Saudi Arabia’s current Trademark Law came into force on 4 December 2002. The Law was enacted by Royal Decree M/21, dated 28/5/1404H (corresponding to 6 Au-gust 2002). The implementing regulations were issued on 4 October 2002 by ministeri-al order no.1723. The law repeals the Trademark Law and Implementing Regulations 1984.
Saudi Arabia is party to the international treaties listed below:
Trademarks Law 2002:
The major changes included in the 2002 Law are:
Trademark licensing agreements: Trademark licensing agreements between a for-eign trademark holder and a local licensee may also be registered. The registration of such license agreements allows the local licensee to directly enforce the foreign own-er's trademark. This may be of benefit in response to violations by third parties for failure to meet usage requirements.
Unregistered Marks: Saudi Arabia affords protection to unregistered trademarks where they are considered to be well-known. The Trademark Law of 2002 prohibits the registration of marks that are identical or similar to marks having “an international reputation”, which includes unregistered well-known trademarks. To that end – under the law – unregistered well-known marks may be relied upon as relative grounds for initiating Court proceedings.
The Trademark Law is silent on the issue of a time limit for establishing unregistered rights for well-known marks. However, litigants do carry a relatively heavy eviden-tiary burden to prove the fame of a trademark in Saudi Arabia.
Registered Marks: Today’s Trademark Law gives exclusive ownership of a registered trademark to the registrant and provides for protection from any identical or similarly deceptive marks. The following persons may apply for the own trademarks in Saudi Arabia:
Power Of Attorney: A representative requires a power of attorney before filing a trademark application, including an application claiming priority. The power of attor-ney should be executed by an authorised signatory before a Notary and legalised to the embassy of Saudi Arabia.
Application Protection: A separate application must be filed for each class of goods or services in which the trademark is to be registered. Applications are made to the Trademark Office within the MOCI.
The Tenth Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification) was officially adopted in the Kingdom of Saudi Arabia in November 2012.
If the application is accepted it will be published on the web site of the Ministry of Commerce & Industry at http://eservices.mci.gov.sa/Eservices/Commerce/Trademarks.aspx any interested party may oppose an application within 90 days from the date of publication. If no objec-tion is filed, the applicant has 30 days from the expiration of the 90-day opposition period to pay the registration fees. After payment of the fees, a Certificate of Regis-tration will be issued.
If rejected, an applicant may file an appeal with MOCI within 60 days from the date of receiving the refusal notice. If such an appeal is rejected, the applicant may file an appeal with the BOG within 30 days from the date of receiving a notification.
Opposition: Third parties may oppose acceptance of a trademark application at Court within a non-extendable ninety day term from the date of its publication on the trademark office’s website. Whether the applicant files a counter-statement, or not, before issuing its judgment, the Court will hold multiple hearings to receive arguments and evidence from all the parties involved, including the trademark office.
Opposition grounds: An opponent may oppose the registration of a trade mark on the basis that it is contradictory to the relevant provisions of the Trademark Law and could cause material or moral damage to the opponent’s interests. An opponent may rely on the following in an opposition:
The timeframe from the filing of an opposition to issuance of the judgment by the Court of First Instance depends on the nature of the evidence filed and how many hearings are held. Generally speaking, oppositions before the Court take eight months to two years to conclude.
Registration: If the application is not opposed, or an opposition is ultimately not suc-cessful, the trademark will proceed to registration within a month or two. The total timeframe for issuance of the registration certificate as from the filing date of an ap-plication is about five months.
Trademark registrations are valid for ten Hijri years (approximately nine years and eight months in the Gregorian Calendar) from the filing date of an application.
Renewal: The renewal term is ten Hijri years (about nine years and eight months ac-cording to the Gregorian Calendar) and a trademark may be renewed indefinitely. There is a grace period of six Hijri months (approximately six months in the Gregorian Calendar) for late renewals with payment of a surcharge. The timeframe for renewal is about one month from the date of a renewal application.
Removal from the register:
The competent official department and every interested party may request cancellation of a trademark registration when the trade mark:
A trademark registration shall be also cancelled by force of law in the following cases:
Merger:A merger of the registrant with another company may be recorded against trademark registrations only. The timeframe for recordal from the filing date of the merger recordal application is about eight to ten months.
Change of name: A change of name may be recorded against trademark registrations. The timeframe for the recordal of a change of name from the filing date of the change of name application is about eight to ten months.
Searches: A single official trademark search will cover the following trade mark ap-plications and registrations:
Trademark register searches do not cover:
The current official fee for a trademark register search is SR 1000 (about US$ 270) per class searched.
Enforcement of Trademark Registrations: Enforcement of the Trademark Law is through the MOCI and the BoG. If the MOCI can’t convince the infringer to cease infringement, it can refer the matter to the Public Prosecutor to bring an action against the infringer before the BoG. The Trademark Law provides criminal and civil penalties for the infringement of a registered trademark, but in practice enforcement is rather lenient.
The Trademark Law provides criminal penalties of not more than one year in jail and/ or a fine of not more than SR50,000 for anyone using a forged registered trademark or anyone imitating a registered trademark. A similar penalty can be levied against any-one who intentionally uses a trademark owned by someone else. A second offense within three Hijra years of conviction on the first offense can result in a doubling of these penalties.
Civil penalties include fines and seizure of goods. The value of the seized goods, however, may be deducted from the fines to be paid to the trademark's owner. Pre-judgment attachment is also available under the Trademark Law, provided the party seeking the attachment (a) pays a deposit to be determined by the BoG and (b) files a criminal or civil action against the infringer within 10 days from the attachment order.
In practice, the infringer may be fined for the infringement, but often the infringer will be ordered to cease infringing upon the owner's trademark.
Our personnel are experienced in collecting evidence to be used in legal action. We do not involve an outside firm. The cost of an investigation depends on the risk factor and time involved in the matter. Normally, it would be a lump-sum of US$500.00 in Riyadh or US$500.00 plus out of pocket expenses for cities other than Riyadh.
In terms of legal action, we can approach two bodies - one judicial and the other ad-ministrative. The judicial forum is the Board of Grievances, and it is the competent court under the 2002 Trademark Law. For pragmatic reasons, we approach the admin-istrative authorities under the MOCI. The jurisdiction of the MOCI is under the Anti-Commercial Fraud Law (ACFL) - a consumer protection law. A complaint lodged un-der Anti Commercial Fraud Law may culminate in raids organized by the MOCI.
Interim Injunction: Available ex-parte through the BoG (in respect of registered trademarks) and the Anti-Commercial Fraud Department (ACFD) of the MOCI. This applies to registered and Unregistered Trademarks.
Search and seizure: Available ex-parte through both the BoG and the ACFD.
Administrative remedies: With regard to the possible action to stop sales of counter-feits in Saudi Arabia, counterfeit cases under Saudi laws and regulations are usually tried by virtue of the provisions of ACFL. This is an administrative recourse meant to protect consumers along the lines of the principles of unfair competition.
In accordance with the provisions of ACFL, we generally file a complaint before the ACFD. If there are sufficient grounds for a counterfeit case, the MOCI inspectors usually raid the stores involved in counterfeit activities.
To initiate a counterfeit case before ACFD, certain requirements must be satisfied. The most important is the identification of the stores and/ or showrooms involved in counterfeit activities. This can be achieved by obtaining purchase receipts from the stores and/ or showrooms. In addition, the requirements include submitting genuine and fake samples of the products in question. The MOCI sometimes insists that a statement showing the difference between the genuine and fake products be enclosed with the complaint.
The outcome of filing a complaint to ACFD and any subsequent raids organized by its inspectors usually culminates in seizure and destruction of the fake products. Other penalties may also be imposed on counterfeiters. Action through Customs is currently not possible. However, ACFD usually informs Customs if a shipment of counterfeit goods is due to arrive at one of the borders.
Court action:The owner of a trademark may file a lawsuit in Court for an order restraining the use of an infringing mark.
In Saudi Arabia, the legal framework is based on Islamic (“Sharia”) Law, which forms the basis of the constitution of the country. Sharia law covers both civil and criminal issues. There are no special trademark or IP courts in Saudi Arabia.
The timeframe from the filing of a lawsuit at the Court of First Instance to issuance of a judgment depends largely on the nature of the evidence and the number of hearings held.
Resorting to the Courts to enforce trademark rights may result in severe penalties, such as imprisonment up to one year and fines up to SR 1 million (about US$ 267,000).
It is possible to claim damages in trademark infringement proceedings, but the eviden-tiary onus is difficult to overcome and, where it is, awards are usually small.
The Trademark Law provides more severe punishments for repeat offenders, such as doubling the fine and imprisonment sanctions, closure of the offender’s business for up to six months and publication of the judgment.
Provisional remedies are available to trade mark owners in the form of provisional or-ders. These orders may be for the seizure of suspected counterfeit goods and the prep-aration of inventories of any equipment and tools used in their production.
The Courts may, in any lawsuit, order the confiscation or destruction of seized goods and the publication of judgment in local newspapers.
Border measures:There is no formal Customs’ recordal procedures in Saudi Arabia, and it is within the discretion of the authorities to notify trademark owners of potentially counterfeit goods discovered during inspections. Informally, it is possible to request Customs to monitor incoming shipments.
Depending on whether the importer successfully contests a detention or seizure by Customs, the relevant authority may order the destruction of any seized goods. The importer may be also ordered to pay the costs involved with the destruction.
It is difficult to activate counterfeit goods procedures at Customs level where reliance is placed on unregistered trademarks.
Ownership Changes and Right Transfers:An assignment maybe recorded against trademark registrations only, with or without the goodwill of the related business. The documents required to effect the assignment of a trademark are:
The timeframe for recordal of an assignment from the filing date of the assignment application is approximately eight to ten months.
Licensing:A licence may be recorded against trademark registrations only. Recordal of licence agreements is not compulsory, but recommended for two main reasons:
The documents required to record a licence agreement are as follows:
The timeframe for recordal of a license agreement against a registered trade mark from the filing date of the application is approximately nine to eleven months.
Saudi Arabia enacted its most recent Copyrights Law by Royal Decree No. M/41 of 2.7.1424H (30 August 2003) Which went into effect in March 2004.
The main features of the Law include:
Copyright Protection:Define copyright protection to include architectural designs, speeches, theatrical, musical, photographic and cinematographic works, as well as works for radio and television, maps, video tapes and computer software. Copyright protection is not subject to any registration or renewal.
The Regulation gives the author financial and moral rights, to print or publish the work, to make amendments or to delete his work, to withdraw it from circulation, and to assign it as he wishes.
Enforcement:In the area of enforcement, the Law details all types of infringements and piracies and features strengthened penalties including provisions for:
The Copyright Law and Regulations currently in force in Saudi Arabia provide:
The Implementing Regulations were issued by the Minister of Culture and Information under Ministerial Decision No. 1688/1 of 10.4.1425H (29 May 2004). The Copyright Law and Regulations currently in force in Saudi Arabia provide:
Infringements: The following acts shall be deemed infringements on the rights protected by the Law:
Penalties:Any person who violates a provision of this Law shall be subject to one or more of the following penalties:
The implementing regulations shall specify the protective impounding procedures.
Grievance:According to article (23), anyone against whom a decision was made by the Committee shall have the right to file a grievance with the Board of Grievances (BoG) within sixty days from the date of notification of the decision.
Investigation of Violations:The officers concerned at the Ministry shall investigate the violation and visit media and commercial facilities, warehouses and public institutions and private establishments that use intellectual works in their activities and investigate them, placed in article (24). They shall have the power of judicial investigation and protection of evidentiary proofs.
The implementing regulations shall specify the rules and procedures which these employees shall adhere to.
Patents in Saudi Arabia are governed by Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Models Law, effective September 6, 2004. The Patent Law definition of an invention covers any new article, method of manufacture, or improvement in either. Absolute universal novelty is stipulated by the Patent Law: an invention is new only if it is not anticipated by the prior art, which covers anything disclosed to the public anywhere and at any time, by means of a written or oral disclosure, by use, or in any other way before the relevant filing date or priority date.
The law covers four categories of intellectual property:
Applications for patents must be submitted to the Directorate of Patents at King Abdul Aziz City of Science and Technology (KACST) on the appropriate form. A patent is protected for 20 years from the date of filing the application. A patent is subject to an annuity due at the beginning of each year subsequent to the year in which the application was filed and payable within a period of three (3) months.
Patent disputes are resolved by an ad hoc committee at KACST. Appeals against the committee’s decision may be made to the Board of Grievances within sixty (60) days from the date of notification.
Protection:A protection document is granted by the General Directorate of Patents at King Abdulaziz City for Science and Technology, which gives full protection within the Kingdom to an invention, a layout design of an integrated circuit, a plant variety, or an industrial design. The protection document grants the owner the right to commercially exploit the subject matter of protection.
Application for a protection document must be filed at the Directorate in the Arabic and English languages, and must include:
Renewable:The protection document is the personal right of the owner and he may transfer or assign it or grant a contractual license to others to commercially exploit the subject matter of protection. Protection is granted to the owner for a duration of 20 years of an invention, 10 years for an industrial design and a layout design of an integrated circuit, and 20 to 25 years for a new plant variety. The above periods are renewable, for an annual fee.
Application Fee:The fee for a patent application is $213(SR800). Annual free start at $ 133(SR500) for the first year and the amount to $ 2,666(Sr10, 000) for the twentieth year. The fee for individual are half of those applicable to establishment.
Enforcement: The patent law also contains much more stringent enforcement mechanisms and harsher penalties for infringement. If a complaint is issued, KACST will form a committee to investigate the matter. If a violation is found, the committee will impose a fine not to exceed $26,667 for the first violation.
THE Fine will be doubled for the repeat violation. If the committee feels the patent infringement is serious and criminal in nature, the case will be referred to the board of grievances (BoG) for more severe punishment, which could include imprisonment. Both Saudi and non-Saudi patent leaders holders can use through the committee at KACST.
The domain name registration authority in Saudi Arabia is called Saudi Network Information Center (SaudiNIC). It is responsible for administering domain name space for the country code (ccTLD) of Saudi Arabia (.SA). This includes the operation of the DNS root servers for .SA domains and the registration and maintenance of all third-level .SA domain names. SaudiNIC is also a Local Internet Registry (LIR), responsible for allocating blocks of IP addresses to universities and local ISPs in Saudi Arabia. SaudiNIC has been managed and operated by King Abdulaziz City for Science and Technology since 1995.
The registration process of domain names in Saudi Arabia:
For registering a domain name in Saudi Arabia an entity need not have a local presence or business in Saudi Arabia. An administrative contact is essential and a Saudi Arabian attorney can act in this capacity.
Requirements for registering a domain name of a foreign company in Saudi Arabia:
We have noticed that preparation of the request letter can be tedious, particularly because SaudiNIC does not accept the letter with the domain in punycode. The domain must be listed in Arabic characters for the letter to be accepted.
We may assist you in preparing the letter. You simply send us a word version of the letter on the client’s letterhead with the domain part in punycode.
Then we switch the domain from punycode to Arabic letters. Then we send it to you by email as PDF file. You must have it signed and stamped by the company. Then you send the scanned copy to us by email. All documents can be sent by scanned email.
Legal procedures can also be initiated on the basis of the trademark rights of the true owner. If the owner has a valid registration of its mark in Saudi Arabia, we may undertake infringement proceedings with the BoG and the domain name registration can be struck off.
If the mark is not registered, it is unlikely the BoG will consider a suit to strike off the domain registration. However, Sharia courts have general jurisdiction, and can be approached to strike off domain registration obtained dishonestly. The principles of fraud, misrepresentation and passing off can be a basis for such action. We believe that once the intention to deceive and cause confusion is established, a remedy will follow. However, the legal procedures for such issues are new to our jurisdiction.
Kadasa MOU with Saudi Customs:
For more than three decades, Kadasa & Partners has been active in the provision of a complete range of intellectual property services for individual and corporate clients from around the world. Based in Saudi Arabia, having a branch in Dubai, and holding a strategic professional association with Rouse, a top Intellectual Property business working through 17 offices around the world, Kadasa & Partners has the geographic reach to serve its clients across the GCC and MENA regions and other jurisdictions.
Besides IP rights registration, maintenance and protection, Kadasa has a proven track-record in enforcing rights against counterfeiting, piracy, commercial fraud and infringement before the concerned authorities including the Saudi Customs Authority, the Anti-Commercial Fraud Department, the relevant administrative committees and the Administrative Court (formerly the Board of Grievances).
Do we need to change all the references above in this document from BoG to Administrative Court?
In the light of the mounting phenomenon of counterfeiting and infringing of trademark and design rights, the firm has recently started to exert increased efforts and extended its capabilities towards protecting its clients’ rights against counterfeiting and infringement.
Fortunately enough, Saudi Arabia has taken significant steps towards making its trade regime consistent with the TRIPS Agreement and has implemented the provisions of the agreement in its legal system and practice. In the same framework, the Saudi Arabian Ministry of Finance adopted border measures for protection of trademarks and copyrights.
Border Measures Article by Mr. Muhammad Jomoa: http://www.worldipreview.com/article/border-measures-a-solution-in-saudi...
Overview of the Border Measures:Under the measures, the seizure of goods or works may be based either on a judicial order issued by the Board of Grievances or a preventive seizure decision issued by the Ministry of Culture and Information. The Customs Authority has to seize the goods or works and the party against whom the preventive seizure order has been issued may, within ten days from the date of notification of the seizure, file a request either with the circuit handling the case at the Board of Grievances or the competent body at the Ministry of Culture and Information to review it.
However, the preventive seizure order issued by the Board of Grievances or the Ministry of Culture and Information shall be deemed null and void unless the right holder files a civil or criminal lawsuit against the party the order has been issued against, within 10 days from the date of issue.
If the right holder does not submit proof of filing a civil or criminal lawsuit, the Customs Authorities shall clear the seized goods and works, taking into account that other conditions of import and export have been complied with.
The Customs Authorities are entrusted with the enforcement of judgments and decisions issued by the competent body for the confiscation or destruction of infringing goods and works, and have the power to dispose through non-commercial outlets, unless instructed otherwise by judicial or administrative authorities. Customs Authorities will not allow the re-exportation of counterfeited trademark goods in an altered state or subject them to a different customs procedure, other than in exceptional circumstances.
Finally, Article 13 states that the parties concerned may contest the decisions issued by the Customs Authority, regarding the application of these Procedures, before the Board of Grievances within 60 days of notification in writing or through publication if notification is not possible.