Trademark Registration in Saudi Arabia (KSA)
As the world's largest oil producer, Saudi Arabia is a key player in the global economy. One of the benefits of doing business in the country is that it has strong trademark laws designed to protect businesses.
The Kingdom of Saudi Arabia (KSA) is also a member of the Paris Convention for the Protection of Industrial Property and the World Intellectual Property Organization (WIPO). This makes it relatively easy for businesses to register their trademarks in Saudi Arabia.
If you are doing business in Saudi Arabia or considering doing business in the country, it is important to understand the procedure, schedule, documentation, and associated fees for trademark registration. With this knowledge, you can ensure that your trademark registration runs successfully and that your intellectual property is safeguarded.
Trademark Law in Saudi Arabia
The main law regulating trademarks in Saudi Arabia is the Gulf Cooperation Council ("GCC'') Trademark Law. The GCC Trademark Law has enabling Regulations aimed at trademark registration procedures, trademark protection, and enforcement mechanisms within the Kingdom of Saudi Arabia.
The GCC Trademark Law is a harmonized law that applies to all GCC Member States, including Saudi Arabia, Kuwait, the United Arab Emirates, Qatar, Bahrain, and Oman. This law provides a consistent and comprehensive approach to trademark protection across the GCC region.
According to Saudi Arabia’s Trademark Law, a trademark is any sign that can be used to distinguish the goods or services of one person from those of another. This may include words, names, signatures, letters, numbers, shapes, colors, sounds, or any combination thereof.
To obtain trademark protection, businesses must file for registration with the competent authorities in Saudi Arabia. This is because Saudi Arabia is a first-to-file country, as opposed to a first-to-use country. And this is a big deal for businesses operating in Saudi Arabia because it allows them to secure trademark protection even if they are not the first to use the mark in the country.
Saudi Arabia is a first-to-file country, as opposed to a first-to-use country.
What Can And Cannot Be Registered As A Trademark In Saudi Arabia?
Under the Trademarks Law, any sign that is capable of distinguishing the goods or services of one undertaking from those of other undertakings is registrable as a trademark. This includes, but is not limited to, words, names, signatures, letters, numerals, devices, labels, tickets, shapes, colors, packages, and the three-dimensional form of goods or their packaging.
Sounds and smells can also be registered as trademarks in Saudi Arabia if they are capable of being represented graphically.
Trademarks that are not registrable as trademarks in Saudi Arabia include:
- Signs that are devoid of any distinctive character such as religious symbols, flags, or national emblems;
- Marks that are identical or confusingly similar to an earlier trademark;
- Marks that are identical or confusingly similar to a well-known trademark;
- Marks that may mislead the public or include false statements on the origin or source of goods or services or their other properties as well as the marks that include a fictitious imitated or forged trade name;
- Marks that are contrary to public order or morality, etc.
Registrar of Trademarks in Saudi Arabia
With the recent establishment of the Saudi Authority for Intellectual Property (SAIP), trademark administration (including registration) has been transferred to the SAIP. The Saudi Arabia Ministry of Commerce and Investment (MoIC) used to be in charge of registering trademarks before it was transferred to the SAIP.
This change has streamlined the process and made it more efficient for those looking to register their trademark in the country. What this means for applicants (individuals and businesses alike) is that they can now expect a faster and more streamlined registration process.
Trademark Registration Process in Saudi Arabia
Registration of a trademark in Saudi Arabia is a multi-step process. The process of registering a trademark in Saudi Arabia is as follows.
- Trademark Search
It is recommended that before filing a trademark application, you conduct a search of existing trademarks to ensure that your proposed mark is available for use. A trademark search can be conducted online through the SAIP's website or with the assistance of a professional IP specialist/attorney or law firm. - Filing of Application
Once it has been confirmed that the proposed trademark is available, the next step is to file a trademark application with the SAIP. If the applicant is not based in Saudi Arabia, then a local agent must be appointed for the service of the process. - Publication and Opposition Period
Once the application is filed, it will be examined by the SAIP to ensure that it meets all formal requirements. If the application satisfies the formal requirements, it will then be published. So, any interested party will have a period of 60 days from the publication date to file an opposition to the registration of the trademark. - Grant of Registration Certificate
If no objection is raised during the publication phase or the objection that is filed is unsuccessful, the SAIP will have to ensure that the trademark satisfies all the requirements for registration under Saudi law. Then, a Certificate of Registration will be issued to the applicant, which is printed through the system.
Timeline for Registering a Trademark in Saudi Arabia
The timeline for registering a trademark in Saudi Arabia is as follows:
- Authorization to register the trademark (Timeline not Specified but could be very fast)
- Application for Power of Attorney (Timeline not specified but could be very fast)
- Application filed with the SAIP for registration (Timeline not specified but could be very fast)
- Examination of application by the SAIP and modification (within 90 days)
- Publication and Opposition Period (within 60 days)
- Registration certificate issued after payment (within 30 days)
Overall, the entire process of registering a trademark in Saudi Arabia can take anywhere from 3 to 6 months. However, it's important to note that this timeline is only an estimate and may vary depending on the specific circumstances of your case.
If you are overly concerned about this, here are some factors that could determine the timeline of your trademark registration:
- The complexity of your trademark
- Whether your trademark is considered "well-known"
- The speed with which you respond to any objections or requirements from the SAIP
- Whether there are any third-party oppositions filed against your trademark
- The current workload and the backlog of the SAIP.
Trademark Registration Cost in Saudi Arabia
The costs associated with trademark registration in Saudi Arabia include the following:
- Consideration fees: SAR 1000 (approximately USD 270)
- Publication fees: SAR 575 (approximately USD 155)
- Trademark registration and certificate issuance fees: SAR 5000 (approximately USD 1,351)
What You Need to File a Trademark Application in Saudi Arabia
There are a few key documents that you will need in order to file your application. Be sure to have these on hand before beginning the process, so that you can avoid any delays or complications.
Here is a list of what you will need in order to file a trademark application in Saudi Arabia:
- A Power of Attorney, authorizing your chosen agent or firm to file and process the application on your behalf.
- A copy of your passport or ID.
- A detailed description of the goods and/or services that you wish to register.
- Priority document (if claiming priority)
- The application filing/consideration fee.
With these documents in hand, you will be well on your way to registering your trademark in Saudi Arabia.
Final Thoughts
As seen from the above analysis, to protect your trademark in Saudi Arabia, it is essential to file for registration with the Saudi IP office. As trademarks are a key part of your brand, they deserve the same level of protection as any other asset. The reforms under Saudi Trademark laws have been widely publicized, but many key points need to be considered when seeking trademark registration and protection in Saudi Arabia.
An experienced IP lawyer can help you understand the implications of these reforms and file for registration accordingly. They can also advise on the best way to protect your trademark in Saudi Arabia and navigate the changing IP regime.
If you have any questions about trademark law in Saudi Arabia or need assistance registering your trademark, please contact us at [email protected]. Our experienced intellectual property legal counsel team can help you protect your brand and business.
Frequently Asked Questions
What is the term of protection for trademarks in Saudi Arabia?
The term of protection for trademarks in Saudi Arabia is 10 years (according to the Hijri Calendar) from the date of filing and is renewable for a further 10-year period.
How are trademarks enforced in Saudi Arabia?
You can file a complaint with the Saudi Commercial Court, which has jurisdiction over trademark infringement cases.
The penalties for trademark infringement in Saudi Arabia include imprisonment and/or a fine. In addition, the court may order the infringing party to pay damages to the trademark owner and/or to stop using the infringing trademark.
What are the grounds for refusal of trademark registration in Saudi Arabia?
Trademark registration in Saudi Arabia can be refused on several grounds, including if the trademark is:
- Identical or similar to an existing registered trademark.
- Descriptive or customary in use.
- Contrary to public morality or religion.
- Used in bad faith.
Can a trademark registration be canceled in Saudi Arabia?
Yes. Trademark registration in Saudi Arabia can be canceled by the owner of an earlier registered trademark on the grounds that the later trademark is identical or similar to the earlier trademark and is used in relation to identical or similar goods or services.
Trademark registration can also be canceled by any person on the grounds of non-use. If a registered trademark is not used for a period of 5 years, any person can file a petition for cancellation of the registration.
What are the benefits of trademark registration in Saudi Arabia?
There are several benefits of trademark registration in Saudi Arabia, including:
- The exclusive right to use the trademark in relation to the goods and/or services for which it is registered.
- The ability to take legal action against anyone who uses the trademark without authorization.
- The potential to license or sell the trademark to others.
- Increased brand recognition and goodwill.
