Roxtec Case Infringement
Case No. 12230/1/q between Roxtec International AB Vs. Mashareq Commercial Technical Institution. Infringement of a registered trademark Goods not from original source shall be destroyed. Damages will require cause-and-effect relationship
Case Number:
(12230)
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 Roxtec Case Infringement
Background and Initial Refusal
This case was filed on the basis of a registered trademark ROXTEC in Saudi Arabia. The claim of the plaintiff was that the defendant is selling counterfeit products using the registered trademark of the plaintiff which is prohibited under Saudi trademark law. Proceedings were initiated before Administrative Court in Riyadh.
The defendant pleaded that the products were purchased from a third party as an intermediary, and that intermediary had purchased the goods from manufacturer. On this basis, the stance of defendant was that there is no liability of infringement. The defendant also relied on decision in criminal proceedings, in a same case, initiated separately by Bureau of Investigation and Prosecution where the court declared that defendant is not liable since the goods were purchased from third party and such third party had purchased this from manufacturer.
The Administrative Court relied on the outcome of Criminal proceedings and did not put liability upon the defendant, however the court further ruled that it is clear from the investigation report of government agency that the goods are not from the original source, therefore the goods are infringing goods under Saudi trademark law. The court ordered the defendant to stop dealing in such infringing goods and further ordered that all the infringing goods shall be destructed.
Court refused to award compensation due to lack of sufficient evidence which could establish cause and effect relationship as required under Islamic shariah law. The fact that defendant had purchased goods from intermediary, and lack of sufficient evidence to prove damages were relied upon for refusal of compensation award.
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.