portal.

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 15.

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 US$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.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

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.

See also question 13.

Surrender

What is the procedure for surrendering a trademark registration?

Voluntary cancellation of a trademark is possible by filing a simple application with the trademark office. A registered trademark owner can cancel a trademark fully or partially. The official fee of US$853 is applicable.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

No.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

There is no special law governing trademarks in online context, therefore, the law governing trademarks is also applicable in online context. However, the new Saudi E-Commerce Law has provision that prohibits unauthorised use of trademark in an online context. For Saudi country code top-level domains, the Saudi Network Information Center (Saudi NIC) is the relevant authority. An applicant can file an online application and pay the applicable fee for domain of interest. As per regulations, the Saudi NIC requires the applicant to prove competency for acquiring a domain as per the regulations. In practice, most applicants are asked to submit evidence of rights over domain and acceptable evidence is a trademark certificate.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Recordal of a trademark licence with the trademark office is optional in Saudi Arabia. Under the new trademark law, non-recordal has no 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. Recordal of licence requires a legalised power of attorney, a licence deed and trademark registration certificate. Recently, an online system has introduced the option to file applications online.

It is not mandatory to include quality control clauses in trademark licence agreement; however, the following information shall be part of licence deed:

  • the trademark registration number;
  • the trademark owner’s name and nationality;
  • the licensee’s name, address, domicile and nationality;
  • registered goods and services;
  • licence start and expiry dates; and
  • the geographical territory of the licence (if any).
Assignment

What can be assigned?

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 assign the trademark; the parties to transactions can agree otherwise.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

The following documents are required for the assignment of a trademark and recordal of assignment:

  • the assignment deed with complete details of both parties, notarised and legalised at a Saudi consulate;
  • a certified Arabic translation of the assignment deed;
  • the original trademark certificate;
  • the power of attorney, notarised and legalised at a Saudi consulate; and
  • a certified Arabic translation of the power of attorney.

Applications are currently filed manually with the trademark office, along with all required documents. 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 and is occasionally delayed.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

it is mandatory to record the assignment with the trademark office. The consequence of assignment non-recordal is clearly provided in the law. As far as assignment validity 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.

See also question 22.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interest is recognised and notarised, alternatively, the 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.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

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 used to have a centralised complaint management system and a complaint could be filed with the ACFD headquarters in Riyadh against infringement occurring in any Saudi city; however, recently, the ACFD instructed complainants to file a separate complaint for each 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 court judgments trademark infringement cases were dismissed and plaintiffs were advised to administrative procedure as a first resort. A 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 an 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 a request filed by a 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. The 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.

Other than Saudi trademark law providing criminal provisions, the provisions of the Anti Commercial Fraud Law may be extended to trademark infringement in exceptional circumstances. Under Saudi trademark law the following are offences:

  • counterfeiting or imitating a registered mark so as to mislead or confuse the public, or using in bad faith any counterfeited or imitated mark;
  • identifying goods or services in bad faith with a mark owned by others;
  • knowingly selling, offering for sale or trading, or possessing with the intention of trading any goods bearing counterfeited or imitated marks; or unlawfully using such marks or offering services under them;
  • using a non-registered mark in cases provided for in items 2 to 11 of article 3 of the law;
  • unlawfully inscribing upon the mark, papers or commercial documents a representation that might lead to the belief that he or she has obtained registration of such mark;
  • deliberately and in bad faith failing to affix the registered trademark on the goods or services it distinguishes; and
  • knowingly possessing tools or material intended to be used in the imitation of registered trademarks or famous trademarks.
Procedural format and timing

What is the format of the infringement proceeding?

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.

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.

Burden of proof

What is the burden of proof to establish infringement or dilution?

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.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

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.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Saudi Arabia has effective border control measures. A registered trademark owner can take benefit of border measures by recording its trademark with Saudi Customs. Kadasa IP has a memorandum of understanding with Saudi customs for cooperation over anti-counterfeiting actions. According to practice, the customs authorities will keep watch on imports bearing recorded trademark and seize any suspected consignment. Local agents are provided samples or images to confirm the nature of the products. The customs authorities require written confirmation on the nature of the goods seized. In case of counterfeit goods, the customs authorities will seize the goods in accordance with their internal procedure.

In such cases, foreign activities outside Saudi Arabia should establish a 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 authority 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 at the customs authority) to confirm the status of the seized goods. In the case of counterfeit goods, the consignment is seized at the border and the customs authority will initiate a procedure to destroy the goods or remove them from commercial channels.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

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.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

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.

Limitation period

What is the limitation period for filing an infringement action?

There is no limitation period, however, an action shall be filed during validity period of a registered trademark.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

A typical infringement action may cost between US$15,000 to US$25,000 before the Saudi courts. Administrative actions before the ACFD usually cost between 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 sharia 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.

Appeals

What avenues of appeal are available?

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 15 and 16 for the appeal process in trademark refusals and opposition proceedings.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Possible defences in Saudi Arabia may include the following:

  • the plaintiff’s trademark is unregistered or subject to a disclaimer;
  • the defendant’s use of a trademark falls under a permitted exception of trademark law (ie, descriptive use);
  • the defendant has a trade name registration and is authorised to use its trade name;
  • the plaintiff’s trademark is different from the defendant’s mark to the extent that there is no likelihood of confusion for unwary purchasers;
  • the mark was used in good faith without knowledge of registration of a similar or identical trademark; and
  • 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.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

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. An 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 sharia 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.

The trademark law declares certain acts as offences, which include the following, among others:

  • counterfeiting or imitating a registered mark so as to mislead or confuse the public, or using in bad faith any counterfeited or imitated mark;
  • identifying goods or services in bad faith with a mark owned by others;
  • unlawfully inscribing upon his or her mark, papers or commercial documents a representation that might lead to the belief that he or she has obtained registration of such mark;
  • deliberately and in bad faith failing to affix the registered trademark on the goods or services it distinguishes; and
  • knowingly possessing tools or material intended to be used in the imitation of registered trademarks or famous trademarks.

Depending on the offence committed, monetary punishments can be between 1,000 Saudi riyals 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

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR is highly encouraged in all forms of litigation and has strong roots in sharia 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 United Nations Commission on International Trade Law Model Law on international commercial arbitration, although it is 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.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

In a recent case, the Commercial Court of First Instance refused to accept jurisdiction over the question of infringement. Likewise, the Administrative Court of First Instance refused to accept a cancellation action for want of jurisdiction. These decisions have been challenged before higher courts; however, this trend has created confusion in local trademark practice.

According to the practice of the Saudi trademark office, a letter of consent is not acceptable to settle the objection based on similarly cited mark. In a recent decision by the Administrative Court of First Instance, the letter of consent was considered as acceptable evidence and a strong reason to overcome a similarly cited mark. Hopefully this decision might change the practice of the Saudi trademark office towards letters of consent.