Enforcing Trademarks in the Kingdom of Saudi Arabia
“A great trademark is appropriate, dynamic, distinctive, memorable, and unique.”
– Primo Angeli
Common law rights are not recognized under Saudi Arabian law. Trademark rights can only be obtained through registration. The only exception is well-known trademarks that are recognized as notable in Saudi Arabia. The burden of proof is on the claimant to show that the mark is famous in Saudi Arabia. Saudi law spells out the conditions that must be met in order to achieve this goal.
The fame of a trademark is defined by a number of elements, according to Saudi trademark law, including:
- The total number of registrations from around the world.
- In the viewpoint of the relevant consumers, the mark is recognized.
- The mark's commercial significance in the marketplace.
- In the case of a registered mark, it has been in use or registered for a length of time.
A trademark under Saudi trademark law can be anything that has a distinctive shape, such as words, signatures, symbols, titles, stamps, pictures, inscriptions, packaging, letters, drawings, figurative elements, shapes or colours, numbers, names, groups of colours, or combinations thereof; or any sign or group of signs used or intended to be used to distinguish the goods or services of one undertaking from those of others, or intended to identify a service, or used to identify a service.
Registration of trademark under Saudi Law
Registration with the Saudi Trademark Office establishes trademark ownership in Saudi Arabia. On the other hand, prior use gives prior users of trademarks a right of action in the form of opposition or cancellation procedures. Unregistered trademark rights are difficult to enforce in Saudi Arabia unless the mark is well known and meets the standards of Saudi law.
The registration process is currently under the jurisdiction of the Ministry of Commerce and Investment. The Saudi Authority will take over the administration of trademarks for Intellectual Property (SAIP), which was recently established.
Procedure after Refusal of Registration
Within 60 days of refusal, a trademark application can be appealed to the Administrative Trademark Committee for denial or imposition of conditions by the trademark office. An online gateway is used to file appeals. There will be no hearings.
If the appeal is denied, the applicant has 60 more days to appeal the Administrative Trademark Committee's decision to the Administrative Court. The Administrative Court will send both parties a hearing notice and hold hearings.
The Administrative Court's ruling can be challenged in the Administrative Court of Appeal. If the Administrative Court of Appeal remands the matter with observations, the Administrative Court may reschedule proceedings by sending a notice to both parties. The Administrative Court may either reverse or uphold its prior decision; the aggrieved party may then appeal the decision to the Administrative Court of Appeal, which will then determine the case. Only on legal grounds can a final appeal be lodged with the Administrative High Court.
Cancellation of a Registered Trademark
A trademark can be disavowed, assuming that it has not been utilized for a long time. A non-use wiping out activity can be documented with the Administrative Court of First Instance. A trademark proprietor can go against such action by exhibiting sufficient reason for non-use, which can incorporate things like conflict, import sanctions, or whatever other faultless situation that shows that it would not aim to stop more utilization of enlisted trademark. In Saudi Arabia, a sole exchange has been perceived as adequate verification to topple a non-use retraction activity.
A registered trademark can likewise be dropped through an abrogation activity under the steady gaze of the Administrative Court of First Instance in the event that the brand name was unlawfully enlisted. There is no meaning of such unlawfulness in the law; in any case, earlier enrollment and earlier use can be a solid reason for an undoing activity.
Jurisdiction of Courts for Trademark Disputes
Trademark rights can be enforced by administrative actions brought before Riyadh's Anti-Commercial Fraud Department (ACFD). Complaints about trademark infringements in Saudi Arabia can be made with the ACFD. Samples of genuine and infringing products, purchase bills from outlets selling the infringing products, and addresses of outlets selling the infringing products may all be used as evidence of infringement.
Administrative proceedings are frequently completed rapidly; for example, in cases of prima facie infringement, ACFD inspectors may resolve complaints in two to three months. Trademark infringement cases can also be challenged in Saudi Arabian courts. During any form of legal action, registering a trademark might be useful. Unregistered marks are difficult to enforce unless they are well-known, in which case the plaintiff has a high burden of proof. Owners of registered trademarks can also register their trademarks with Saudi Customs to track incoming shipments. In Saudi Arabia, border control procedures are a highly effective anti-counterfeiting device.
Administrative actions before the ACFD can be used to enforce trademark rights. In the case of trademark infringements in Saudi Arabia, complaints can be lodged with the ACFD. Samples of genuine and infringing products, purchase bills from outlets selling the infringing products, and addresses of outlets selling the infringing products may all be used as evidence of infringement.
Administrative proceedings are frequently completed rapidly; for example, in cases of prima facie infringement, ACFD inspectors may resolve complaints in two to three months. A statement of claims can be filed with the relevant court in order to file a civil trademark infringement case. There are no pre-trial procedures, and each side is given ample chance to present their case in court by presenting written statements and evidence. The majority of infringement actions take 12 to 14 months to complete. On the proposal of the ACFD, a public prosecutor can file criminal charges. Criminal prosecutions brought by a general prosecutor are not open to rights holders.
To file a trademark infringement lawsuit, a trademark owner has the following options:
- The Anti-commercial Fraud Department may pursue administrative action against a person.
- The complaint should be filed in writing, along with all evidence of trademark infringement and registered trademark rights.
- The infringing products' location should also be noted.
The Commercial Court also hears trademark infringement cases. The Commercial Court, On the other hand, the Commercial Court has recently refused to acquire jurisdiction over trademark infringement complaints, saying that its authority is restricted to claims for monetary damages. These decisions are challenged in higher courts by way of appeal. A written statement of claims must be submitted to the court. There are no processes in place prior to the start of the study.
As a result, people have effectively used the ACFD as a venue to obtain remedy for our clients' trademark infringement issues, rather than dragging the cases through the courts. We believe the ACFD has sufficient authority to investigate trademark infringement complaints, summon offenders, issue orders for the removal of infringing materials, confiscate and destroy counterfeit and infringing goods, and compel offenders to comply with its orders, possibly with the assistance of police authorities.
To summarise, in Saudi Arabia, enforcing trademark protection through administrative measures has shown to be a practical and quick approach. Brand owners should think about these possibilities and work with MOCI and ACFD officials to combat the threat of trademark infringement in the Kingdom.
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