Registration and useOwnership 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.
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.