TRADEMARKS FILING AND PROSECUTION IN SAUDI ARABIA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Saudi Arabia may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark[1]
| Relevant office | Saudi authority for intellectual property (SAIP) |
| Nice classification | Yes (10th edition) |
| Paris convention | Yes |
| Madrid system | No |
| Multi class system | No |
| Documents required for filing a trade mark application | Legalised Power of Attorney |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(within 60 days from the publication date) registration renewal |
| Registration term | 10 years from the filing date(Hijri calendar) |
| Renewal term | 10 years |
Trademark searches in Saudi Arabia
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Saudi Arabia can be conducted for word marks, device marks, numeral and labels. An official and computerized search can be conducted at the records of the Saudi authority for intellectual property.[2]
Trademark word search edition of Saudi Arabia follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Saudi Arabia to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Saudi Arabia. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Saudi Arabia can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in Saudi Arabia
A person may file single class trademark application in Saudi Arabia.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary applications in Saudi Arabia
Ordinary trademark applications filed in Kuwait are applications without claiming any priority. Saudi authority for intellectual property provides an option for the e-filing for all the new trademark applications for the registration. Multi class trademark applications cannot be filed in Kuwait. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.[3]
Priority trademark applications in Saudi Arabia/Convention trademark applications Saudi Arabia:
A priority trademark application may be filed in Saudi Arabia. A priority trademark application should be filed in Saudi Arabia within 6 months after the date on which the application was made in the convention country.[4]
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Bahrain within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Saudi Arabia follows the nice classification of classes. Saudi Arabia uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark examination in Saudi Arabia
Once the application for registration is submitted it goes through the examination process. The competent department examines the application for the registration whether it has met all the legal requirements for registration.
If the competent authority is of the opinion that it has not met all the legal requirements, it shall be notify to the applicant that particular amendments are necessary. The applicant is given 90 days to respond to the notification by competent authority. If the applicant fails to respond within this period the application is considered rejected. This decision of rejection can be appealed before the minister within 60 days and if the issue is again rejected by the minister it can be further appealed to the board of grievances.[5]
Trademark opposition in Saudi Arabia
When the application for the registration has successfully passed the examination process, the application for registration is accepted and is published for the third party observation. The interested party can oppose the application for the registration within 60 days[6] from the date of publication by giving notice of opposition and evidence to the concerned department.[7]
Trademark registration in Saudi Arabia
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of filing of the application (hijri calendar) and the registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://njq-ip.com/country/saudi-arabia/trademarks/general-information/
[3] https://njq-ip.com/newsletters/2013/11/saudi-arabia-overview-on-the-new-trademark-e-filing-system/
[4] https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[5] https://files.njqandassociates.com/files/7d372805-721d-11e4-9ea2-d4ae52c6225d/download?namer=long
[6] https://njq-ip.com/country/saudi-arabia/trademarks/general-information/
[7] https://files.njqandassociates.com/files/7d372805-721d-11e4-9ea2-d4ae52c6225d/download?namer=long