Those considering filing a TM infringement suit in Saudi Arabia have 2 options: pursuing administrative action or taking legal action. The 1st option requires applicants to file a complaint with the Riyadh-based ACFD. They must also provide proof of infringement (e.g. samples of authentic & counterfeit products & purchase invoices).
The entire process can be divided into 3 stages:
- filing a complaint;
- conducting an investigation;
- seizing & destroying fake products.
A 2nd option involves filing a claim for infringement of TM rights in the Kingdom of Saudi Arabia with a commercial court. Initiating litigation in the Kingdom of Saudi Arabia involves an exchange of written documentation & verbal arguments. Experts capable of providing advice on specific matters can also be appointed by judges. Providing verbal testimony as evidence is accepted. TM owners have ten days for filing a lawsuit for infringement of TM rights in the Kingdom of Saudi Arabia. After that, a court order will be issued & fake goods seized & destroyed.
There’s also the procedure for registering TMs in the Kingdom of Saudi Arabia with customs. Under it, customs officers can seize any shipment of fake products & send a notification to licensed TM owners about it.
Whichever option applicants choose, registering a TM in the Kingdom of Saudi Arabia is a prerequisite for filing infringement claims. Please note that unregistered rights aren’t recognized (an exception is made for well-known TMs).
TM licensing in Saudi Arabia implies that owners of registered TMs can file a civil claim for infringement of TM rights in Saudi Arabia if their registered TMs are used for commercial purposes without their permission. Criminal proceedings can be initiated if it’s established that TM infringement involves defrauding consumers.
Unauthorized use of TMs & counterfeiting registered TMs for the purpose of misleading the public can entail a prison term of up to 36 months & a fine of up to two hundred thousand dollars. Additional penalties may include a closure of a business for up to six months publication a decision at the violator's expense.
Using registered TMs outside the Kingdom of Saudi Arabia without permission is a compelling reason for initiating TM infringement litigation in the Kingdom of Saudi Arabia. Owners of registered TMs can request seizure of fake products at the border by filing a complaint; alternatively, counterfeit goods can be seized by customs officials. After seizing the goods, the customs officials will contact copyright holders & notify them of their status. After it’s confirmed that the goods are counterfeit, a procedure for their destruction or removal from points of sale is initiated.
Issuing a preliminary injunction normally takes up to 60 months. 1st instance courts may require up to sixteen months to complete this procedure. Reviewing an appeal in the Kingdom of Saudi Arabia normally takes up to half a year. Reviewing administrative offenses may take up to 120 days.
It’s possible to appeal decisions rendered by courts of the 1st instance with appellate courts. The latter can either reject appeals or return cases to courts & provide their comments along with them. If appeals are rejected, appellate courts’ decisions are deemed final & enforceable.
Saudi Arabia: ADR
The new Arbitration Act regulates arbitration in the Kingdom of Saudi Arabia. Modelled on the UML, it provides parties with an opportunity to settle their disputes in other countries. Resolving a commercial dispute by arbitration in the Kingdom of Saudi Arabia enables parties to select properly skilled & experienced arbitrators. They can also choose the language & site of arbitration proceedings. Overall, executing decisions, especially in cases when arbitration was conducted in foreign countries or pursuant to other countries’ laws, always has an element of surprise to it.
Considering filing a TM infringement lawsuit in the Kingdom of Saudi Arabia? Need advice on TM regulation in the Kingdom of Saudi Arabia? Please consider contacting IQ Decision UK?