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SAUDI ARABIA TRADEMARKS - JAH CO.IP
SAUDI ARABIA TRADEMARKS

 

Trademark Requirements:

A power of attorney filled up with the full name and address of the applicant company duly legalized up to the Saudi Arabian Consulate.

Certified copy of the priority document in case priority is to be claimed.

 

It is permitted under the practice of the Saudi Trademark Registrar to file trademark applications and obtain filing number and date as well as the official filing certificate with a simple copy of the legalized power of attorney the original of which can be submitted at a later stage after filing for verification with no limit and at no additional cost.

 

Time necessary from filing to registration for smooth application is 4 to 5 months.

Saudi Arabia follows single class application system.

 

Time frame for conducting trademark search is 20 to 3 working days.

 

It is possible to conduct a search by the name of the applicant/registrant company which will reveal all and every mark and its complete details in the name of the client in all classes.  No need for a Power of Attorney to conduct an applicant/registrant search.  The time frame depends on the volume of the marks revealed by the search minimum 5-7 working days.

 

Kindly be advised that the Saudi Trademarks Directorate has issued a new verbal circular to all trademarks agents that powers of attorney for Chinese applicants legalized at the Saudi Consulates in China must be super legalized at the Saudi Ministry of Foreign Affairs. The procedure has been applied as of 20 October 2014 and the cost of this super legalization is US$ 40; USD 15 being actual cost and USD 25 are attorney charges for performing the legalization; thus for filing new trademark applications the original power of attorney should be present at the time of filing so as to have it locally attested by the Saudi Ministry of Foreign Affairs which will results in some delay in processing the filing of the mark.

 

Filing up to Examination : 1- week

Examination up to Publication : 2-5 weeks

Opposition Period : 90 days from publication date

End of Opposition Period up to Issuance of Registration Certificate : 1 year from the date of publication

Total Estimated Time Frame : 6-8 months

 

Trademark renewal:

A power of attorney duly legalized up to the Saudi Arabian Consulate.

The relevant original registration certificate, for endorsement purposes. This document is not required if the registration certificate is electronic issued under the new electronic system

 

Time frame from filing a trademark renewal application up till issuance of the renewal certificate:

Filing up to Examination : 2-3 days

Examination up to Publication if exits : 2 – 5 days

Publication to Issuance of Renewal Certificate : 1 day, provided that we have the original CR.

Total Estimated Time Frame : 1-2 weeks

 

Change of name:

A power of attorney in the new name duly legalized up to the Saudi Arabian Consulate.

A certificate of change of name duly legalized up to the Saudi Arabian Consulate.

Relevant original registration certificate for endorsement purposes. This document is not required if the registration certificate is electronic issued under the new electronic system.

 

Change of address:

A power of attorney in the new address duly legalized up to the Saudi Arabian Consulate.

Relevant original registration certificate for endorsement purposes. This document is not required if the registration certificate is electronic issued under the new electronic system.

 

Time frame needed for completing a change of name and/or address recordal:

Filing up to Examination : 2-3 days

Examination up to Publication if exits : No publication

Publication to Issuance of Certificate of change and/or name Recordal : 1 day, provided that we have the original CR.

Total Estimated Time Frame : 1 week

 

Assignment/ merger:

Power of attorney in the name of the assignee duly legalized up to the Saudi Arabia Consulate.

Assignment document or merger duly legalized up to the Saudi Arabian Consulate.

Relevant original registration certificate for endorsement purposes. This document is not required if the registration certificate is electronic issued under the new electronic system.

 

Time frame needed for completing the recordal of an assignment/merger recordal:

Filing up to Examination : 1 – 3 Months

Examination up to Publication : 1 Month

Publication to Issuance of Assignment Certificate : 4 Month

Total Estimated Time Frame : 6 – 7 Months

 

License Agreement:

A power of attorney in the name of the licensee company duly legalized up to the Saudi Arabian Consulate.

License agreement duly legalized up to the Saudi Arabian Consulate.

Relevant original registration certificate for endorsement purposes. This document is not required if the registration certificate is electronic issued under the new electronic system.

 

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 license, unless expressly provided for in the sale agreement or in the license 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 license agreement.  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 license 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 license agreement.

 

Time frame needed for completing a registered user/license agreement from submitting the recordal application till issuance of the user/license agreement certificate:

Filing up to Examination : 2-3 days

Examination up to Publication : 7 days

Total Estimated Time Frame till issuance of the user/license agreement certificate : 1-2 weeks

 

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.

 

Trademark Oppositions:

A power of attorney duly legalized up to the Saudi Arabian Consulate.  A simple copy of the legalized power of attorney should be submitted at the time of lodging the opposition writ.

A simple copy of the certificate of incorporation or extract from the commercial register of the opponent.

An excerpt of the trademark to be opposed or full details thereof including the gazette number and date.

 

The time frame for preparing and filing an opposition or counterstatement with the Administrative Court is 3-4 days.

 

Opposition procedures:

Interested parties shall have the right to oppose the trademarks application within ninety days after the date of publication.  The opposition shall be submitted before the Board of Grievances (First Instance Court).  Extension of time for oppositions/counter oppositions or for responding to office actions is not possible and the latter shall notify the Trademarks Office of the opposition and the date set out by them for hearing them and subsequently hearing sessions will be conducted to discuss the opposition; the applicant can also participate in the hearing sessions and submit evidentiary documents.

 

 

Additional Time Frames:

 

The time frame for preparing and filing an infringement or cancellation action with the Administrative Court is 3-4 days. The infringement or cancellation action usually takes 1.5 years for the complete infringement or cancellation procedure.

 

60 days – filing an appeal to the Minister of Commerce and Industry against the rejection of a trademark application by the Saudi TMO.

 

30 days – filing an appeal to the Administrative Court against the rejection of the appeal filed to the Minister of Commerce and Industry against the rejection of a trademark application by the Saudi TMO.

 

30 days – filing an appeal to the Appellate Court against an adverse decision in an Opposition and Cancellation case.