Although it is not mandatory to register a trademark, upon registration, a set of civil or criminal protection packages shall govern its use and the rights or advantages will rise thereunder. The trademark registerer is privileged with full authority to use it in returns or for free.
After fulfilling the registration prerequisites, the registration process shall follow the below basic steps:
Stage 1: Once you apply for the trademark registration at the Saudi Authority for Intellectual Property, the application will be reviewed and verified according to different verification methods applicable all over the world. However, the Kingdom relies on the feedforward control system to conduct formal and substantive examination of trademarks before filing the request.
Stage 2: After examining the application, a competent authority may refuse the submission, grant protection fully, or limit the grant after fulfilling specified conditions. If the conditions fail to be met, the authority will send an “irregularity notice.” The registerer shall then maintain the rights to oppose the refusal decision issued by the authority. In the event of a failed trademark registration due to not meeting the conditions, or if the window to appeal has passed, the request shall be automatically canceled. If the conditions are met, then the authority will provide an initial registration approval until finally published in the intellectual property newspaper (IPN) issued on April 11th, 2021.
The purpose of publishing a trademark is to provide an opportunity to object to or cancel the trademark registration. Although the Gulf Trademark law did not specify a list of persons entitled to object, it addresses conflicts of interest. Everyone who conflicts has the right to oppose the trademark and request the cancellation of its registration.
Post-examination approval issued by the competent authority is not the final step as any concerned person may, within sixty days from the date of publication in the Aamaly newspaper, object to the registration of a mark. Such objection shall be submitted to the competent authority in writing. The competent authority shall notify the registration applicant with a copy of the objection to his application within thirty days from receipt of such application. The registration applicant shall reply to the objection in writing within sixty days of notification of objection. If the registerer’s protestation to the objecting party is not submitted within the appropriate time window, the applicant is deemed to have forfeited their trademark submission request. The competent authority shall decide on the registration application within ninety days and notify the disputed parties with its decision supported by justifications or restrictions.
The applicant may challenge the competent authority’s verdict before the court of jurisdiction within (30) days from the date of the notice. The objection to the decision shall not result in the suspension of the registration procedures unless otherwise decided by the court of jurisdiction.
After the publication of trademark registration in the INP, no appeal during the window, and without rejection of objection to the trademark, the final stage of the trademark registration procedure is finalized. It will be officially registered in the Trademark Registry.
If there is sufficient evidence, as apparent, proving that the new mark is imitated or improperly bearing a mark similar to a registered trademark in a manner that could cause confusion to the public, then the owner of the registered mark has the right to request the cancellation of the registration of the new trademark that has been registered improperly. The Gulf Trademark System permits the individual who registered the mark to request from the Commercial Court to cancel this registration within five years of the registration date. If it is established that the use of such mark is approved, either explicitly or implicitly, by the owner of the mark, the mark shall remain without judgment as per Article No. (16/6) of the Law of Commercial Courts issued by the council of ministers’ decision No. (511) dated 8/14/1441 A.H. and ratified by Royal Decree No. (M/93) on 15/08/1441 A.H.
The difference between objection and cancellation of trademarks remains in that the cancellation takes place after the trademark is registered and aims to request cancellation of the mark from the register. Meanwhile, the objection aims to prevent the final registration of the trademark; that is, it occurs before the final registration of the trademark and after its publication.
Razan Saleh Al-Dossary
Dr. Mohammed Al Muhanna & Partners Lawyers and Consultants team will receive your inquiries related to the above in particular and provide all practical and clear legal advice according to professional standards.