Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Saudi Arabia are:

  • the Gulf Cooperation Council Trademark Law, which entered into force on 27 September 2016 by virtue of Royal Decree M/51 of 26.07.1435H and its implementing regulations;
  • the Anti-Commercial Fraud Law, promulgated by Royal Decree M/19 of 23.04.1429H (29 April 2008) and its implementing regulations issued by Ministerial Resolution 155 of 06.01.1431H (23 December 2009); and
  • the Border Measures Regulations, issued pursuant to Ministerial Resolution 1277 (3 July 2004).

International law

Which international trademark agreements has your jurisdiction signed?

Saudi Arabia signed the Paris Convention for the Protection of Industrial Property on 11 March 2004 and the Agreement of Trade-Related Aspects of Intellectual Property Rights on 11 December 2005.

Regulators

Which government bodies regulate trademark law?

The Ministry of Commerce and Investment enforces trademark law through its trademark office. The Saudi Intellectual Property Authority has been tasked with the administrative control of trademarks since 2018.

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Trademark ownership in Saudi Arabia is established by registration and is therefore determined on a first-to-file basis. However, the law provides a right of action to prior users of trademarks by way of opposition or cancellation proceedings.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

The prior user of an unregistered trademark has the right to file an opposition and cancellation action against a published or registered trademark. Plaintiffs must have convincing evidence to prove a trademark’s prior use. In case of an unregistered famous trademark, the owner must prove the trademark’s fame in accordance with stipulated legal criteria. A trademark’s fame is thus determined by:

  • its recognition by consumers as a result of promotions;
  • the length of its registration or use;
  • the number of countries in which it is registered or famous;
  • its value; and
  • its impact on the promotion of goods or services to which it has been applied.

How are rights in unregistered marks established?

Plaintiffs must have convincing evidence to prove a mark’s prior use. Such evidence can be sales invoices, records of commercial advertising or any other document which establishes prior use of a trademark. In case of an unregistered famous mark, the owner must prove the mark’s fame in accordance with stipulated legal criteria. A mark’s fame is thus determined by:

  • its recognition by consumers as a result of promotions;
  • the length of its registration or use;
  • the number of countries in which it is registered or famous;
  • its value; and
  • its impact on the promotion of goods or services to which it has been applied.

Are any special rights and protections afforded to owners of well-known and famous marks?

Saudi law recognises well-known marks. It is illegal to register a mark which is identical or similar to a famous mark in respect of identical or similar goods or services unless the application is filed by the mark’s owner or the owner has consented thereto.

It is also illegal to register an unregistered well-known mark for goods or services which are not identical or similar to those distinguished by the mark if its use would:

  • 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; and
  • could damage the owner of the well-known mark.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign trademark registrations are recognised in Saudi Arabia as evidence of good faith ownership if combined with a claim of prior use in Saudi Arabia. Among others, foreign trademark registration is one form of evidence that helps to establish the global fame of a trademark in Saudi Arabia. 

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

The owner of a registered trademark has the right to exclude others from using or registering similar or identical trademarks in Saudi Arabia for identical or similar goods or services. Further, the owner of a registered trademark can license its trademark to other entities. Registered trademark owners can also use border control measures in Saudi Arabia. Trademark registration is conclusive evidence of ownership for all purposes in Saudi Arabia.

Who may register trademarks?

The following entities are entitled to register their respective trademarks:

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

What marks are registrable (including any non-traditional marks)?

The law provides a non-exhaustive list of registrable trademarks. Anything with distinctive character can be a trademark, including names, words, signatures, letters, symbols, numbers, titles, stamps, drawings, pictures, inscriptions, packaging, figurative elements, shapes and colours, groups of colours and combinations thereof and any sign or a group of signs used or intended to be used to distinguish the goods or services of one undertaking from those of another undertaking or to identify a service or act as a certification mark in respect of goods or services. Smell and sounds marks are also registerable.

Can a mark acquire distinctiveness through use?

The doctrine of acquired distinctiveness is not widely recognised in Saudi Arabia.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

Trademark applications are examined on both absolute and relative grounds in Saudi Arabia. The similarity of trademarks and goods or services is decisive in trademark examinations. To date, the dominant practice is that similarity of class is considered a presumption of similarity in goods or services; however, the law does not support this understanding.

Are collective and certification marks registrable? If so, under what conditions?

Collective marks are registerable in Saudi Arabia. The Ministry of Commerce and Investment’s trademark office may register collective trademarks that are used to distinguish goods or services of members belonging to a certain body. The registration request must be submitted by a representative of the body for use by the members as determined in their terms and conditions. The applicant must file a copy of the set of conditions for use of the mark in question. The owner of the collective mark must also inform the competent authority of any changes in the set of conditions – the approval of said changes is subject to examination by the competent authority. Geographical indications are also registerable as collective marks.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

A power of attorney must be duly notarised and legalised by the Saudi consulate. Before filing trademark applications, a power of attorney must be approved by the Ministry of Commerce and Investment’s trademark office.

What information and documentation must be submitted in a trademark registration application?

A trademark application must contain:

  • a power of attorney;
  • a high-resolution image of the trademark;
  • the applicant’s name and address; and
  • the list of applicable goods or services as per the Nice Classification.

What rules govern the representation of the mark in the application?

The representation of a mark must not conflict with Saudi trademark law as provided under a broad list set out in Article 3 of the Gulf Cooperation Council Trademark Law. Trademark representations must comply with the Islamic principles of modesty and morality.

Are multi-class applications allowed?

The law provides for multi-class applications; however, in practice the Saudi trademark office does not allow.

Is electronic filing available?

Yes.

What are the application fees?

The total fee from filing to registration of a trademark in one class is $2,405. 

Priority

How are priority rights claimed?

Priority rights can be claimed by filing certified copies of earlier filings within six months of the priority application filing date.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Trademark searches can be filed by submitting a manual application to the trademark office. The official fee for filing searches in one class for one trademark is $270. 

Examination

What factors does the authority consider in its examination of the application?

Trademark applications are examined on both relative and absolute grounds.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes – the authority examines the trademark applications on relative grounds. Any earlier-registered trademarks which are either identical or similar to the applied-for trademark may be grounds for refusal. Letters of consent from earlier registrants are not accepted.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

If challenged, trademark applications may be amended by applicants. In practice, a 10-day period is provided for amendments. All communication with the authority is made online.

Can rejected applications be appealed? If so, what procedures apply?

Under the trademark law, an appeal against a refusal decision can be filed before an administrative trademark committee. An appeal can be filed against a refusal decision or the imposition of conditions by the trademark office within 60 days of being issued.

Trademark committee decisions can be appealed before the Administrative Court within 60 days of being issued.

Administrative Court decisions can be appealed before the Administrative Court of Appeal within 30 days of being issued.

The Supreme Administrative Court is the highest judicial authority in the administrative court system and is responsible for ensuring correctness in the application of laws and the principles of Sharia law by the Administrative Court of Appeal.

Registration

When does a trademark registration formally come into effect?

Trademark registrations formally come into effect on the date of registration; however, the registration term is calculated from the date of filing.

What is the term of protection and how can a registration be renewed?

Protection lasts for 10 years starting from the date of filing. Registration can be renewed within the last year of the protection period. For an additional fee, a six-month grace period is available once the term of protection expires.

What registration fees apply?

The total fee for registering a trademark in one class is $2,405.

What is the usual timeframe from filing to registration?

The usual timeframe from filing to registration is between four and five months.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Accepted applications are published online for a period of 60 days. During this period, applications can be opposed by third parties. Oppositions can be filed before the trademark opposition committee on the basis of earlier registered trademark rights or earlier pending applications in Saudi Arabia. Oppositions can also be filed on the basis of unregistered well-known marks which are famous in Saudi Arabia or on a prior-use basis.

In opposition proceedings, opponents may request a hearing at the time of filing the opposition provided that they pay a prescribed fee. The official fee per hearing request is $270. 

What is the usual timeframe for opposition proceedings?

Opposition proceedings are usually concluded within seven to nine months.

Are opposition decisions subject to appeal? If so, what procedures apply?

Trademark opposition committee decisions can be appealed before the Administrative Court within 30 days of being issued.

Administrative Court decisions can be appealed before the Administrative Court of Appeal within 30 days of being issued.

The Supreme Administrative Court is the highest judicial authority in the administrative court system and is responsible for ensuring the Administrative Court of Appeal’s correctness in the application of the law and the principles of Sharia law.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Non-use cancellation actions can be filed with the Administrative Court by interested parties if a registered mark is not used for five consecutive years in Saudi Arabia. The defendant has the burden of proving that non-use was due to genuine reasons beyond the registrant’s control (eg, warfare, import sanctions or any other justifiable reason which can prove the registrant did not intend to stop using the registered mark).

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

Saudi law provides for trademark revocation on the basis of non-use for five consecutive years. Interested parties can file non-use cancellation actions with the Administrative Court if a registered mark is not used for five consecutive years in Saudi Arabia. The defendant has the burden of proving that non-use was due to genuine reasons beyond the registrant’s control (eg, warfare, import sanctions or any other justifiable reason which can prove the registrant did not intend to stop using the registered mark).

Who may file a request for revocation and what is the statute of limitations for filing a request?

Revocation on the basis of non-use can be filed by any interested party at any time provided that there is clear evidence of non-use for five consecutive years.

What are the evidentiary and procedural requirements for revocation proceedings?

Revocation actions are combined with third-party investigations to determine a trademark’s non-use. The courts have wide discretion to accept or reject investigative reports. Trademark owners have the burden of proving the mark’s use over the past five years.

Appeal

What is the appeal procedure for cancellations or revocations?

Administrative Court decisions can be appealed before the Administrative Court of Appeal within 30 days of being issued.

The Supreme Administrative Court is the highest judicial authority in the administrative court system and is responsible for ensuring the Administrative Court of Appeal’s correctness in the application of the law and the principles of Sharia law.

Surrender

What is the procedure for surrendering a trademark registration?

Registrants must apply to the trademark office to surrender a trademark registration. If a mark’s use is licensed by a contract recorded in the trademark register, its registration cannot be surrendered unless written consent is obtained from the licensee. Licensee’s may expressly waive this right in the licence itself.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Trademark rights can be enforced by initiating administrative actions before the Anti-Commercial Fraud Department (ACFD), which is headquartered in Riyadh. Complaints may be filed to the ACFD regarding trademark infringements that occur in Saudi Arabia. Evidence of infringement may include:

  • samples of genuine and infringing products;
  • purchase bills from outlets selling the infringing products; and
  • addresses of outlets selling the infringing products.

Administrative procedures are often concluded quickly – in prima facie infringement cases, ACFD inspectors may conclude complaints within two to three months.

Trademark infringement actions can also be disputed before the courts in Saudi Arabia. In each type of action, registering a trademark can be beneficial during litigation. Enforcing unregistered marks is difficult unless the mark is well-known, in which case the plaintiff bears the heavy burden of proof.

Registered trademark owners can also record their trademarks with Saudi Customs in order to monitor incoming consignments. Border control measures are a highly effective anti-counterfeiting mechanism in Saudi Arabia. 

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Trademark rights can be enforced by initiating administrative actions before the ACFD. Complaints may be filed with the ACFD regarding trademark infringements that occur in Saudi Arabia. Evidence of infringement may include:

  • samples of genuine and infringing products;
  • purchase bills from outlets selling the infringing products; and
  • addresses of outlets selling the infringing products.

Administrative procedures are often concluded quickly – in prima facie infringement cases, ACFD inspectors may conclude complaints within two to three months.

Civil trademark infringement actions may be filed by submitting a statement of claims with the competent court. There are no pre-trial procedures and each party is provided with sufficient opportunity to plead its position by submitting written statements and evidence in court. Most infringement actions take between 12 and 14 months to conclude.

Criminals cases can be initiated by a public prosecutor upon recommendation from the ACFD. Rights holders are not entitled to join criminal prosecutions initiated by a general prosecutor.

Who can file a trademark infringement action?

Registered trademark owners or licensees authorised under a licence agreement can file trademark infringement actions.

What is the statute of limitations for filing infringement actions?

N/A.

What is the usual timeframe for infringement actions?

Most infringement actions take between 12 and 14 months to conclude.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Saudi laws provide for interim and permanent injunctions for rights holders. In case of prima facie infringement, rights holders may request a preliminary injunction. Requests should be based on evidence of registered trademark right infringement. The plaintiff must prove that, until the final decision in the proceedings, there is a high chance that it will suffer irreparable damages. In practice, Saudi courts rarely grant interim injunctions.

In final injunctions, on conclusion of a case, the court can order the infringing products to be destroyed. Repeat infringements are subject to more severe punishments.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

Trademark owners can request a court order to destroy infringing goods. Monetary compensation may be offered in case of actual damages and profit losses; however, in practice, such compensation is rarely granted (ie, damages awards and monetary compensation are available only in theory). Although Saudi trademark law provides for damages awards, the Saudi courts follow Sharia principles on damages. Under Islamic principles, damages should be actual, quantifiable and not based on speculation. Reputational damages are not recognised under these principles. 

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Registered trademark owners can also record their trademarks with Saudi customs in order to monitor incoming consignments. Border control measures are a highly effective anti-counterfeiting mechanism in Saudi Arabia.

Defence

What defences are available to infringers?

The following defences are available to infringers:

  • the plaintiff’s trademark is unregistered or subject to a disclaimer;
  • the defendant’s use of the trademark falls under permitted exceptions set out in trademark law (eg, descriptive use);
  • the defendant has a trade name registration and is authorised to use said trade name;
  • the plaintiff’s trademark is different from the defendant’s mark to the extent that there is no likelihood of confusion by unwary purchasers;
  • the mark is being used in good faith (ie, without knowledge of the registration of a similar or identical trademark); and
  • the mark is not famous in Saudi Arabia (where the infringement action is brought by the owner of an unregistered well-known mark).

Appeal

What is the appeal procedure for infringement decisions?

First-instance court decisions can be appealed before the Court of Appeal within 60 days of being issued.

The Supreme Court is Saudi Arabia’s highest judicial authority and is responsible for ensuring the Court of Appeal’s correctness in its application of the law and the principles of Sharia law.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

Assignments must be filed by submitting a legalised deed of assignments. To be effective, the assignment must be recorded by the Ministry of Commerce and Investment’s trademark office.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Only registered trademark licences are recognised in Saudi Arabia. A licence need not be recorded to have legal effect.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Licence agreements cannot contain any clauses which impose on licensees limitations that are not derived from the rights conferred by the mark’s registration or that are unnecessary for the maintenance of such rights.

Licence agreements usually contain the following clauses:

  • a limitation on the mark’s geographical territory or period of use;
  • provisions ensuring the owner’s effective control of the quality of the products or services to which the licence applies; and
  • an obligation imposed on licensees to abstain from all acts capable of prejudicing the value or fame of the products or services to which the licence applies.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

Notarised (ie, legalised) security interests can be recorded against registered trademarks. Security interests are not effective unless recorded with the trademark office and published.

Related rights

Related IP rights

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

In general, trademarks cannot be protected under other IP rights, although this depends on the type of trademark. In the case of artistic trademarks, copyright claims can be combined with trademark rights; however, mere copyright claims are not decisive.

Online issues

Trademarks online and domain names

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

The Gulf Cooperation Council Trademark Law and the Anti-Commercial Fraud Law governs the protection of trademarks online.

The Saudi Network Information Centre (SaudiNIC) is responsible for administering the domain name space for Saudi Arabia’s country code (‘.SA’). SaudiNIC decides domain name disputes in accordance with its rules.

If SaudiNIC does not cancel a domain name, trademark owners can appeal to the Administrative Court. In general, unregistered trademark cases are decided by the courts.