What is a trademark under Saudi Arabian Laws and what can be registered as trademarks?
Anything that has a distinctive shape such as names, words, signatures, letters, symbols, numbers, titles, stamps, drawings, pictures, inscriptions, packaging, figurative elements, shapes or color, groups of colors, or combinations thereof, or any sign or a group of signs used or intended to be used to distinguish the goods or services of one undertaking from the goods or services of another undertaking or intended to identify a service or as a certification mark in respect of goods or services. A sound mark or a smell mark can be registered as trademarks in Saudi Arabia.
What is time frame for registration of one trademark?
A trademark can be registered within 04 months due to online system of registration.
How goods and services are selected for application of trademarks?
The goods and services can only be selected from a predefined list in the system which is accordance with Tenth Edition of Nice Classification. Some goods and services available in Nice classification are missing from online portal which usually makes it difficult to cover all intended goods and services. Applicant can select the entire class heading or from the list, it is however not possible to partially select class heading.
What is official cost of filing a trademark?
Filing a trademark upto issuance of certificate is USD 2,405.
What is power of attorney requirements for filing purpose?
Power of attorney is required before filing a trademark application. It should be executed by an authorized signatory before a Notary Public and legalized up to the Saudi Consulate in the country of the applicant.
Without approval of Power of Attorney by trademark office, it is not possible to file trademark application.
What are filing requirement?
Following are generally required for filing an application:
The applicant’s official name
Address, nationality,
List of goods/services.
Description of the mark
For claiming priority, a certified copy of the priority application.
Is it possible to file multi-class application?
According to law in place w.e.f 2016, it is possible to file multi-class applications however in practice still not possible.
Can applicant claim priority from convention application?
As a member of Paris convention, Saudi Arabia accepts priorities from convention application.
Does the applicant need to submit evidence of use of trademark in filing stage?
No, there is no such requirement.
Where is appeal forum against refusal decision of trademark office?
Appeal is filed with Trademark Committee.
How much is term of protection for a trademark in Saudi Arabia, and how is it calculated?
It is ten years from filing date.
Is letter of consent recognized?
No letter of consent is not acceptable.
What type of opposition procedure is in place in Saudi Arabia?
Pre-grant opposition procedure is in place, where accepted applications are published for 60 days opposition period.
What is official cost of opposition?
Official cost of filing opposition is USD 540 and USD 270 for each hearing request.
Is it possible to partially assign a trademark?
Yes, it is possible to partially assign a registered trademark.
Who can file trademark infringement?
A trademark owner can file such action. Exclusive licensee can also file it.
Does Saudi trademark law provide special protection to well-known marks?
Saudi trademark law provides special protection to well-known marks even if it is un-registered. The law has defined criteria to qualify a trademark as well-known.
Which forum is competent to adjudicate upon trademark infringement case?
Administrative actions can be filed with Anti Commercial Fraud Department (ACFD) and court proceedings can be initiated before Administrative court.
Is there unitary registration system in the region for trademark registration?
No so far there is no unitary trademark registration system in gulf region.
What is the practice of damages award by courts?
Damages are possible only in theory, in practice it is hardly granted.
Recordal of trademark license agreement is mandatory or optional?
Not mandatory as per law.
What are consequences of non-recordal or registration of license?
As per law there are no negative consequences.