Al Arosa Case
Case No 7927, 1, q, 1437H, between Awlad Badawi CO. vs. Ministry of Commerce Cancellation of Un-used trademark Registration made on the basis of cheating, fraud, misrepresentation and all forms of dishonesty is without right and prohibited under Shariah law.
Case Number:
(7927)
The case involves a trademark application for “AGE REVITALIZE” in Class 3. The Trademark Office refused the application, citing descriptiveness under Saudi trademark law.
The applicant appealed to the administrative court, seeking to overturn the Trademark Committee’s decision. The appeal argued that the mark “AGE REVITALIZE” is distinctive and not merely descriptive of the goods.
The refusal was based on Article 2 of the Saudi Trademark Law, similar to Article 3 of the GCC Trademark Law, which prohibits marks that are descriptive. The applicant argued compliance with Article 1, asserting that the mark is a distinctive combination of words.
Detailed Analysis of the Al Arosa Case
Background and Initial Refusal
In this case, plaintiff asked the admirative court to cancel a trade mark (Alarosa tea) in Arabic letters and Caricatural drawing of Bride in class (30), on the bases that it is confusingly similar to its trademark (Alarosa tea) which was registered before in many countries such as Egypt, Jordon, Lebanon, Kuwait and Libya in the same class.
The defendant pleaded that admirative court has no jurisdiction to try this case according to Articles (25) and (26) of the trademark Law.
The court held that Article (25) of trademark law stated that Board of Grievances has jurisdiction over trademark cancellation actions, and this Article did not fix time for filing cancellation actions. The court pointed out that although the disputed mark has been registered in the name of plaintiff in many countries including KSA, plaintiff has not registered the mark in class (30) in KSA. However, former registration of the mark by plaintiff in different classes is enough to give it priority over the mark. Moreover, second defendant has exploited the absence of registration of the mark in class (30) in KSA, and registered it in his name. This registration is null and void according to sharia law which prohibits cheating, fraud, misrepresentation and all forms of dishonesty which may cause loses to third parties whether natural or artificial persons. The commercial exploitation of the mark by defendant will lead to unfair competition which will cause harm to the plaintiff by preventing it from distribution of its products. On the other hand, consumers themselves might be affected by the act of defendant. Therefore, the court ordered cancellation of the mark.
Appeal to the Administrative Court
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Court’s Decision
The defendant (Ministry of Commerce and Investment) responded, asserting that the mark “AGE REVITALIZE” was clearly descriptive, indicating that the mark describes the goods as giving new life, energy, or activity. Thus, it contravened Article 2 of the law. The administrative court in Riyadh upheld the Trademark Committee’s decision, refusing registration of the mark “AGE REVITALIZE” due to its descriptiveness. The court stated that the word “REVITALIZE” undeniably describes the goods as giving life, energy, or activity, which is prohibited under Article 2 of the Trademark Law.