Trade and Service Marks

– The Trade Mark Law of the Gulf Cooperation Council States (GCC) and Implementing Regulations, superseding previous Laws, applicable since October 2, 2016.
(However, according to the GCC Trade Mark Law, each Member country is entitled to decide its own principles, and hence, some practices may be different in Saudi Arabia. The below information corresponds to the current practice that is followed in Saudi Arabia.)

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since May 22, 1982.
– Paris Convention for the Protection of Industrial Property, Stockholm Act (Royal Decree No. M/48 dated September 9, 2003), since March 11, 2004.
– WTO’s TRIPS Agreement, since December 11, 2005.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since December 3, 2020.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Geneva Act, since July 22, 2021.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of December 7, 2022.

Filing

Applicant: any person or legal entity.

Foreigners: must be represented by an agent residing in Saudi Arabia.

Service marks: eligible for registration, however “retail and wholesale services in class 42” are not accepted.

Collective marks: registrable.

Series marks: registrable.

Marks in color: a mark registered without claiming color is deemed to be registered for all colors and combinations thereof.

Sound and smell marks: a trademark associated with a sound or smell shall be considered as trademark.

Exception to protection: (a) trademarks of religious nature or against the public morality; (b) trademarks for goods/services prohibited in Saudi Arabia such as alcoholic drinks, bars, nightclubs, etc; (c) geographical names if their use is liable to create confusion as to the source of products or origin; (d) confusingly similar or identical trademarks that are registered for others.

Well-known trademarks: marks identical with or similar to well-known trademarks are not registrable by third parties even if the well-known trademarks are not registered in Saudi Arabia.

Novelty: not required.

Temporary protection: may be obtained for marks appearing on goods or for services displayed at officially recognized exhibitions.

Priority: Saudi Arabia has agreed to join the Paris Convention, thus for claiming priority, the application must be filed within six months from the date of filing of the corresponding application abroad, and a certified copy of the home application must be submitted within the priority deadline. A non-certified English translation of these documents is required, if the documents are not in the English language.

Classification: according to the International Nice Classification. Christmas trees and related products in class 28, pork meat in class 29, and alcoholic goods in classes 32 and 33 are not registrable. A separate application is to be filed for each class of goods and/or services.

Filing requirements for an application (to be sent to resident agent):
1. Original power of attorney, duly notarized and legalized up to the Saudi Arabian Consulate (one general power of attorney is sufficient for filing any number of applications on behalf of the client);
2. 1 electronic print of the trademark;
3. 1 e-copy of priority document, if priority is claimed, certified.  The original certified copy of the priority document should be submitted within six to eight weeks from the filing date of the application.

Note: a scanned colored copy of documents must be submitted at the time of filing, the original copies may be submitted within ninety days from notification date.

Electronic filing: available. 

Electronic signatures: are accepted as long as the documents are duly legalized by a Saudi Consulate.

For a change of name:
1. A certified copy of the change of name document, legalized up to the Saudi Arabian Consulate, along with a simple English translation;
2. Power of attorney reflecting the new name, legalized up to the Saudi Arabian Consulate.

For a change of address:
1. Power of attorney reflecting the new address, legalized up to the Saudi Arabian Consulate.

Examination Procedure

Examination: applications are examined as to: (a) form; (b) whether the trademark is descriptive of the products, indicative of the origin of the products, lacking distinctiveness, or of a nature to offend morality, Islamic ethics, or religious traditions, and those detrimental to public security; (c) whether the trademark is in conflict with previous registrations or not. If the Registrar objects to certain aspects of the mark in the course of examination, such as the scope of goods or services or asks for a modification of the mark, a period of ninety days is given to comply with the Registrar’s request. If applicant fails to answer, the application will be rejected.

Rejection: in the event of a rejection of the application, a complaint can be filed at the Saudi Authority for Intellectual Property (SAIP) within sixty days from the date of notification of the rejection. 

Disclaimers: available.

Letters of consent: are not recognized by the Trademarks Registrar. However, the same can be used to support a complaint to be filed before the Saudi Authority for Intellectual Property (SAIP) against the Registrar’s refusal decision, once issued and notified.

Appeal: the SAIP's decision can be further appealed to the Board of Grievances within thirty days of the notification. The decision of the Board of Grievances is final.

Publication: accepted applications are published electronically for a period of sixty days.

Opposition: any interested party may file an opposition to the registration of the mark before the Trademark Board, within sixty days from the date of publication.

Granting

Issuance of certificate: after the lapse of the opposition period i.e. sixty days from the date of publication, the certificate of registration will be issued in electronic format.

Duration: ten Hegira years = about nine years and eight months from filing date, renewable for like periods.

Renewal: during the last year of validity. Grace period: a grace period of a further six Hegira months is allowed with a late renewal fee. Requirements: (1) a notarized and legalized power of attorney (if the agent does not hold one); (2) original Saudi Arabian certificate of registration of the trademark for endorsement purpose.

Assignments: are allowed independently of the enterprise. In order to be effective against third parties, the assignment must be recorded. Requirements: (1) power of attorney and deed of assignment, both legalized by a Saudi Arabian Consulate; (2) original Saudi Arabian registration certificate.

Licensing: allowed for all or part of the products/services covered. Multiple licensing is possible. In order to be effective against third parties, the licensing agreement must be recorded.

Use: required; failing to use a mark for five consecutive years can lead to its cancellation.

Marking: “Registered trademark” is optional. False indication, however, that a mark is registered is subject to punishment.

Cancellation: any interested party may request the cancellation of a trademark registration only before the Board of Grievances on the following grounds: (1) failure to use the mark for five consecutive years; (2) the registration was effected fraudulently; (3) the registration was effected contrary to public order and morality.

Re-registration after cancellation: a cancelled trademark may not be re-registered by another person or legal entity for the same or similar products or services until three years after the cancellation date unless a judgment is issued to the contrary.

Protection

Infringement: the mark’s owner has the right to prevent others from using it or using any other similar sign which might mislead the public as to the products or services for which the mark was registered and also with respect to similar products or services. The Board of Grievances in Riyadh is competent for all civil and criminal trademark disputes. The IP right owner can also file a complaint before the Anti-Commercial Fraud Department (ACFD) and this administrative action may take up to three months. No such time limit applies to the private or personal rights of trademark owners, to initiate infringement and/or counterfeiting claims (civil claims).