Case No. 4169 between LEDVANCE Gmbh vs Ministry of Commerce & Investment (MoCI) Assignment filed during appeal is a new fact and cannot be applied to trademark application filed prior to change of status. Refusal of Trademark on relative ground. Citation of earlier mark owned by a related company. Assignment made during appeal stage.

LEDVANCE Gmbh filed a trademark application with MoCI Riyadh for registration of a trademark LEDVANCE. At examination stage, trademark office issued a refusal notice and cited a similar earlier registered trademark LEDVANCE & device in the name of OSRAM Gmbh in the same class.

The Applicant filed appeal arguing that owner of cited mark is a related company to applicant and that both companies are from the same group. During appeal to trademark appeal committee, the applicant made an assignment of cited mark in order to overcome the refusal. Appeal committee refused appeal on the basis of similarity between the two marks which may lead to public confusion.

Applicant filed appeal to Administrative Court arguing two main points, first that the owner of cited mark is a related company to applicant and second that the cited mark is now assigned to the applicant. The applicant requested the court to allow applied mark to registration since the new facts before court (assignment) does not justify refusal of this mark.

In its decision, the learned judge ruled that the appeal before court will be decided on the basis of the facts prevailing at the time of filing application. The new legal status as a new fact cannot be applied to trademark application filed prior to change of status, therefore the applicant (appellant) cannot claim any relief on the basis of new facts. The court refused the argument that the citation is wrongful due to the fact that earlier mark was owned by a related company. Appeal was denied and appellant was advised to file a new trademark application.

Saudi courts have shown different approaches to similar cases. In some of earlier cases, courts have accepted new facts arised during appeal stage. On the point of related companies, the dominant practice of courts is that an earlier conflicting mark owned by a related company is a barrier to registration, and that for application of trademark law, such related entities will be considered as separate entities.