Trademarks
Our Lawyers in our Intellectual Property Team have broad experience in all aspects of the Trademark Law and technical issues involved in brand protection. We do counseling, management, and litigation and other proceedings before the Board of Grievances. We have represented well-known national and international brand owners and have succeeded in canceling wrongly registered trademarks.
Trademarks Filing requirements:
- Copy of the Trademark Logo in JPG form between 200 – 400 pixels in high resolution.
- Applicant’s name, surname, address, nationality, and trade name, if any. If an applicant is a corporate person, its name, head office address, and nationality shall be stated.
- Description, the meaning/translation of the trademark sought to be registered.
- Goods or services in specific “Class Order” in respect of which, application of the trademark is sought, and classes thereof.
- A Power of Attorney issued from the Ministry of Justice KSA for local Applicant. A Power of Attorney notarized and legalized up to the Saudi Arabian Consulate for an international applicant.
Trademark filing process in KSA
The application is filed through the on-line system of the Ministry of Commerce and Investments (MoCI). It is examined to its conformity with the applicable laws and availability against prior application or registration. The duration for filing an application up to receiving the Registration Certificate is approximately 4 months.
After the acceptance of the Trademark or service mark, it will be published in the (MoCI) official Gazette. If there is no opposition filed by third parties, within the term of the 60 days period the application will mature into registration and a certificate will be issued accordingly. The publication is an invitation to any interested party to oppose the registration of trademarks or service marks conflicting with their interests. If opposition to the registration of a trademark or service mark occurs within the term of the opposition period, the case is then referred to the Oppositions and Complaints Committee and, if the decision is not satisfactory to either party, they may file an appeal within 30 days before the Board of Grievances (First Instance Court).
The Trademark office follows the Nice International Classification of Goods and Services – Tenth Edition.
The duration of 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 from the Gregorian calendar. The registration is renewable for similar periods of 10 years each.
FAQ
Q – After we filed a new trademark application in Saudi Arabia, is there any way or procedure for us to withdraw or delete partial items of goods or services designated by the new trademark application?
A – If you received the Trademark Registration Certificate, you can delete partial items of goods and services if the trademark has been filed for specific goods and services, however, if the trademark has been filed on general class, then you cannot because it will affect substantially the character of the trademark.
Q – What if my trademark is canceled?
A – If a trademark is canceled, it shall not be registered for the benefit of others for the same products, services, or for similar products or services except after the elapse of three years from the date of cancellation unless the decision of cancellation specified a shorter period.
Cancellation of trademark registration shall be publicized in accordance with the procedures and conditions provided for in the Implementing Regulations. The cancellation shall be effective from the date of a judgment by the Board of Grievances, from the date of expiration of the protection period, or from the date on which the prohibition decision was issued.
Patent in KSA
The firm handles various local and regional patents registration to the Saudi Authority for Intellectual Property (SAIP).
An applicant seeking protection within the borders of Saudi Arabia may file a patent application with the Saudi Authority for Intellectual Property. The application once prosecuted and granted will provide the holder with patent rights in Saudi Arabia.
Saudi Arabia is also a contracting member of the Patent Cooperation Treaty (PCT) which makes it possible to designate and file national phase applications in Saudi Arabia.
Patents Filing Requirements in Saudi Arabia
- A Power of Attorney executed in the name of the applicant duly notarized and legalized up to the Saudi Arabian consulate.
- A notarized and legalized deed of assignment, if any, executed by the inventor(s), assigning the patent rights to the applicant.
- Two copies of the specification in English and Arabic prepared strictly in the following order:
“The abstract (not exceeding one page), shall be typed on the separate sheet with the title of the invention
showing in the top middle of the page. Title should not exceed ten words and must be precise.”
- The specification should contain the following data and be described under a separate heading.
a. Background of the invention.
b. Summary description of the invention.
c. Brief description of the drawings, if any.
d. Full description of the invention.
e. Claims.
5. Two sets of formal drawings. One set of them should be without numerals.
6. Copy of priority document, if priority is claimed, must be certified and submitted within 12 months from priority
date with the following general information:
a) Name(s) and address(es) of the inventor(s);
b) A list of the home and/or foreign applications stating:
i. Whether or not the application has been submitted before to the Saudi Patent Office.
ii. Whether or not the invention has been filed in other countries (including the home country); if yes, provide
the following:
1. Country of filing.
2. Application number(s) and filing date(s).
3. Publication number (if any) and date of publication in case of publication of the invention in the home
country or in any foreign country or the number and date of the letters patent, if it has been granted in
any foreign country or the number and date of the letters patent if it have been granted in any country.
4. Class of the patent in accordance with international classification (if known).
GCC PATENT
The applicant who is seeking wider protection in the Middle East region can make an application for a regional patent application through the Gulf Cooperation Council Patent Office (GCCPO). The application, upon grant, provides the holder with patent rights in all of the GCC member states. The member states are Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates.
The applications filed through the GCCPO are governed by the GCC patent laws, and likewise, applications filed for protection in Saudi Arabia are governed by the SAIP’s patent laws, and subject to the amendments discussed above.
The requirements for filing a new GCC patent application:
- Documents that must be filed along with the application:
Specifications, Claims, Drawings (if any) and Abstract of the invention in English and Arabic. - Documents that may be filed belatedly within 90 days from the filing date:
- A Power of Attorney, executed by the applicant, duly notarized and legalized up to the consulate of any GCC state.
- An Extract from the Commercial Register or a certified copy of the Certificate of Incorporation of the applicant if the applicant is a corporate body, duly legalized up to the consulate of any GCC state.
- A Deed of Assignment, if the applicant is not the inventor, executed by the inventor(s), assigning their patent rights to the applicant, also notarized and legalized up to consulate of any GCC state.
- A Certified copy of the priority document, if the applicant is claiming priority on the basis of a foreign application. If the documents are not in English, a simple English translation is required.
- Two copies of the specification and claims in English and Arabic, prepared strictly in the following order:
- Title of the invention
- Technical field
- Technical background
- Disclosure of the invention
- Description of the drawings,
- Detailed description of the invention
- Method of the industrial application of the invention,
- Claims,
- Abstract of the invention,
- Drawings, if any
- The Arabic text of the specification and claims on a diskette as MS Word format.
A GCC patent application can be filed with the English text of the specification and claims together with the Arabic translation thereof. Documents 1,2,3 and 4 above should be submitted to the GCC Patent Office within 3 months from the date of filing the application. Failure to meet the deadline will cause the application to lapse as no extension is granted by the GCC Patent Office.
GUIDELINES FOR FILING A PATENT TO THE GCC COUNTRIES
First: General Guidelines
- A request should include (Form (1) Patent Request) characteristics of the invention, and all other relevant enclosures.
- Requests and all enclosures should be in the Arabic language.
- The title of the invention should be in conformity with the terms specified in the terms of filling out the applications, and should not differ from the characteristics of the invention specified.
- All submitted documentation should be in the original copy, or copies authenticated by the proper authorities.
- Advance payment is required for application made by individuals and or businesses to the GCC Patent Office in the form of cheque deposited in the bank an account of the office or by one of the bank in GCC countries or through bank transfer.
- All pages should be numbered, using separate groups of numbers for the following:
- Request, Annex, Abstract, detailed description, claims, Explanatory graphs, and other attachments.
Second: Detailed Description
- The Detailed Description should start by the Title of the Invention, and the following should be observed:
- Identify the technical field relevant to the invention.
- Indication of prior art/state of art, that the applicant should be aware of which might be useful in understanding, examining and searching invention. It is also recommended to mention the documents relevant to the field.
- Briefly describing figures in the drawings if any.
- Usage of simple, comprehensible, clear and thorough language in introducing the invention to enable individuals of average skills in the field to evaluate the invention and put it in hand, in addition to the indication of complications of the invention, if any.
- Provision of a brief description of illustrative drawings, if any,
- Explanation of the best approaches reached by the applicant to implement the invention, by giving examples when needed referring to drawings if any.
Third: Abstract
- The Abstract should not exceed half a page, and the maximum length should be one page.
- In cases where illustrative drawings are enclosed, the number of the figure representing the invention, in general, should be pointed out at the end of the abstract.
- If the contents of the drawing specified in the previous item are referred to in the abstract, and the drawing had any numbers or letters used to distinguish these contents, the same numbers or letters should be indicated between brackets within the abstract.
- The abstract should contain briefing of what is revealed in the description, claims, and graphs, and should indicate the technical field of the invention as well as the main aspects of utilization of the invention and, if necessary, the technical formula should be given to better distinguish the invention in relation to other formulas indicated in the request. The applicant should enclose the best graphs with the abstract. It should be taken into consideration that abstracts do not interpret the range of protection.
- The mention of potential future significance, values or characteristics of the invention should be avoided.
- Clear explanation of the industrial application of the invention, method of manufacturing and utilization or just the utilization whenever possible, as well as approached outcomes supported by examples and statistics whenever possible.
- The previous parts are to be in sequential order under the following titles:
- Title of the invention – technical field – technical background disclosed of the invention – description of figures and drawings – methods of implementing the invention – method of industrially applying the invention.
Fourth: Guidelines for standards
- Standards should respectively include the following:
- Full description, claims, explanatory diagrams and abstract.
- Standards should be written in Arabic, enclosure of English translation is preferable.
- Each section should start on a new page, and the title (apart from graphs) should appear in the middle of the top line and should be underlined. Standards sheets (apart from graphs) should be numbered, the page number should be in the middle of the line below the top margin (not within the margin).
- The abstract and the detailed description should start with title of the invention.
- Standards should be submitted in the original copies of which copies can be made by different copying media.
- A white, flexible, strong and soft heavy-duty paper of A4 size should be used.
- Sheets should be neat, free of scratch marks, alterations and carbon stains.
- Typewriters or similar typing machines should typewrite texts.
- Only one side of the paper should be used.
- A space of 1 cm should be left between lines.
- Margins in all pages should be not less than the following:
- Top and right 2.5 cm
- Bottom and left 2cm
- All margins should be left blank
- Letters should be approximately 3.2mm size, dark, clear and easy to distinguish.
- Actual lines of each page (not counting blank spaces between the lines) should be numbered; numbering the fifth line, the tenth, etc. should suffice. The numbering should be on left side of the right margin, except for the “Claims” where lines of each element is numbered separately.
- Abstract, Detailed Description and Claims may contain mathematical and chemical formulas, phrases and scientific phrases in English, but none should contain explanatory graphs. Tables, if any, should come under a detailed description of standards.
- Metric system should be used in measurements and temperatures should be in centigrade.
- It is necessary that all drawings and explanatory graphs enclosed should help complete and clear understanding of the invention.
