T1: How long will it take to conduct a trademark search?
In normal cases, it will take about 4-7 working days.
T2: : Does Saudi Arabia use the international classification?
T3: Are there any goods or services for which the mark can not be registered?
Alcoholic goods in classes 32 and 33 and “retail and wholesale store services” in classes 35 and 42.
T4: Does the specification of goods in any class limit the protection to the specified goods, or does it give additional protection to all the goods in the class?
The Trademark Office will not allow the registration of the same mark in the same class by a different party, even if the goods (falling within the same class) are different. In that sense, wider protection can be afforded to all goods in that class. But in case of infringement or other disputes, the protection shall be confined to the specified goods.
T5: Can a trademark be registered in the name of more than one applicant ( i.e. joint application) ? If so, what are its requirements?
Yes and the required documents are:
. Separate power of attorneys executed by the each of the applicants duly notarized and legalized up to the Saudi Arabian Consulate.
. A partnership agreement (duly notarized and legalized up to the Saudi Arabian Consulate) between the applicants stating that who will be the beneficial owner of the trademark in case of dispute is to be submitted.
A partnership agreement (duly notarized and legalized up to the Saudi Arabian Consulate) between the applicants stating that who will be the beneficial owner of the trademark in case of dispute is to be submitted.
T6: Can an application be filed without its complete documents? If yes, what is the deadline for filing the documents?
As per the law, an application can be filed only with the legalized power of attorney. As for priority document, it can be submitted within 6 months from the filing date of the corresponding foreign application.
T7:Can one application cover more than one class of goods or services?
No, a separate application is to be filed for each class of goods/services.
T8: May priority be claimed under the Paris Convention?
Saudi Arabia is not a member of any international convention; however, claiming priority based on reciprocity is possible.
T9: What is the term of protection of a trademark? From what date is it calculated?
The duration for a trademark or a service mark registration is for 10 years from the filing date according to the Hijri (Islamic) calendar (equivalent to approximately 9 years and 8 months) and the registration is renewable for similar periods of 10 Hijri years each.
T10:: Is marking compulsory?
T11:If a trademark that was not renewed in due time is registered by another company, can the original owner oppose the registration?
A trademark that is not renewed shall be canceled from the Trademark Register. The system will not allow the registration of the same trademark for the same products or services or for similar products or services for the benefit of other parties until three years have passed from the date of cancellation.
T12: If the trademark were filed incorrectly originally, what documentation would be required to amend the official register to show the correct details?
The documents, which are referring the details of corrections, such as the corrected power of attorney, amended form of trademark, etc.
T13: Is use required before registration or for maintaining the registration in force?
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 five years in succession, unless the owner of the mark presents a reasonable excuse to justify the non-use of the mark.
T14: Is use of the trademark on one item sufficient to maintain the protection for all the goods covered by the registration?
T15: What are the types of use required?
T16: Can the assignment of an application be recorded?
Yes, but it is not possible against pending applications.
T17: Is recording a license agreement compulsory? What are the consequences of non-recordal?
The recordal of a license agreement is not compulsory, but in order to be effective against third parties and to satisfy the user requirements it is recommended to record the license agreement at the Trademark Office.
Moreover, the use of a trademark by the licensee will be considered as a use by the owner and it will help the owner when filing a cancellation action by any interested party and for proceeding before the courts.
T18:: Can recordals such as change of name, address, merger, assignment, license, etc., be made against pending applications?
No, it is possible only after the trademarks mature into registration
T19: Can an assignment be made with or without the goodwill? What monetary consideration is to be mentioned as the value of the assignment? Is there any tax based on the value mentioned?
Yes. Any nominal consideration (say $. 10.00) may be indicated as the monetary consideration in the deed of assignment. No tax is levied depending on the value of the consideration.
T20: Can the trademark application be opposed and what is the opposition period?
A trademark application may be opposed upon publication in the Official Gazette. The opposition period is ninety days starting from the date of publication. No extension of time is allowed for filing the opposition statement.