Trademarks are among the most valuable assets for companies, representing the identity of the product or service offered, as well as providing a distinctive character in an increasingly competitive market. Trademarks are one of the most significant elements for companies to foster trust and credibility with their customers, thereby enhancing customer loyalty and increasing market share. In light of the growing significance of trademarks, it is essential to ensure their legal protection to prevent infringement or unauthorized exploitation. In this context, the Kingdom of Saudi Arabia places significant emphasis on the protection of trademarks, recognizing their importance in supporting the national economy and attracting various types of investments. The Kingdom has established a comprehensive legal framework that specifies the necessary procedures for registering trademarks and protecting them from any violations, intending to provide a secure business environment that encourages innovation and protects intellectual property rights, thereby promoting business growth and contributing to the achievement of Vision 2030. This article will delve into the legal procedures for protecting trademarks as specified in the Trademark Law of the Gulf Cooperation Council and its executive regulations.

Trademark Protection in Saudi Arabia

Trademarks eligible for protection in Saudi Arabia are those creations that come in the form of names, words, signatures, letters, symbols, numbers, titles, seals, designs, graphics, images, distinctive engravings, or the way graphic elements are wrapped; shapes, colors, combinations of colors, or a combination thereof, as well as any sign or group of signs used or intended to be used to distinguish the goods or services of a facility from those of others. Trademarks may also indicate the provision of a service or the monitoring or inspection of goods or services. Additionally, sound or scent may be recognized as a trademark.

Trademark Registration in Saudi Arabia

It is noteworthy that the registration of trademarks in Saudi Arabia confers numerous benefits and advantages, such as:

• The registration of a trademark shall be deemed to have taken effect as of the filing date of the application. Upon successful registration, the trademark owner shall be issued a certificate that includes the following particulars:
• Trademark Registration Number.
• Priority number and date, and the country in which the application was filed, if applicable.
• Name of the trademark owner, their surname, place of residence, and nationality.
• An identical copy of the trademark.
• A list of goods or services for which the trademark is intended to be registered, along with the details of its category.
• Date of application, date of trademark registration, and expiration date of the protection period.
• The registration of a trademark shall grant the owner thereof the exclusive right to use the registered trademark and to prohibit any other person, absent authorization, from utilizing the trademark or any sign identical or similar thereto, including any geographical indication, in the course of trade to distinguish goods or services related to those for which the trademark was registered, where such use is likely to cause confusion among the public. Such confusion shall be presumed in cases where the identical trademark or a similar mark is employed to distinguish goods or services identical to those for which the trademark was registered.
• The registration of a trademark in Saudi Arabia shall grant the owner thereof a protection period of ten years. The owner shall have the right, if desiring to extend such protection for successive identical periods, to submit a renewal application within the final year of the current protection period. Additionally, the trademark owner shall be entitled to renew the registration within six months following the expiration thereof.
• Upon the registration of a trademark, the owner thereof shall be entitled to authorize any natural or legal person to use the trademark for all or some of the goods or services for which it is registered. The owner shall also have the right to authorize other persons to use the same trademark and to use it personally, unless otherwise agreed. The duration of such authorization may not exceed the trademark’s protection period.
• Should the trademark owner desire to obtain temporary protection for their trademark related to products or services exhibited at national or international exhibitions held in a GCC member state, the owner shall notify the Saudi Authority for Intellectual Property of their intent to display the trademark in the Kingdom of Saudi Arabia at least one month prior to the exhibition’s opening. The Authority shall issue a certificate of temporary protection for the trademark utilized in the exhibition, with such protection lasting for a period not to exceed six months from the date of the exhibition’s opening.

Procedures for Trademark Registration in Saudi Arabia

The application for trademark registration in Saudi Arabia shall be submitted to the Saudi Authority for Intellectual Property, either manually or electronically. The application shall be filed by the trademark owner or their agent, provided the agent is registered in the Register of Trademark Agents. Additionally, the trademark registration application shall be limited to registering a trademark for a single category of goods or services.

If the applicant desires to register a trademark for multiple categories of products or services within a single application, an approval from the Saudi Authority for Intellectual Property shall be obtained in accordance with the international classification known as the (Nice Classification). Furthermore, the trademark registration shall not conflict with the public law in the Kingdom of Saudi Arabia.

It is noteworthy that an application for trademark registration shall include the following information and attachments:

• Image of the trademark to be registered.
• The name, address, and nationality of the applicant shall be provided. If the applicant is a legal entity, its name and address shall also be provided.
• A precise description of the trademark to be registered.
• The products or services for which the trademark is to be registered and the applicable classification.
• The priority date and number, along with the country in which the application was filed, if applicable.
• The signature of the applicant or its authorized agent shall be obtained. If the application is submitted by a legal entity, the documents shall be signed by an individual authorized to sign on behalf of the entity. If the application is submitted by an agent, the name and address of the agent shall be provided.
• Four images of the trademark that are identical to the specimen of the trademark in the registration application.
• If the application is submitted by an agent, a copy of the power of attorney shall be submitted alongside the original for verification purposes. The original document shall be duly notarized, authenticated, and translated into Arabic.
• Proof of the practice of the profession or business.
• Proof of payment of the application fee.
• If the trademark to be registered includes one or more terms written in a foreign language, the applicant shall provide a certified translation of such terms into Arabic, along with a statement indicating the correct pronunciation.
• Sound trademarks shall be submitted in the form of musical notation or a written description.
• Scent trademarks shall be submitted with a written description.

Upon the submission of the application, the Saudi Authority for Intellectual Property shall examine the application and render a decision within ninety (90) days from the date of submission. The application shall be accepted if it complies with the requisite conditions and procedures, or it may be rejected. The Saudi Authority for Intellectual Property shall notify the applicant of its decision in writing or electronically at the address provided by the applicant. Furthermore, the Authority may require the fulfillment of conditions or documentation, or mandate necessary amendments to modify the registration application to clearly delineate the trademark and prevent any likelihood of confusion with any previously registered trademark or an application for registration thereof, or for any other reason deemed appropriate. Such request shall be made within ninety (90) days of notifying the applicant; failure to comply shall result in the applicant being deemed to have waived their application.

In the event that the Saudi Authority for Intellectual Property rejects or suspends a trademark application, the applicant may appeal to the Appeals Committee within sixty (60) days from the date of notification. The appellant shall be duly notified of the Appeals Committee’s decision in writing or electronically within thirty (30) days from the date of its render. Additionally, the appellant shall have the right to appeal the decision to the competent court (Commercial Court) within sixty (60) days from the date of notification.

In case the application is accepted by the Saudi Authority for Intellectual Property, the applicant or its agent shall pay the costs of publication within thirty (30) days from the date of being notified of the acceptance decision; otherwise, the application shall be deemed as waived.

A trademark publication notice in Saudi Arabia shall contain the following information:

• The application number and date of submission.
• The applicant’s name, address and nationality.
• The image of the trademark.
• The agent’s name and address.
• The products or services for which the trademark is to be registered and the applicable classification.
• Requirements and restrictions.
• The priority date and number, along with the country in which the application was filed, if applicable.

Whereas the purpose of publishing a trademark notice in the Kingdom of Saudi Arabia is to enable any interested party to file a written opposition to the trademark registration with the Saudi Authority for Intellectual Property within sixty (60) days from the date of publication. Accordingly, the Saudi Authority for Intellectual Property shall notify the applicant of any opposition within thirty (30) days from the date of its filing.

The applicant shall submit a written response to the opposition with the competent authority (the Saudi Authority for Intellectual Property) within sixty (60) days from the date of notification; otherwise, the application shall be deemed as waived.

Thereafter, the opposition shall be decided by the Authority after hearing from the opposer and/or the applicant, if necessary. The Authority shall render a decision either approving or rejecting the application. If the application is approved, the Authority may impose any necessary restrictions. Any interested party may appeal the Authority’s decision to the competent court (the Commercial Court) within thirty (30) days of notification. An appeal shall not suspend the registration process unless the competent court orders otherwise.

The decision of the Authority to approve the trademark registration shall be deemed final upon the expiration of a sixty-day period from the date of publication of the notice without any opposition being filed, or upon the issuance of a final court order. The applicant shall pay the registration fee within thirty (30) days from the date of the final decision to approve the registration; otherwise, the application shall be deemed as waived.

The Authority shall register the trademark in the Trademark Registry and issue a registration certificate to the owner, which includes the following details: -

• The trademark number and date of registration.
• Effective date and expiration date of the trademark protection period.
• The priority date and number, along with the country in which the application was filed, if applicable.
• The owner’s name, address, nationality, and trade name, if applicable.
• The image of the trademark.
• The goods or services for which the trademark was registered, along with the applicable classification.
• Requirements and restrictions (if applicable).

The registration of the trademark shall take effect from the date of submitting the application as registered in the Trademark Registry.

In conclusion, the trademarks shall be protected in the Kingdom of Saudi Arabia through a comprehensive legal framework that guarantees the rights of individuals, companies, and creators. Such framework reflects the Kingdom’s commitment to establishing and implementing legal measures for trademark protection, aligned with its vision of fostering a competitive and attractive business environment where companies can innovate and grow with confidence and security. These legal efforts not only protect trademark owners but also enhance investor and consumer confidence in the Saudi market, thereby supporting sustainable economic development and strengthening Saudi Arabia’s position as a regional and international investment destination.

Trademark Registration Services in Saudi Arabia

Legal services of trademarks provided by Dr. Fahad Alrefaei & Partners Consulting & Law Firm intend to protect intellectual property rights and ensure the lawful and proper use of trademarks. The legal services include the following:

• Trademark Search and Verification: Conducting a thorough examination to ascertain the absence of any disputes or similarities with other trademarks registered within the Kingdom.
• Trademark Registration: Submitting a trademark registration application to the Saudi Authority for Intellectual Property and ensuring compliance with all legal requirements.
• Trademark Renewal: Monitoring renewal deadlines and punctually submitting renewal applications to preserve the rights associated with the trademark.
• Procedures for trademark infringement: Representing companies in trademark disputes against companies or individuals who unlawfully infringe trademarks.

For trademark registration services in Saudi Arabia, please contact Dr. Fahad Alrefaei & Partners Consulting & Law Firm at 920012753 or via [email protected]
We are pleased to assist you.