Trademarks

Trademarks

Trademarks Law and the need for protection:
 

There is no doubt that identity in the marketplace is very important, because success in the business world depends largely on the message that was conveyed and the image that was projected. Merchant may have an excellent product or service to offer, but if people cannot pick out such products easily in the crowd, he would probably be overlooked in favor of a firm with a stronger presence.

The public gravities towards familiar names and symbols that have become associated with quality and reliability. That’s why companies spend millions of dollars nurturing their corporate images. They may research, design, market and protect a name; logo or package designs as much as the physical product itself.

A key way of protecting corporate identity is through a registered trademark. Therefore, registration of a trademark is legal title to intellectual property in much the same way as a deed is title to a piece of real estate. It verifies the exclusive right one has established through use of a word, symbol, style or combination of these.

With a basic knowledge of the trademark concept and process, one can take steps to protect his intellectual property and avoid infringing the rights of others.

In this Web Site we will try to give general information only for our clients about a trademark. Information presented here does not cover all the complex issues that may arise through the registration process. The information presented here is not a substitute for an experienced trademark agent. Nor does it provide authoritative definitions and explanations, for which the reader is referred to the Trademarks Law, the Trademarks Regulations. However, even if you are hiring a registered trademark agent, this guide can help you become a well-informed client. Consult the trademarks Law, the Trademarks bureau or a registered trademark agent for more detailed information.

Trade Marks Law and the registration process:
 

In the Kingdom of Saudi Arabia, like any abiding law nation, government has realized the need to protect other’s right. It has enacted laws and regulations to protect every legitimate right for its citizen as well as foreigners. It, also, has joined the Paris Convention for Industrial Property as well as the Berne Agreement. Its accession came into effect as of 11 March, 3004.

The original trademarks Regulation was promulgated by Royal Decree No 8762 dated 28/7/1358 H, to regulate the protection of trademarks in the Kingdom of Saudi Arabia. In view of the long period since these regulations were promulgated during which commercial conditions in the Kingdom have developed considerably, it become necessary to reconsider the previous Regulations and study the trade marks rules in a way that fits the new circumstances in the light of modern regulations especially those applied in nearby countries, and in the light of the Model Trade Marks Regulations for the Arab Countries prepared by the Industrial Development Center of the Arab Countries in 1975. For these reasons, the law was changed to include a provisions and rules not found in the old Regulations. They deal with the various aspects of trademarks in successive chapters in a lucid and logical sequence in accordance with a sound technical formulation of the rule. These provisions include definitions and details of trade marks, registration, announcements, renewals and deletions along with the transfer of ownership of marks, mortgage, seizure, and licensing thereof together with a schedule of fees due on registration, etc. They define criminal offenses and public penalties pertaining to the misuse of trademarks created to protect public and private rights and include the formulation of procedural rules in relation to such offenses and penalties. These are, in addition to; other general detailed rules and provisions. This also was  changed by the Royal Decree No: M /5 dated 4/5/1404 H, January 7,1984. Presently, a new Trademarks Law has been promulgated by the Royal Decree No: (M/ 21) dated 28/5/1423H, corresponding to 7th of August /2002. The Law keeps entrusting to the trademark's Bureau, in the Ministry of Commerce, the responsibility for registering trademarks in Saudi Arabia.

The main functions of the Trademarks Bureau are to:
 

• Set up a “Trade Marks Registrar ”wherein shall be recorded all registered trade marks or notices of assignment of ownership or transfer thereof, or license to use, renew or delete trade marks as well as all the details provided for by the Rules for Implementation.

• Receive and examine applications for trademark registration and grant registration to qualifying application.

• Record and index registration of trademarks.

• Receive and examine application for registered users of trademarks.

• Grant registration to qualifying registered users.

• Approve and record assignments of trademark application.

• Maintain records of trademark registration and pending marks and a search room of these records for public use.

• Provide general information to the public about the trademark registration process.

What is a trademark under Saudi Arabian Law?
 

According to article (1) A Trade Mark according to the Law shall cover names with distinct shapes, signatures, words, letters, numbers, drawings, symbols, stamps and prominent inscriptions or any other signs or combination thereof that are visible and suitable to distinguish industrial, commercial, vocational, or agricultural products, or projects to exploit forests or natural wealth or to indicate that the item on which the mark is to be placed belongs to the owner of the mark on the grounds of manufacture, selection and invention thereof, or trading therewith, or to indicate the rendering of a certain services

Validity of a Mark’s Registration
 

A registered trademark is one that is entered on the Trademark Registrar held by the trademark Bureau in the Ministry of Commerce. Such registration of a trademark gives the proprietor the exclusive right to use the mark in Saudi Arabia for 10 years, renewable for similar periods if applications are filed for renewal of its registration. A mark’s owner may file an application for renewal of registration thereof during the last year of its protection period under the conditions and terms provided for in the law and the Implementing Regulations. He may not apply to introduce any change to the mark or the list of the products or services covered by the mark; nevertheless, it is possible to delete products or services from such a list.

How do one register a Trademark?
 

Registration of a trademark begins with filing an application for registration with the Trademark Bureau in the Ministry of Commerce. The application then goes through astringent examination process to make sure that it meets all requirements of the Trademarks and the Implementing Regulations.

How much does it cost to register a trademark in Saudi Arabia
 

The basic government fees are:

SR 1,000 equivalent to US $ 270(non-refundable) in respect of the following:

• Application to register a trade marks for one class.

• Application to register a collective trade marks for one class.

• Request to examine a trademark for one class.

• Viewing the register for one train respect of.

• Every photocopy taken from the records of the Register in respect of one trademark for one class.

• Application to license the use of a mark for one class as well as mortgage according to Articles 36 and 40 of the Law.

• Application to transfer or assign of ownership for one trademark in respect of one class.

• Every amendment or addition to a mark for one class according to Article 22 of the Law.

• Application to add or alter any statement for which no fee is specified regarding a mark for one class.
   

Examination Process
 

When the Trademarks Bureau receives an application, it does the following:

• Searches the trademark records to find any other trademark that may come into conflict with the one applied for and, if one is found, informs the applicant of it.

• Examines the application for compliance with the requirements of the Trademarks Law and the Implementing Regulations and informs applicant of the requirements which are not met by the application.

• Allows time for opposition (challenges) to the application. After considering the evidence filed by either or both parties, the Registrar decides whether to refuse the application or reject the opposition. The parties are notified of the decision and its reasoning.

• If no one files an opposition, the mark is allowed, upon payment of the registration fee.

When a trademark qualifies for registration?
 

A trademark will qualify for registration as long as it does not conflict with the Trademarks Law and
Its Implementing Regulations, which sets out the requirements for registration. The following will not
re considered as trademarks according to the provisions of the Law:

• Signs devoid of distinction and which are considered as descriptive of products, properties or services or if they are merely ordinary names which are by custom given to the products or services. Accordingly, words or marks such as “SAHA” for milk, and “perfectly clean” for dry cleaner services could not become registered trademarks. All good milk could be described as SAHA. These are inherent characteristics of the products or services. If you were allowed to register these words, no other milk sellers could use it to promote their goods, which would be unfair.

• A trademark will not be registered if the trademark is pictures or primarily an applicant full name or surname, or that of another individual, unless they or their heirs agree to this use. An exception to this rule is if applicant can prove that his wares or services have become known under such name, so that the word now connotes more than a person’s name or surname in the public’s mind. There are numerous examples of personal names that have become associated with a food, drink, or other product and are now registered trademarks.

• Any expression, sign or drawing offensive to religious principles.

• Every expression, sign or drawing in contravention of the principles of public order or public morality.

• Public emblems, flags and other signs, names and epithets pertaining to the Kingdom of Saudi Arabia or to any of the countries with which it has reciprocal arrangements or to any of the countries which is a member to any International Multilateral Agreement the Kingdom of Saudi Arabia is a member there to , or pertaining to an international or governmental body, or any imitation of the flags, symbols, names and epithets, unless, a license is obtained from the competent authority owns same.

• Official signs and stamps of the Kingdom and the countries and bodies referred to in paragraph (d) if such signs and stamps pertaining to their control over products and services or the guarantee thereof, unless a license is obtained from the competent authority owns the same. The above prohibition shall not operate , unless, when the trademark is prepared for use regarding the identical products or services or regarding similar products or services. 

• Geographical names if their use causes a misunderstanding as to the source of the products or services or origin thereof, or their use would entail a monopoly of the products or services or origin's name without any justification.

• Statements that are bound to mislead the public or which contain falsehood as to the origin or other descriptions of the products or services as well as marks containing a fictitious commercial name or an imitation or forged name.

• Marks identical to or similar to internationally known marks or famous in the Kingdom even if they are not registered in the Kingdom.

• Statement related to awards for excellence.

• Marks owned by natural or juristic individuals or which belong to countries with which dealings are prohibited in accordance with a resolution issued by the competent authority.

• Signs identical or similar to marks already filed or registered by other regarding identical or similar products or services as well as signs whose registration for certain products or services would prejudice the value of products or services of others.
   

Disclaimers
 

A disclaimer is a statement indicating that a certain word or portion of a trademark is not protected. In this way, one may apply for registration of the mark with the understanding that he has no monopoly on certain word or portion of the mark. Having a disclaimer does not mean disclaimer can never use the disclaimed portion as part of the trademark. If, at a later date, applicant can demonstrate the disclaimed matter has become distinctive of his wares or services, he may be able to register it. The Examiner may request that the applicant disclaim the right to the exclusive use, a portion apart from the trademark.

Application
 

The principal document in the registration process is application form. One must file a separate application for each trademark he/she wishes to register. A complete application includes:

• The appropriate application form filled out by applicant or his authorized agent;

• The application fee; and

• Any required formal drawings and/or specimens, where appropriate.

It is highly recommended that proprietor hires an experienced, competent trade-mark agent who is well briefed, because preparing a trade-mark application and following through on it can be a complex task, particularly if a rival challenges proprietor right to the mark. Once proprietor has appointed an agent, the Trademarks Bureau will correspond with no one else about such application.
 

Examination

The Examiner studies the application data and decides whether such application can be accepted within a period of sixty days after submission of an application. If there are doubts about your case, the Examiner will notify applicant or his agent, in writing, of the objections. Applicant then has opportunities to respond. If applicant answers still fail to satisfy the examiner, applicant will receive a letter informing him that his application has been rejected explaining the reason why. In the event of rejection, applicant has the right to lodge a complaint against this decision within sixty days after notification of the decision with the Minister of Commerce. If the Minister rejects the complaint , the party concerned shall have the right to lodge a complaint with the Grievances Board (Diwan Al-Mazalim) within thirty days after notification thereof.

Abandonment

If applicant fails to prosecute his application (take all the steps necessary to complete the process), such application may be considered abandoned. Before this happens, applicant will be notified and given an opportunity to remedy the situation within a specified time. If applicant does not respond appropriately, his application will re considered abandoned and he will have to re-apply with the requisite fee to pursue the trademark.

Opposition

Any interested person may  object to the acceptance of registration of a mark within ninety (90) days of the  publication date before the Grievance Board (Diwan Al-Mazalim).

Allowance and Registration
 

If there is no opposition, or if an opposition has been decided in applicant favor, your application will be allowed. The Trademarks Bureau will not consider any further challenges. Applicant will receive a notice of allowance and asked to pay the amount of SR 3,000 equivalent to $ 800 as a registration fee. The final step, after has fulfilled these requirements, is for the Bureau to issue a Certificate of Registration and enter the registration on the records.

Assignment
 

A trademark is a form of property. Owner of a trademark can sell, bequeath or otherwise transfer his rights to it to another party through a transaction called an" assignment.” However, to avoid ownership disputes, owner should formally notify the Trademarks Bureau of such changes in ownership so that the Bureau can amend its records accordingly.

The transfer of ownership must be in a written form and provided that; it is not intended to mislead the public especially as far as the nature, origin, qualities or performance of products, or services are concerned. Owner must send in a legal document attesting to the change, together with the prescribed fee. The original instrument of transfer of a notarized and legalized copy should be used.

Licensing of a Trademark
 

As a registered trade-mark owner, you also can license your rights to natural persons or organizations of your choosing, provide that license contract does not impose on the beneficiary restrictions not inherent in the rights conferred by virtue of the mark’s registration or unnecessary for safeguarding these rights.

Policing your Trademark
 

One of the functions of the Trademarks Bureau is to prevent anyone else from registering a mark that is the same as or confusingly similar to your mark. It does not, however, keep an eye out for cases of infringement. It is your responsibility entirely to monitor the marketplace and, if you find someone using your registered trade-mark or a mark or a trade name that is confusing with your mark, to take legal action. Someone who infringes on trademark rights may be accountable to you by way of an injunction, e.g. an order to cease the infringing activity and/or damages.
 

Finally, we are pleased to up date you that, presently, Saudi Arabia has joined the Paris Convention for Industrial Property. Its accession came into effect as of 11 March, 2004. However, it has entered a reservation with regard to item "Four" of Article (4), and item "One" of Article (7) of the Convention for not accepting the registration of goods and product falling under class 33.

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E-mails: attorney@aloufilawfirm.com

      

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