Case No 7151, q, 1436H, between BENTELY Motors CO. vs. Ministry of Commerce Cancellation of non-used trademark An un-used trademark for consecutive five years warrants cancellation under Saudi trademark law.

In this case, the plaintiff Bentley Motors Company applied for registration of trademark (BENTLEY), class (14), and the trademark office refused the application on the ground that there was a formerly identical registered trademark in the name of OSARA S.A. The plaintiff brought this cancellation action based on Article (25) of the Trademark Law which provides that: “Authorized directorate and any interested party may claim cancellation of trademark in the following cases: (1) if the trademark owner has not used his mark for more than consecutive five years without a legitimate cause” the trademark BENTELY in class (14) was registered in since 1418, however, the owner is no longer using the mark and therefore, it should be cancelled from the record.

The defendant “trademark registration office” pleaded that the trademark BENTELY AND B was refused because of existence of former identical mark BENTELY, and plaintiff’s application is contrary to Article (2/y) which provided for refusal of registration of any sign identical or similar to a mark already registered in KSA for identical or similar goods or services. Registration of this mark in favor of plaintiff means infringement of third parties intellectual rights which is contrary to the law and Islamic sharia as well.

 Based on Article (25) above mentioned, the court concluded that: the only point that plaintiff has to prove is whether the mark is in actual use in the market or not. The court added that the survey conducted by an authorized office proved that on their visit to more than (30) stores and sale points of watches and their accessories, in KSA big cities, there was no use of any products in the name of BENTELY trademark. Accordingly, the court concluded that, there is no way other than to apply Article (25) and rule in favor of the plaintiff by ordering cancellation of the mark.