Trademark Law Amended

01 Nov 2002

A new amended trademark law was recently issued in Saudi Arabia and it will become effective as of December 14, 2002. The implementing regulations of this law were also published last month.

Trademark Law
Saudi Arabia (KSA) has recently issued a new revised trademark law, effective from December 14, 2002. The effects of the newly incorporated amendments mainly concern the procedures for filing opposition actions and appeals against the refusal decisions, and in some cases the procedures for filing the trademark applications.

The old Trademark Law had established a special committee responsible for receiving the opposition actions filed against the accepted and published applications and the complaints filed against the refusal decisions.

The Oppositions and Complaints Committee (OCC) has now been cancelled according to the new law without providing a replacement.

The process became a little more complicated by directing almost all types of cases to the Court of First Instance instead of the OCC. The Board of Grievances, as the Court of First Instance in Saudi Arabia is called, is considered to be a special court responsible for commercial types of cases in general.

The new procedures for raising an opposition action are now the same as those of raising any other legal action before the court. This involves filing the opposition statement, replying to the opponents’ arguments, and attending the hearings before the court that will issue a decision based on the merits of the case.

This differs from the old practice where the opposition statement would be filed before the OCC, which notifies the applicant. If the applicant responds by filing a counter statement, the case will be reviewed and a decision shall be issued without holding any sessions or hearings. The OCC procedure of reviewing the files and issuing the decisions was a time consuming process. In some cases it took more than two years before a decision was made.

Therefore, referring the cases to the Board of Grievances is expected to expedite the issuance of a decision, although this step incorporates more procedures.

According to the new law, prosecuting cases before the Board of Grievances will be more costly since trademark litigation attorneys will spend more time and effort according to the new practice.

The only remaining procedural action under the new law is that complaints are filed against refusal decisions. Trademark applications are usually filed and then examined by the Trademark Registrar. The Registrar will check, among other criteria, if the trademark can be registered, and its similarity with previously filed trademark applications and registrations. If the Trademark Registrar finds that the trademark meets the criteria, he would accept the application and send it for publication in the Official Gazette.

Conversely, if the Trademark Registrar objects to any element of the trademark or finds that it is not registrable for any reason, he would issue a refusal decision. According to the old law, the applicant had thirty days for filing a complaint (appeal) against the refusal decision before the Oppositions and Complaints Committee.

If the OCC’s decision were not favorable, the applicant would be entitled to file another complaint before the Minister of Commerce. Again, if the Minister of Commerce issued a decision that was not in favor of accepting the trademark application, the applicant would be entitled to file an appeal against the Minister’s decision before the Board of Grievances within thirty days of being officially notified.

According to the new law, and upon the cancellation of the OCC, the applicant shall have sixty days to file a complaint directly to the Minister of Commerce. The sixty-day period starts from the date of being officially notified of the refusal decision. If the Minister’s decision is not favorable, the applicant can also appeal the decision before the Board of Grievances.

With regard to the registrability of trademarks, the new law has incorporated provisions that would affect the nature of trademarks that are allowed to proceed for registration. For example, the first Article of the new law states:

“In implementing the provisions of this law, trademarks shall be names of distinct shapes, signatures, words, letters, numbers, drawings, symbols, stamps, and prominent inscriptions or any other sign or combination thereof that are capable of being perceived by sight and suitable to distinguish industrial, commercial, vocational or agricultural products, or projects to exploit forests or natural resources or to indicate that the item on which the mark is carried 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 service.”

The amendment to the new law is underlined. It indicates that only typical trademarks printed on plain paper or prominent inscriptions are registrable as trademarks. Sounds, smells, and other types of trademarks that are registrable in most of the modern trademark laws are excluded from this law.

In comparison, the new Bahraini Trademark Law includes a similar provision but states very clearly that sounds and smells are registrable as trademarks, if they are capable of distinguishing goods or services and serve the purpose of a trademark. (A similar provision is not available in the new Saudi Trademark Law applying even more restrictions on what is considered to be a valid trademark compared to the old law).

According to the old law, renewals of registered trademarks were made within the last year of protection, i.e. before the expiry date, without any possibility of an extension of the registration period. The legal implication of such restriction was the automatic lapse of a trademark registration upon the expiration of the protection period without filing a renewal application. The recent amendments introduce the possibility of having the renewal application filed within the last year of protection period and six months thereafter. This is seen as more convenient to the trademark owners and attorneys since it allows more time for the renewal of registration without any fears of lapsing.

The new law includes several aspects corresponding to the KSA’s preparations to join the WTO. For example, it allows for members of international treaties, which the KSA has signed, to register their trademarks in the Kingdom. Unlike the old law, there are several references to citizens of countries that are members of international treaties.

In the new law, the concept of famous trademarks has also been clarified. The previous law prohibited the registration of trademarks identical or similar to internationally famous trademarks, even if not registered in KSA. The new law stated in Article (2) that:

“the following signs, emblems and flags shall not be considered or registered as trademark: trademarks identical or similar to trademarks famous in the Kingdom, even if not registered for similar goods or services, and trademarks identical or similar to trademarks famous and registered in the Kingdom for goods or services that are not similar provided that the interests of the proprietor of the famous trademark are adversely affected.”

The new provision has specifically stated that the criterion for the famous trademark is that it should be famous in Saudi Arabia and not necessarily an internationally famous trademark. Furthermore, the new provision stated that if the famous trademark is not registered, another similar trademark should be denied registration only if it is intended to be registered for similar goods or services.

On the other hand, the registration of a famous trademark in the Kingdom may prevent the registration of similar trademarks for goods or services that are not similar, provided that the proprietors prove that their interests will be adversely affected by this latter registration.

It is not clear as yet what type of evidence the court will request in order to meet this requirement, and whether a mere confusing similarity with the registered famous trademark serves as sufficient evidence on the adverse effect.

Provisions related to counterfeit and infringement cases have been changed by amending the amount of the fines imposed on the persons committing any of the crimes stated in the law. The punishment for infringement actions is a maximum sentence of one year in prison and/or a fine of not less than SR 50,000.00 (US$ 13,333.00) and not more than SR 1,000,000.00 (US$ 266,666.00).

Responsibility for prosecuting violations of the Trademark Law has been shifted to the General Public Attorney, while under the old law it was the Minister of Commerce who decided which legal entity was authorized to prosecute such violations.

All the official fees for filing trademark applications and the other official fees before the Trademark Office remain the same without any changes.

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