Trademark Registration in Saudi Arabia

Executive Summary

Abstract

As of 2024, there are two trademark laws in force in Saudi Arabia: Royal Decree No. (M/21) on the Saudi Trademark Law Dated 5/28/1423 AH (7 August 2002), and Royal Decree No. (M/51) related to the adoption of the Gulf Cooperation Council Trademark Law (GCC Trademark Law) Dated 7/26/1435 AH (25 May 2014). Saudi Trademark Law 2002 came into force on 6 December 2002, while the GCC Trademark Law entered into effect on27 September 2016 after being published in the Official Gazette on 1 July 2016. As there is room for uncertainty as to how the Saudi Trademark Law 2002 and the GCC Trademark Law should be applied, this commentary proposes to analyze the trademark regulations in Saudi Arabia, including the international conventions adhered to, the priority of GCC Trademark Law based on the principle lex posterior derogat prior, and the trademark registration process under the GCC Trademark Law.

International Conventions

Paris Convention : Saudi Arabia signed the Paris Convention for the Protection of Industrial Property in 2003, which came into force in 2004. The Convention establishes three key principles for patents and trademarks: national treatment, right of priority, and independence of protection. It allows member states to set their own conditions for trademark registration, prohibiting the registration of trademarks that lack legality or distinctiveness, such as state emblems, trademarks infringing on third-party rights, and those violating public order.
TRIPS Agreement : Saudi Arabia joined the World Trade Organization (WTO) in 2005. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) is a multilateral agreement under the WTO applicable to all WTO members. As the TRIPS Agreement sets minimum protection standards for intellectual property, and offers guidelines for domestic trademark laws, including anti-dilution protection for well-known trademarks and provisions for protection duration, renewal, and cancellation, WTO members may have a better understanding of Saudi Arabia’s trademark laws and regulations through the lens of TRIPS Agreement and their domestic laws.
NICE Classification: As of 5 November 2023, Saudi Arabia adopted the 12th Edition of the Nice Classification of the International Classification of goods/services for trademark registration. (NICE Classification). Trademark applicants can only select specific goods/services from the 12th edition of the NICE Classification using identical wording. The electronic filing system of the Saudi Intellectual Property Authority (SAIP) no longer allows the selection of class headings when submitting trademark applications.
Saudi Arabia is Not a Contracting Party to the Madrid System : Saudi Arabia is not a contracting party to the Madrid System for the International Registration of Marks (the Madrid System), which includes over 100 countries. Applicant from Madrid System countries may register trademarks in those countries with a single application, while those from non-Madrid System countries shall register individually in each country. Consequently, trademark applicants from Madrid System countries shall register separately in Saudi Arabia, as the country does not accept challenges to trademark registrations on the basis of trademarks already registered in Madrid System countries.

Domestic Laws and Regulations

From a legislative perspective, both the Saudi Trademark Law 2002 (Royal Decree M21/1423) and the GCC Trademark Law (Royal Decree M51/1435) are applicable in Saudi Arabia.

The Trademark Law 2002 is outdated, and inefficient in practice, as it assigns the Ministry of Commerce with trademark registration, publication, and cancellation, and the Board of Grievances with the handling of related administrative, criminal, and civil disputes. However, on 27 March 2017, the Saudi Authority for Intellectual Property (SAIP) was established to take over intellectual property matters from the Ministry of Commerce. Additionally, following judicial reforms in 2007 (Royal Decree M/78), the Board of Grievances was renamed the Administrative Court, with jurisdiction over criminal and commercial disputes transferred to the criminal and commercial courts, respectively.

General Provisions

Trademark Applicants :According to the Trademark Law 2002 and the GCC Trademark Law, trademark applicants can be (1) natural or legal persons from Saudi Arabia or GCC countries, (2) foreign nationals residing in these regions, (3) citizens from countries that have international or bilateral treaty relations with Saudi Arabia or the GCC, (4) public sector entities. The Trademark Law 2002 further stipulates that persons from countries that at offer reciprocal treatment to Saudi Arabia may apply for trademark registration. Persons from countries that are parties to the Paris Convention and the TRIPS Agreement, are eligible to apply for trademark registration in Saudi Arabia.
Local Agent : Trademark applications shall be submitted through a local agent, regardless of whether the applicant is a citizen of Saudi Arabia, GCC or foreign countries. Abdulaziz Bin Ali Law Firm is authorized by SAIP to provide services such as trademark registration and trademark infringement dispute resolution.
Mutual Recognition Mechanism Among GCC Countries : GCC countries have a mutual recognition mechanism for trademark protection, allowing courts to generally accept trademarks registered in other GCC countries as valid evidence in trademark infringement disputes.
Trademark Protection Period :In Saudi Arabia, registered trademarks are protected for 10 years from the application date and can be renewed. Renewal shall be requested one year before expiration or within six months after. Temporary protection is available for trademarks displayed at government-sponsored or internationally recognized exhibitions, requiring notification to SAIP at least one month prior to the exhibition and lasting no longer than six months from the start date.

IV. Priority Application of the GCC Trademark Law

The GCC Trademark Law takes precedence over conflicting regulations due to its alignment with international standards and detailed provisions, following the principle of lex posterior derogat priori. It offers more comprehensive provisions compared to the Trademark Law 2002, as detailed below:

Broader Types of Trademarks : The GCC Trademark Law permits the registration of both visual and non-visual signs as trademarks. In August 2020, SAIP issued Saudi Arabia’s first sound trademark certificate to the Saudi Telecom Company, marking the country’s entry into non-visual trademark protection. Sound trademarks can be represented by musical notation or submitted as an MP3 sample, while scent trademarks require a written description.
More Comprehensive Protection for Well-Known Trademarks : The Trademark Law 2002 provides that registered well-known trademark are protected against identical, similar and even non-similar goods and services, while unregistered well-known trademarks are protected only for identical or similar to the goods, without specifying the criteria for determining a well-known trademark.
In contrast, the GCC Trademark Law outlines criteria for recognizing well-known trademarks, such as consumer recognition, the number of countries where the trademark is registered or recognized as well-known, the duration and extent of registration and use, and the impact or value of the sign on the sale of products or services. Well-known trademarks receive the same protection as registered trademarks, regardless of their registration status.
Customs Protection : Trademark owners who believe that imported goods are imitations, forgeries, or bear similar marks that could cause public confusion may submit a written application to the customs authority to halt the release of these goods. This application shall include sufficient evidence. Customs authorities will decide within seven days and may require a guarantee or deposit from the trademark owner. Customs may also deny clearance ex officio. The customs authority’s decision is valid for one year or for the remaining protection period, whichever is shorter.

Trademark Application Fees and Timeline

The trademark registration procedures under the Trademark Law 2002 and the GCC Trademark Law are largely similar and include the following steps: (1) the trademark owner files an application, (2) SAIP examines and makes a preliminary decision, (3) SAIP publishes the trademark, (4) the trademark is registered after the opposition period lapses. The application process in Saudi Arabia is as follows:

Application : The trademark owner should submit an application to SAIP. The application documents shall include:
- The trademark, in four copies; if the trademark contains foreign languages, an Arabic translation and pronunciation guide shall be filed
- The applicant’s name, address, and nationality; if the applicant is a legal person, only the name and address are required, together with proof of the profession or business.
- A detailed description of the trademark.
- Details and categories of the relevant goods or services.
- Priority date, number, and country.
- Signature of the applicant or agent; if signed by an agency, the agent’s address shall also be included.
- If the application is made by the applicant, a power of attorney shall be attached.
- Proof of payment of the application fee, which is 1,000 SAR for a single class trademark.
- For special trademarks, sound trademarks shall be demonstrated through musical notation (melody) or submitted as an MP3 sample; scent trademarks require a written description.
Examination : SAIP conducts both formal and substantive examinations without a set time limit. The formal examination checks the accuracy of submitted materials and identifies required amendments, while the substantive examination assesses the trademark’s distinctive character, legal compliance, and potential conflicts with existing trademarks. SAIP may issue modification notices during this process. If the applicant fails to respond within 90 days of notification, the application will be considered canceled.
Preliminary Decision : SAIP will issue a preliminary decision within 90 days upon receiving the trademark application. If approved, the decision will be published, and the applicant shall pay a publication fee of 500 SAR for a single class trademark within 30 days. If the application is neither declined nor suspended, SAIP will notify the applicant in writing. The applicant may appeal to the Grievance Committee within 60 days, paying an objection fee of 1,000 SAR. The Committee will notify the aggrieved party of its decision within 30 days, and the party may appeal to the competent court within 60 days of notification.
Publication : The trademark applicant shall pay the publications fees of 5,000 SAR for a single class within 30 days of the final decision notification. Any interested party may file a written opposition to the trademark registration with SAIP within 60 days of the publication date and pay an opposition fee of 2,000 SAR.
SAIP will notify the applicant within 30 days of the opposition filing, and the applicant shall respond in writing within 60 days, or their application will be deemed withdrawn. Before making a decision on the opposition, SAIP may schedule a hearing, for which the applicant shall pay 1,000 SAR. SAIP shall make a decision within 90 days of the hearing, either approving, declining, or suspending the registration pending the satisfaction of a given condition. Interested party may contest the decision before the competent court within 30 days of the notification date, while the registration of a trademark shall not be suspended.
If no objections are raised during the 60-day publication period, the trademark will be successfully registered after the opposition period expires. If no opposition is made within two years from the publication date, the registration decision will be considered final
.
Registration : The trademark owner shall be given a certificate if a trademark is registered. The trademark owner may apply for changes to their mark, such as updating the owner’s or agent’s name or address, or removing certain goods or services. However, changes that substantially affect the essence of the trademark shall not be allowed. Amendment fees vary based on the nature of the changes, ranging from 200 to 1,000 SAR, with an amendment publication fee of 500 SAR.
Renewal : The trademark protection period is 10 years from the application submission date and can be renewed. Renewal applications shall be submitted within the last year or within six months after expiration. The renewal fee is 5,500 SAR if submitted during the last year and 6,500 SAR if submitted within the grace period. Additionally, a renewal publication fee of 1,000 SAR is required.
Trademark Cancellation in Special Circumstances : SAIP and any interested party may recourse to the competent court to apply for deregistering or cancelling the trademark that has illegally registered or has not been seriously used for 5 successive years.While the GCC Trademark Law does not provide exhaustive grounds for cancellation, it aligns with the Trademark Law 2002. The Trademark Law, which specifies the cancellation circumstances, including (1) Non-use of the trademark for five consecutive years without a legitimate reason; (2) Registration in violation of public order or morals; (3) Registration based on false or fraudulent information.Also, if the trademark owner fails to renew after expiration, or is prohibited from dealing, SAIP may cancel the registered trademark ex officio. A canceled trademark can only be re-registered for the same goods or services after 3 years from the cancellation date.

Conclusion

In summary, Saudi trademark laws offer relatively comprehensive protection for trademark owners, allowing any interested parties to fille oppositions in various circumstances, demonstrating the government’s commitment to protecting intellectual property. Abdulaziz Bin Ali Law Firm is a SAIP-certified trademark agency that provides services such as trademark registration and dispute resolution.