The Kingdom of Saudi Arabia (KSA) is situated at the junction of Africa, Europe and Asia. Being top oil exporter in the world and being seriously committed to promoting an efficient economic diversification program makes this country an attractive market for international brand owners.
In its continuous efforts to protect intellectual property, especially trademarks, KSA adopted the Gulf Cooperation Council Trademark Law. This law states a set of provisions are equally applied across all the Gulf countries regarding the prosecution and implementation of trademark rights. It is important to note that the GCC Trademark Law does not provide a unified registration system similar to the European trademark registration, and the Trademark Offices of each GCC country will remain as the receiving office. Accordingly, the Saudi one is in charge of receiving all applications for trademark registrations in KSA.
In this article, we will be looking at important factors brand owners should take into consideration prior to registering a trademark in Saudi Arabia.
Saudi Arabia adopts the 10th edition of the International Nice Classification. An applicant for a trademark registration can only choose from the list of products and services pre-approved on the online platform. The procedure at the Trademark Offices enables the applicant to (1) file for class headings, (2) claim class heading in combination with all the items in the class, (3) claim class heading in combination with specific items from the Nice Classification, and (4) claim specific items of the Nice Classification.
KSA is a first-to-file country that complies with civil law. This important factor has to be kept in mind when considering an expansion into this country.
The application is examined by the TMO on both absolute and relative terms. Following the stipulations set forth in Article 12 of the GCC Trademark Law, which allows the authorities concerned to set the restrictions and changes it considers necessary to determine and clarify the trademark in a way preventing its confusion with another mark already registered or for any other reason it deems rational.
The applicant is allowed to respond with the required amendments, and the TMO may issue an acceptance or refusal decision. Failure to respond within the stipulated timeframe may lead to the refusal of the trademark.
Once a trademark is accepted it is published on the online Official Gazette, and may be opposed by any third party with grounds for an opposition. The opposition period is 60 days from the publication date. Extensions of time to oppose are impossible in KSA.
As per the GCC Trademark Law, within a month of filing an opposition the TMO provides a copy of the opposition statement to the applicant to submit a written response within 60 days. Hearings may also be held when requested by either party to the opposition as long as the official fees are paid by the party requesting the hearing. The decision of the committee can be appealed by the affected party to the Board of Grievances within a 30-day period from the notification date. The decision of the Board of Grievances can be further appealed before the Court of Appeal.
Opposition 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 an opposition proceeding on the basis of any legal provisions that prohibit registration of certain marks in the country.
Since Saudi Arabia is a first-to-file country, the party administering the opposition cannot require the opponent to provide proof of use of the earlier registered mark that is the basis of the opposition. In order to challenge use, the applicant must file for a separate non-use cancellation proceeding. It is worth noting that opposition proceedings will not be interrupted pending the issuance of a decision in the cancellation proceeding and vice versa. Even if prior rights are not established, an opposition can still be filed based on the fame of the trademark.
Procedure and Withdrawal
In case the owner of the opposed mark fails to submit a counter-statement, the application is rejected. If an applicant withdraws an opposition the proceeding is terminated and an official notification is issued by the TMO. It is a standard practice for both parties to come to a settlement agreement regarding use of the trademark. Based on the evidence filed by each party, or based on an oral hearing, the TMO issues a decision regarding the grant of the pending trademark.
The protection period of a trademark is approximately 10 years. To maintain registration, the registrant needs to file renewal during the last year of expiry. There is a grace period of six month, 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. An expired mark cannot be registered in favor of any third party for a period of three years post expiry or cancellation, however.
It is possible to register a trademark in Saudi Arabia without actually using it. However, trademark registrations in Saudi Arabia may be vulnerable to cancellation in the event of non-use within a period of five consecutive years. It is therefore highly recommended that trademark rights be maintained through actual use in KSA in order to circumvent any possible non-use cancellation proceeding.
Apart from dealing with the difficulties of legal proceedings in a non-use cancellation proceeding, it will be of vital importance to establish valid and genuine use in KSA. The trademark in question must be directly used by the sale of goods bearing the mark—or providing services under the mark.
Marking is not mandatory in KSA. However, it is highly recommended to use the ™ or ® symbol on a trademark given that the lawful use of the symbols will give notice to the public about the owners’ rights.
The ™ symbol indicates that a mark is in use in Saudi Arabia but is not registered yet at the TMO. Meanwhile, the ® symbol signifies that the mark has been successfully registered at the Saudi TMO. It is worth mentioning that the registration of the mark in any other TMO within the Gulf region does not count. The illegitimate use of the ® symbol may be treated as fraudulent marking in Saudi Arabia. It is therefore advisable that the ® symbol must be used exclusively with trademarks that are actually registered at the TMO.
Along with the adoption of the GCC Trademark Law, the establishment of the new Saudi Authority for Intellectual Property marked a turning point in Saudi Arabia’s era of innovation and development. KSA is increasingly offering better protection for brand owners and the local legal environment is developing in the right direction. We expect Saudi Arabia to keep reinforcing such initiatives and this will definitely stimulate the knowledge economy and enhance foreign investment in Saudi Arabia.