Saudi Arabia joined the Paris Convention for the Protection of Industrial Property on March 11, 2004.The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is followed in Saudi Arabia and the revision of class 42 with the creation of classes 43 to 45 has been adopted as of January 1, 2002. Trademarks covering alcoholic goods are not registrable as well as retail and wholesale services. A separate application should be filed with respect to each class of goods or services.
Once a trademark or a service mark application is filed, it is examined as to its availability, registrability and coverage. If the Registrar objects in writing to certain aspects of the mark in the course of examination, such as the scope of goods or services or asks for modification of the mark, a grace period of 3 months is given to the applicant to comply with the Registrar’s request. Once the application is formally rejected, a complaint against the rejection can be filed before the Minister of Commerce, within 60 days from the date of notification of the rejection. The Minister’s decision may be appealed before the Board of Grievances (First Instance Court). The trademark or service mark applications accepted for registration are published in the Official Gazette of Saudi Arabia (Ummulqura).
Publication is an invitation to any interested party to oppose the registration of trademarks or service marks conflicting with their interests. There is a three-month period open for filing opposition by any interested party. An opposition to the registration of a trademark or service mark should be filed within the term of the opposition period, i.e., 90 days from the date of publication of the notice in the Official Gazette. The case should be filed before the Board of Grievances (First Instance Court).
The duration of a trademark or a service mark registration is 10 years from the filing date according to the Hegira (Islamic) calendar (equivalent to approximately 9 years and 8 months). The registration is renewable for similar periods of 10 years each. According to the provisions of the new Trademark Law, a grace period of six Hegira months with a lateness fine is allowed for filing a renewal application after the expiration of protection period. A fresh trademark application can be filed for the re-registration of a canceled trademark or service mark.
The assignment of a trademark or a service mark can be recorded once the mark is registered in the country. In fact, unless an assignment has been entered against a trademark or a service mark in the register and published in the Official Gazette, the assignment shall not be effective vis-à-vis third parties. The Registrar does not give any importance to the goodwill associated with a trademark nor to the consideration amount involved in the assignment. The registrant of a trademark or service mark is also obliged to record any change in its name and/or address in the Registry.
Use of trademark is not compulsory in Saudi Arabia for filing applications to obtain registration or for maintaining registrations in force. However, a trademark becomes vulnerable to cancellation by any interested party who can establish that the trademark was not actually used for a period of five years in succession, unless the owner of the mark presents a reasonable excuse to justify non-use of the mark.
Unauthorized use of a trademark registered under the law, an imitation of such trademark applied on goods or in relation with services of the same class, sale, storing for the purpose of sale, exhibiting for sale of goods bearing a counterfeit mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods or services of the same class are offenses punishable under the law.