Saudi Arabia (SA)
01-18-2013 (Newsletter Issue 1/13)Accession to Nice AgreementThe Tenth Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification) has been officially adopted in the Kingdom of Saudi Arabia, according to the Trademark Office at the Ministry of Commerce and Trade.
The Trademark Office is now ready to receive trademark applications for goods and services under the same edition of the classification.
The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. The system groups products into 45 classes and allows users seeking to trademark a good or service to choose from these classes as appropriate.
Source: JAH & Co. IP, Doha, Qatar 12-04-2012 (Newsletter Issue 18/12)Amendments to Trademark Law The Ministerial Decision No. 1147 dated October 16, 2012 of the Saudi Ministry of Commerce and Industry became effective as of the date of its publication.
The main amendments are listed as follows:
- Renewal applications are only examined to ensure a legalized power of attorney in the name of the agent renewing the mark and the original registration certificate of the mark are enclosed with the renewal application.
- The Trademark Office will publish a notification that indicates the trademark’s assignment and includes: trademark’s description; number and date of trademark registration; name of previous trademark owner; name of new trademark owner, his nationality and address
- The Trademark Office will publish notices on trademarks cancelled on the website of the Ministry of Commerce and Industry. Before such publication was made in the Official Gazette "Umm Al Qura".
Source: JAH & Co. IP, Doha, Qatar 11-19-2012 (Newsletter Issue 17/12)
Publication in Official Gazette No Longer Requested
The publication in the Official Gazette (Um Al Qura) is no longer requested in Saudi Arabia.
By pursuant of the Ministerial Decree No. 1147 dated 16 October 2012 the Ministry of Commerce and Industry (MOCI) provides for publication of different request and applications concerning trademark in the Ministry of Commerce website instead of the Official Gazette "Umm Al Qura".
The Decree amended several Articles in the Implementing Regulations of Trademark Law including the provisions organize publication of accepted applications, renewal applications; assignment applications; license applications, cancellation requests of mortgage and license and Administrative and Court cancellation decisions of trademark registrations.
The decision allows publication of the above requests in the website of ministry of commerce and industry (MOCI) or any other place determined by MOCI.
The decision became effective upon on its publication in the Official Gazette.
Source: SMAS IP, Saudi Arabia
03-27-2012 (Newsletter Issue 5/12)Trademark Office Online ServicesThe Trademark Office of Saudi Arabia has recently launched an online service through the Ministry of Commerce official website www.mci.gov.sa
Interested parties can easily check the status of Saudi trademark applications by simply inserting the filing number in the designated field.
Source: SMAS IP, Saudi Arabia 11-08-2011 (Newsletter Issue 13/11)Validity of the PoA AmendedThe Saudi Arabian Trademark Directorate has issued a new directive declaring that as of November 27, 2011, the validity of the Power of Attorney is ten Hegira years which is equivalent to nine year and eight months according to the Gregorian Calendar and is calculated as from the date of the stamp of the Saudi Arabian Embassy abroad on the power of attorney.
The validity of the trademark registration in Saudi Arabia is ten Hegira years (equivalent to approximately nine years and eight months according to the Gregorian calendar) as from the filing date. As the renewal fees of a trademark registration can be paid during the last 12 Hegira months of the current protection period it will be possible to use the same power of attorney used for filing the application if the renewal instructions are received at the beginning if the lat year protection period to avoid executing a fresh power of attorney for renewal and unnecessary disbursements.
Source: JAH & Co. IP , Doha, Qatar 10-25-2011 (Newsletter Issue 12/11)Legalization of Power of Attorney RequiredThe Saudi Trademarks Directorate announced that all new trademark applications should be accompanied with a copy of a legalized power of attorney provided that the original of same should also be submitted at a later stage after filing for verification, effective 27 November 2011. No new trademark applications will be accepted for filing without a legalized power of attorney as per the current practice. Also, the validity of the legalized powers of attorney will be ten years only.
Source: JAH & Co. IP , Doha, Qatar Legal basis is the Trademark Act of 1934; last amendment was made via Royal Decree No. M/21 on August 7, 2002 in force since December 6, 2002, published in the Official Gazette No. 3907 on September 6, 2002 and became effective as of December 6, 2002.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification, 10th edition
Exceptions: No trademark protection can be achieved covering alcoholic goods in class 33 and alcoholic beer in class 32, Christmas trees and related articles (class 28), pork meat (class 29), as well as retail services in class 35.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations or shades of colours.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Trademark Office.
A separate application has to be filed for each class and a separate sum of official fees is to be paid for each class.
Foreign applicants need a local agent.
All new trademark application should be accompanied with an original legalized power of attorney. The validity of the legalized powers of attorney will be ten Hegira years (equivalent to approximately nine years and eight months according to the Gregorian calendar) and is calculated as from the date of the stamp of the Saudi Arabian Embassy abroad on the power of attorney.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 12-14 months.
The first office action is taken after approx. 1 to 2 months.
The trademark application is published on the website of ministry of commerce and industry (MOCI) or any other place determined by MOCI.
National:
The opposition period is 90 days from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years according to the Hegira (Islamic) calendar (approximately 9 years and 8 months according to the Gregorian calendar) as from the filing date. The registration is renewable for periods of 10 Hegira years (9 years and 8 months). The registration is renewable for equal periods.
According to the provisions of the new Trademark Law, the grace period is 6 Hegira months.
Use of a trademark is not required for registration or renewal of a mark. However, a trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of 5 consecutive years preceding the date of filing for cancellation.
The official fee from first filing to registration in the normal course of action is SAR 5,000.00 (approx. EUR 970.00) per class.
Trademark Licence Agreement
In Saudi Arabia a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. Licensees can only be recorded for registered trademarks. A trademark may be licensed in respect of some or all of the goods or services for which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence, unless expressly provided for in the sale agreement or in the licence agreement originally executed by the parties. There are no statutory provisions prescribing the terms of licensing, but the terms and conditions agreed upon between the parties constitute the licence agreement.
Recordal
There are provisions in law for the recordal of a licensee. The recordal is not mandatory, but in order to be effective against third parties and to satisfy any user requirements it is advisable to record the licence agreement with the Trademark Office. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement.
The following documents are required for a recordal:
1. A power of attorney executed by the Licensor duly notarized and legalised up to a Saudi Consulate
2. The legalised licence agreement executed by the parties
3. The original Saudi trademark registration certificate for endorsement of the licence thereon as no separate certificate of attesting to the licence will be issued by the Saudi Trademarks Office
4. A certificate or a copy of the licence agreement signed by the parties thereto, duly legalised up to a Saudi Consulate
Effectiveness
The licence becomes effective and enforceable against third parties from the date of signature of the agreement, once recorded in the Trademarks Register and published in the Official Gazette.
Infringement Proceedings
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may not join the trademark owner in infringement proceedings unless the legitimate owner authorises him to act as such. An infringement action can only be defended by the legitimate owner of the trademark. The licensee may call upon the owner to institute infringement proceedings, but he may not institute proceedings in his own name if the proprietor refuses or neglects to do so, unless so authorised by the owner of the trademark.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
690,00 € |
590,00 € |
| Word Mark Search (identical) |
560,00 € |
540,00 € |
| Extended Search (word mark, company name, domain) |
1.090,00 € |
590,00 € |
| Device Mark Search (availability) |
750,00 € |
690,00 € |
| Trademark Owner Search |
490,00 € |
|
| Company Name Search |
540,00 € |
|
| Domain Name Search (extended) |
72,00 € |
|
| i-Search (word mark availability + legal opinion) |
840,00 € |
820,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey04-27-2013
Abu Ghazaleh Intellectual Property, Riyadh, Saudi Arabia
11-14-2011
JAH & CO. IP, Doha, Qatar
Licensing04-27-2013
Abu Ghazaleh Intellectual Property, Riyadh, Saudi Arabia
11-14-2011
Abu Ghazaleh Intellectual Property, Riyadh, Saudi Arabia
Grant Thornton Yafi & Co., Beirut, Lebanon
JAH & CO. IP, Doha, Qatar