Trademarks are an essential tool for businesses in Saudi Arabia to distinguish their products and services, contributing to attracting and retaining customers.
The trademark is one of the most important assets of companies as it reflects their identity and differentiates them from other companies. The Saudi regulator sets guidelines to protect trademarks and regulate their use.
To register a trademark in Saudi Arabia, companies must submit an application to the Saudi Authority for Intellectual Property and go through several stages, including conflict search, publication, and objections. Failure to register a trademark exposes it to conflicts with other marks and the loss of legal protection, increasing the risk of exploitation and imitation.
The Nature of Trademarks in Saudi Arabia
A trademark is anything that takes a distinctive form, such as names, words, signatures, letters, symbols, numbers, titles, seals, drawings, images, engravings, packaging, graphic elements, shapes, colors, color combinations, or a combination thereof, or any indication or group of indications if they are used or intended to be used to distinguish the goods or services of one establishment from those of other establishments, or to indicate the performance of a service, or to carry out the monitoring or inspection of goods or services. Sound or scent marks can also be considered trademarks. This definition is the same as stated in Article 2 of the GCC Trademark Law.
Are All Symbols, Drawings, or Images Considered Trademarks?
The answer is definitely no, and we will explain this in detail as follows:
The Trademark Law has established restrictions to consider any drawing, image, or symbol as a trademark due to the presence of marks that violate public morals and cannot be registered as trademarks. Article 3 of the GCC Trademark Law outlines what cannot be considered a trademark, which includes:
Any expression, drawing, or mark that violates public morals or public order.
Trademarks devoid of any distinctive character or marks consisting of ordinary descriptions of goods.
General logos, flags, military and honorary insignia, national and foreign medals, currency, and symbols of states or international organizations.
Honorary degrees or scientific degrees that the applicant cannot legally prove entitlement to.
Red Crescent or Red Cross symbols, marks identical or similar to religious symbols, and names, geographical indications, names of others, or their titles, portraits, or emblems.
Marks that are likely to mislead the public and those owned by individuals or entities with whom dealings are prohibited.
Marks that are mere translations of a famous mark or another previously registered mark if registration would cause confusion among consumers.
Any trademark identical or similar to a previously filed or registered mark for the same goods or services.
Marks whose registration for certain goods or services would degrade the value of the goods or services distinguished by the previous mark.
Marks that include the words "privilege," "registered," or "registered drawing," or similar expressions.
Is Trademark Registration Limited to Saudis Only?
The answer is no, and foreigners can also register trademarks within Saudi Arabia. The law sets restrictions on this, as Article 5 of the GCC Trademark Law specifies the persons and categories allowed to register their trademarks within Saudi Arabia, which include:
Any individual or establishment holding the nationality of any GCC member state, whether they own a factory, are a producer, a trader, a craftsman, or a service project owner.
Foreigners residing in any GCC state who are authorized to engage in commercial, industrial, craft, or service activities.
Foreigners belonging to a state that is a member of a multilateral international agreement to which the GCC member state is a party.
Public interests.
What Are the Risks of Not Registering a Trademark in Saudi Arabia?
Failing to register a trademark in Saudi Arabia can expose the trademark owner or the trademark itself to several risks, which are as follows:
Lack of Legal Protection: An unregistered trademark does not enjoy the legal protection granted to registered trademarks. This means the company may be subject to unlawful use or imitation by others without any legal means to defend its rights.
Confusion with Other Marks: An unregistered trademark may conflict with other officially registered marks, potentially leading to its use being disrupted or even legal claims being made against it.
Loss of Investment in the Mark: Not registering the trademark means losing the investment in building and enhancing the mark and making it known to the public, which could result in any financial value associated with the mark being diminished or lost entirely.
Reduced Customer Trust: The absence of a registered trademark can lead to reduced customer trust, as they may consider the mark unreliable or untrustworthy.
Financial and Technical Losses: The owner may face financial and technical losses due to counterfeiting or unlawful use of the unregistered trademark.
What Is the Importance of Trademark Registration in Saudi Arabia?
Applying to register a trademark in Saudi Arabia according to the GCC Trademark Law serves as a shield against trademark theft or exploitation and protects against several dangers that may occur if the trademark is not registered in the Kingdom.
Article 14 of the system and Article 12 of the Executive Regulations of the GCC Trademark Law stipulate that during the trademark registration procedures, if the Saudi Authority for Intellectual Property accepts the registration application, it must announce it before registration.
According to Article 10 of the system's regulations, the trademark applicant or their agent must, within thirty days from the date of notification of the approval decision, pay the publication costs; otherwise, the Saudi Authority for Intellectual Property will consider the application abandoned.
The primary purpose of this announcement is not only to inform the public about the mark but also to publish all related information, such as the application number, submission date, applicant's name, address, and nationality, the trademark image, the agent's name and address, the goods or services for which the mark is sought, restrictions and conditions, priority date and number, and the country of priority if any. This enables anyone with an interest to object to the registration of the accepted mark with the Saudi Authority for Intellectual Property within sixty days from the date of publication. The applicant will be notified of the objection within thirty days from the date of submission and must respond in writing within sixty days of being notified; otherwise, the application will be considered abandoned.
What Are the Consequences of Trademark Registration in Saudi Arabia?
The registration of a trademark in the Kingdom retroactively affects the date of application submission, and upon completing the registration, the trademark owner receives a certificate that includes the registration number, priority number and date, and the country where the application was filed (if any), an identical image of the trademark, the trademark owner's name, title, place of residence, nationality, application submission date, registration date, and expiration date, and a statement of the goods or services for which the mark is registered.
The trademark owner has the right to renew the registered trademark registration within six months following the end of the registration period as stipulated in the second paragraph of Article 20 of the Trademark Law.
Article 20 of the Trademark Law also specifies that the protection period for a trademark is ten years. The trademark owner wishing to maintain protection must submit an application to the Saudi Authority for Intellectual Property on the prescribed form after paying the stipulated fees within the last year of the protection period for the six months following the end of protection.
It is worth noting that trademark registration in Saudi Arabia allows the owner to license any individual or legal entity to use the trademark for all or some of the goods or services for which the trademark is registered.
The owner has the right to license others to use the same trademark and use it themselves unless otherwise agreed. The license period must not exceed the period prescribed for trademark protection, as per Article 29 of the Trademark Law.
It should be noted that the licensee cannot transfer the license to another or grant sub-licenses unless otherwise agreed upon, according to Article 32 of the Trademark Law.
Based on all the above, the trademark owner in Saudi Arabia, according to Article 40 of the GCC Trademark Law, when infringement occurs or to prevent imminent infringement on their trademark, can file an infringement complaint with the Saudi Authority for Intellectual Property to take one or more appropriate precautionary measures, including a detailed description of the alleged infringement, the goods subject to this infringement, the materials and tools used or to be used, preserving relevant evidence, seizing the mentioned items and the returns resulting from the alleged infringement, preventing the goods that involve the alleged infringement from entering commercial channels and preventing their export, including imported goods immediately after customs clearance, stopping the infringement or preventing its occurrence.
The Respect Department at the Authority decides on the complaint after technical examination within a certain period to verify the infringement, and if proven, it refers the complaint to the Public Prosecution for procedures to be completed and to arrest and summon the trademark infringer for investigation.
According to Article 41 of the Trademark Law, the trademark owner whose trademark has been infringed upon and has suffered direct damage from the infringement can file a lawsuit with the competent court requesting adequate compensation for the damage caused by the infringement, including the profits gained by the defendant.
In conclusion, trademark registration should be indispensable for companies and business owners in Saudi Arabia. Failing to register a trademark exposes the company to significant legal and commercial risks that may lead to financial losses and loss of customer trust.
If you want to build a strong and reliable brand, trademark registration is the first and most crucial step to achieving that.
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