Trademark

Summary

Saudi Arabia is a member of the Paris Convention for the Protection of Industrial Property. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement is followed in Saudi Arabia and the revision of class 42 with the creation of classes 43 to 45 has been adopted as of January 1, 2002. Trademarks covering alcoholic goods are not registrable as well as retail and wholesale services. A separate application should be filed with respect to each class of goods or services.Once a trademark or a service mark application is filed,it is examined as to its availability, registrability and coverage. If the Registrar objects in writing to certain aspects of the mark in the course of examination, such as the scope of goods or services or asks for the modification of the mark, a grace period of 3 months is given to the applicant to comply with the Registrar’s request.

Once the application is formally rejected, a complaint against the rejection can be filed before the Minister of Commerce,within 60 days from the date of the notification of the rejection. The Minister’s decision may be appealed before the Board of Grievances (First Instance Court).The trademark or service mark applications accepted for registration are published in the Official Gazette of Saudi Arabia (Ummulqura).Publication is an invitation to any interested party to oppose the registration of trademarks or service marks conflicting with their interests. There is a 3-month period open for filing opposition by any interested party. An opposition to the registration of a trademark or service mark should be filed within the term of the opposition period, i.e., 90 days from the date of publication of the notice in the Official Gazette. The case should be filed before the Board of Grievances (First Instance Court).The duration of a trademark or a service mark registration is 10 years from the filing date according to the Hegira(Islamic) calendar (equivalent to approximately 9 years and 8 months). The registration is renewable for similar periods of 10 years each. According to the provisions of the new trademark law, a grace period of 6 Hegira months with a lateness fine is allowed for filing a renewal application after the expiration of the protection period.

A fresh trademark application can be filed for there-registration of a canceled trademark or service mark.The assignment of a trademark or a service mark can be recorded once the mark is registered in the country. In fact, unless an assignment has been entered against a trademark or a service mark in the register and published in the Official Gazette, it shall not be effective vis-à-visthird parties. The Registrar does not give any importance to the goodwill associated with a trademark nor to the consideration amount involved in the assignment. The registrant of a trademark or service mark is also obliged to record any change in its name and/or address in the Registry. Use of trademarks is not compulsory in Saudi Arabia for filing applications to obtain registration or for maintaining registrations in force. However, a trademark becomes vulnerable to cancellation by any interested party who can establish that the trademark was not actually used for a period of 5 years in succession, unless the owner of the mark presents a reasonable excuse to justify non-use of the mark.

Unauthorized use of a trademark registered under the law, an imitation of such trademark applied on goods or in relation with services of the same class, sale, storing for the purpose of sale, exhibiting for sale of goods bearing
a counterfeit mark, or using a mark duly registered under the law by another person to serve the purpose of unauthorized promotion of goods or services of the same class are offenses punishable under the law.

Filing Requirements

i) Trademark/Service Mark Applications
1. A Power of Attorney filed with the full name and address of the applicant, duly notarized and legalized up to the Saudi Consulate. One general Power of Attorney is sufficient for filing simultaneous and any future applications.
2. A list of the goods/services to be covered by the application.
3. Fifteen prints of the trademark. A trademark print should not exceed (5×5) cm.
4. In case of claiming priority, a certified copy of the priority application is to be filed within six months
from the filing date of the foreign application.

ii) Collective and Quality Mark Applications
1. A Power of Attorney filed with the full name and address of the applicant, duly notarized and legalized up to the Saudi Consulate. One general Power of Attorney is sufficient for filing simultaneous and any future applications.
2. A list of the goods/services to be covered by the application.
3. Fifteen prints of the trademark. A trademark print should not exceed (7×7) cm.
4. Two certified copies of the Articles of Association legalized up to the Saudi Consulate.
5. Two certified copies of the system to be adopted by the applicant in controlling or examining the products long with a statement on the conditions and requirements to be available therein and the method of using the mark thereon duly legalized up to the Saudi Consulate.

iii) Renewal Applications
1. A Power of Attorney notarized and legalized up to the Saudi Consulate.
2. The original Saudi registration certificate of the trademark for the purpose of endorsement.

iv) Assignment Applications
1. A Power of Attorney notarized and legalized up to the Saudi Consulate.
2. A legalized deed of assignment executed by the assignor and the assignee.
3. The original Saudi registration certificate of the trademark for the purpose of endorsement.

v) Merger/License Applications
1. A Power of Attorney notarized and legalized up to the Saudi Consulate.
2. A legalized certificate or merger or a copy of the license agreement.
3. The original Saudi registration certificate of the trademark for the purpose of endorsement.

vi) Change of Name and/or Address Applications
1. A legalized Power of Attorney showing the new name and/or address.
2. A legalized certificate of change of name.
3. The original Saudi registration certificate of the trademark for the purpose of endorsement, (as for recording change of address, only 1 and 3 of the above are required).

Patent

Summary
General Information

International Agreements : Paris Convention, GCC (Gulf Cooperation Council) & PCT.

Novelty Requirements : Absolute worldwide Novelty

Claiming priority : No – regardless of accession to Paris Convention

Examination : As to formalities

Protection Period : 15 Hijra (Islamic) Years (which is about 14 years & 6 months) – and extendible for another 5 Hijra years.

Publication : Yes – after Granting decision in the Official Gazette.

Annuity Payments : Annually after the Grant of the patent

Grace period for Annuity payments : 3 months with double the fees.

Compulsory Licensing : Yes – if Patent not exploited within 2 years (and extendible for another 2) after granting decision.

Working or nominal working of Patents/Inventions : Yes

Note : Saudi Arabia is also a member of the GCC (Gulf Cooperation Council) through which protection can be extended to Saudi Arabia.

Filing Requirements
Patent Filing Requirements

1. A power of attorney executed in the name of the applicant duly legalized up to the Saudi Consulate.

2. A notarized and legalized deed of assignment, if any, executed by the inventor(s), assigning the patent rights to the applicant.

3. Two copies of the specification in English and Arabic prepared strictly in the following order:
a) The abstract (not exceeding one page).
b) Background of the invention.
c) Summary description of the invention.
d) Brief description of the drawings, if any.
e) Full description of the invention.
f) Claims.

4. Two sets of the formal drawings; one set of them should be without numerals.

5. Name(s) and Address(es) of the inventor(s)

6. A list of the home and/or foreign applications stating:

a) Whether or not the application has been submitted before to the Saudi Patent Office.

b) Whether or not the invention has been filed in other countries (including the home country); if yes, provide the following:

i) Country of filing.
ii) Application number (s) and filing date (s).
iii) Publication number (if any) and date of publication in case of publication of the invention in the home country or in any foreign country or the number and date of the letters patent, if it has been granted in any country.
iv) Class of the patent in accordance with the international classification (if known).

Industrial Design


Summary
General Information

International Agreements : Paris Convention

Novelty Requirements : Absolute universal novelty is stipulated but not examined

Claiming priority : Yes

Examination : As to formalities only

Protection Period : 10 Years – as of filing date

Filing Requirements
Design Filing Requirements

1. A power of attorney legalized up to the Saudi consulate.
2. Assignment Deed legalized up to Saudi Consulate.
3. Certified copy of priority document (if claimed).
4. Full name and address of the applicant and the designer.
5. Description of the model or design together with the relevant drawings.
6. Type of the products for which the industrial model or design will be used.