Saudi Arabia adopts online Trademark system

Shernaz DeSa

December 2014 – January 2015

The following points are to be noted with the new on-line system:

  • All applicants need to provide a direct legalised Power of Attorney to the representative in Saudi Arabia.  Powers of Attorney must reflect the full address of the trademark applicant or else the document will not be accepted.
  • Trademark owners are no longer permitted to have more than one agent representing them in the Kingdom and a valid legalised Power of Attorney needs to be uploaded on the system.  Prior to uploading the Power of Attorney, the original needs to be approved by the Trademark Office. In the event that the Trademark Office has more than one power of attorney submitted for a trademark owner, it will only accept the document of the most recent date (i.e. the date of legalisation)..
  • All trademark applications have to be filed on-line and fees are now payable directly on the website.
  • If priority is to be claimed, a certified copy of the priority document must be filed within three months of the filing date; photocopies are not accepted except for priorities based on Community Trademark (CTM) applications.
  • Publications now appear on the website of the Ministry of Commerce.
  • Issuance of signed registration certificates will also be possible through the on-line system.

These new procedures are a welcome change and will reduce the whole registration process to approximately six months.

Unfortunately there are some downsides to the system which will put limitations on trademark owners:

  • Trademark owners will not have the flexibility of using more than one trademark agent in Saudi Arabia and should they wish to change agents, a change of agent fee will now be payable (however this fee is still to be decided).
  • The list of goods and services covered by trademarks will be limited in the sense that trademark owners can now only use wordings as stated in the Nice Classification of Goods and Services.  This restriction is due to the fact that the on-line system is linked to the Nice Classification and only permits goods listed under the Classification to be used.  Therefore priority applications may now differ to the trademark of the country of origin.  To obtain maximum protection it is recommended to use the class headings.