Did you know that in Saudi Arabia it is compulsory to record a trade mark licence at the local Trade Marks Office? Previous advice had been that it was best practice to record a licence in Saudi Arabia, but it is now clear that it is obligatory to record a licence in Saudi Arabia. A recent example demonstrates how failure to do so can have significant consequences: the licensee of a luxury brand store was recently forced to either remove all of the brand’s trade marks from its store or to close the store until the licence had been recorded at the local Trade Marks Office. The trade marks were being used under licence, however, the licence was not recorded at the Saudi Arabian Trade Marks Office.
General points to bear in mind when considering the recordal of a licence in Saudi Arabia are:
- The licence agreement must be in writing executed by both the licensor and the licensee and must be notarised and legalised up to the Saudi Arabian consulate;
- If the licence agreement is not in Arabic, an Arabic translation must be provided;
- The licence agreement must specify the term of validity of the licence; and
- Upon renewal of the trade mark registration, it is necessary to re-record the licence agreement, this can be done together with renewal or after renewal.
We strongly recommend that you review any licences in place in Saudi Arabia and confirm that they have been recorded against your Saudi Arabian trade marks.