Implementing Regulations of Trademarks Law

Application for Registration of Trademarks

Article 1:

The application for registration of trademarks shall be filed in the form prepared for that purpose with the Trademarks Office at the Ministry of Commerce by the party concerned, if domiciled in the Kingdom, or by an official agent domiciled in the Kingdom. The application must be limited to the registration of a single trademark in one class. The number of applications shall be equal to the number of the classes of goods or services in respect of which registration is sought, which are listed in Appendix (1) hereto, which is updated from time to time, pursuant to a Ministerial decision drafted by the Trademarks Office, whenever necessary, in accordance with the Nice International Classification of Goods and Services.

Article 2:

The application for registration shall include the following data:

(1)

(2)

(3)

(4)

(5)

(6)

Article 3:

The application for registration shall be accompanied with:

(1)

(2)

(3)

Article 4:

If the trademark sought to be registered contains one word or more written in a foreign language, the applicant must submit a certified Arabic translation of such word / words together with the phonetic transcription thereof.

Article 5

If the applicant for registration of a trademark, or his successor, wishes to enjoy the right of priority on account of a prior application filed in a country which is a member of a multilateral international treaty to which the Kingdom is a party, or a country which has reciprocal treatment with the Kingdom, he shall support his application with a statement showing the filing date of the prior application, its number and the country where it was filed. Further, the applicant shall file a copy of such prior application duly authenticated by the competent authority in the country of filing, and from the official authentication agencies, including the Saudi Ministry of Foreign Affairs, within six months from the date of the prior application for which he claims right of priority; otherwise, he will lose his right for such claim.

Article 6:

A special register entitled “Applications Filing Register” shall be maintained at the Trademarks Office in which the applications for registration shall be entered in serial numbers according to the filing dates of such applications. Said register shall include the following data:

(1)

(2)

(3)

(4)

(5)

Article 7:

The Trademarks Office shall examine the application for registration and compare the trademark sought to be registered with the other trademarks filed or registered on a prior date. It shall decide on the application, within sixty days from the application filing date, either by accepting it, if it meets the conditions and procedures stipulated in the Law and the Implementing Regulations thereof, or by rejecting it, if it fails to meet such conditions and procedures. The Office shall notify the applicant of its decision in writing or require the applicant to meet the conditions or make the necessary amendments in order for the application to be accepted.

Article 8:

If a decision to reject the registration of a trademark is issued, the applicant may file a grievance against such decision with the Minister of Commerce within sixty days from the date on which the applicant is notified of such decision, or from the expiry date specified in Article (12) of this Law.

Article 9:

The appellant shall be notified of the Minister’s decision in writing. If the grievance is rejected, the party concerned may file an appeal with the Board of Grievances within thirty days from the date of receiving a notice thereof.

Article 10:

If a trademark is accepted, the Trademarks Office shall prepare a notice of the trademark including the following data:

(1)

(2)

(3)

The applicant shall receive the notice within ninety days from the date of the decision accepting the registration or from the date of the Minister’s decision accepting the appeal. The applicant shall publish the said notice in the Official Gazette at his own expense and shall, within six months from date of receiving said notice, provide the Office with a copy of the newspaper in which said notice has been published, failing which the application shall be deemed as relinquished.

Article 11:

Any party with interest may file with the Board of Grievances an objection against acceptance of the registration of a trademark, within ninety days from the date of publication of the notice in the Official Gazette, provided that a notice thereof shall be filed with the Trademarks Office by the appellant, along with depositing a copy of such objection within the same period. The Office shall not take any further action, pending the issuance by the Board of Grievances of the final decision determining said objection.

Article 12:

As a party with interest, an applicant for registration shall be deemed, before the Board of Grievances, a principal party to the objection action brought against the acceptance of the registration of a trademark and shall be confronted with said objection, and his arguments shall be heard.

Article 13:

The applicant for registration must pay the trademark registration fees as prescribed in Article (41) of the Law within ninety days from the date of issuance of the final decision accepting the registration of the trademark. The decision accepting registration shall be final upon the elapse of ninety days from the date of publication of the notice of the trademark in the Official Gazette without any objection against registration being filed or upon the issuance of a final judgment in this regard by the Board of Grievances, failing which the application shall be considered null and void.

Article 14:

A register entitled “Trademarks Register” shall be maintained at the Ministry of Commerce wherein shall be entered the following data:

(1)

(2)

(3)

(4)

(5)

(6)

(7)

Article 15:

The Trademarks Office shall register the trademark in the said Trademarks Register and shall give the trademark owner a certificate of registration including the following data:

(1)

(2)

(3)

(4)

(5)

(6)

Renewal of Registration

Article 16:

The owner of a trademark who desires to renew registration of his trademark may file with the Trademarks Office an application to that effect during the final year of the trademark protection period as well as during a period of six months following said protection period. The renewal application shall be accompanied with the original certificate of registration and a proof of payment of the renewal fees prescribed in Article (41) of the Law. Applications submitted after said deadline or without payment of said fees shall be disregarded.

Article 17:

Renewal applications accepted in terms of form shall be approved without a re-examination. The Trademarks Office shall prepare a notice of renewal including the following data:

(1)

(2)

(3)

The owner of a trademark shall publish said notice of renewal in the Official Gazette at his own expense, and shall provide the Office with a copy of the newspaper in which said notice of renewal has been published in order for it to record the renewal in the Register and on the original certificate of registration.

Trademarks Ownership Transfer and Pledge

Article 18:

A trademark may be disposed of by any act of ownership transfer, and it may be pledged in accordance with the rules established by law provided that such acts be publicized and recorded in the Register, pursuant to the procedures and situations stipulated in the following articles.

Article 19:

Trademark ownership transfer shall be recorded in the Trademarks Register based on an application filed with the Trademarks Office by the transferee, or the transferee’s agent, accompanied with the original certificate of registration and the documents proving such transfer and including the following data:

(1)

(2)

(3)

(4)

(5)

Article 20:

The Trademarks Office shall prepare a notice of the trademark ownership transfer including the following data:

(1)

(2)

(3)

(4)

The applicant shall publish said notice in the Official Gazette at his expense, and he shall provide the Office with a copy of the newspaper in which said notice has been published.

Article 21:

The Office shall record the trademark ownership transfer in the Trademarks Register and on the original certificate of registration along with the name and address of the new owner, the reason for transfer and date of recording it.

Article 22:

A trademark pledge shall be recorded in the Register in accordance with the same procedures and situations pertaining to trademarks ownership transfer. The notice of pledge to be published shall include the same specifications stipulated in Article (19) hereof.

Article 23:

A trademark pledge shall be removed from the Trademarks Register based on an application filed in the Trademarks Office by the owner of the trademark accompanied with the original certificate of registration and the documents proving that said pledge has been removed.

The applicant shall publish said removal in the Official Gazette at his expense in accordance with the notice prepared by the Office in this regard. The applicant shall provide the Office with a copy of the newspaper in which said notice of removal has been published in order to record said removal in the Register and on the original certificate.

Cancellation of Registration

Article 24:

A trademark registration may be cancelled in accordance with the provisions stipulated in Articles (25) and (26) of this Law. The Office shall record the cancellation of registration in the Trademarks Register and shall publish the same in the Official Gazette, provided that the notice shall include the following data:

(1)

(2)

(3)

(4)

Article 25:

Apart from the situations stipulated in Article (26) of the Law, the Board of Grievances shall have jurisdiction to determine all petitions for cancellation of registration.

License Contracts

Article 26:

If the owner of a trademark grants a license to any natural or corporate person to use the trademark for all or some of the goods or services in respect of which the trademark is registered, the license contract shall be in writing and the signatures, finger prints or stamps of the contracting parties shall be authenticated by a notary public, as to license contracts concluded in the Kingdom, or by the official authentication bodies, including the Saudi Ministry of Foreign Affairs, in accordance with the relevant applicable rules as to license contracts concluded outside the Kingdom.

Article 27:

The Office shall record the license to use the trademark in the Register and on the original certificate of trademark registration. The license contract shall be announced pursuant to a notice prepared by the Trademarks Office including the following data:

(1)

(2)

(3)

(4)

The applicant shall publish said notice in the Official Gazette at his expense and provide the Office with a copy of the newspaper in which said notice has been published.

Article 28:

The license registration shall be cancelled based on a request filed with the Trademarks Office by the owner of the trademark or the licensee, accompanied with proof that said license has been terminated or cancelled.

The Office shall notify the other party in writing of the request to cancel the registration. Said party may file an objection with the Board of Grievances within thirty days from the date on which he has been notified of the cancellation petition and shall deposit in the Trademarks Office a copy of said objection, together with a proof that the same has been filed, whereupon the Office shall suspend the petition for cancellation pending an agreement by the two parties or a final judgment rendered by the Board of Grievances regarding the said objection.

Article 29:

In case there has been no objection to the cancellation of the license or, in case a final decision pertaining to the objection has been issued by the Board of Grievances, the Office shall prepare the necessary notice.

The cancellation petitioner shall publish the said notice in the Official Gazette at his expense and shall provide the Office with a copy of the newspaper in which the notice has been published, in order for it to record the cancellation of the license in the Register and on the original certificate.

Collective Trademarks

Article 30:

Registration of collective trademarks stipulated in Chapter Seven of Trademarks Law are registered in respect of economical enterprises engaged in a certain type of goods or services and integrated in one general federation, association or organization whose object is to serve the common interests of said enterprises without itself being engaged in the production process.

Article 31:

The application for registration of a collective trademark shall be filed with the Trademarks Office on the form specially prepared for that purpose including the following:

(a)

(b)

(c)

Provisional Protection

of Trademarks Used in Exhibitions

Article 32:

If the owner of a trademark desires to secure provisional protection to his trademark which is used on products or services displayed in national or international exhibitions held in the Kingdom or in any other country having reciprocal treatment with the Kingdom, said owner shall notify the Trademarks Office at the Ministry of Commerce of such desire, not less than one month before the opening of said exhibition. Said notification shall be submitted on the form designated for that purpose including four reproductions of the trademark and proof of payment of the prescribed fee in accordance with Article (41) of the Law.

Article 33:

Applications shall be recorded in a special register including the following data:

(1)

(2)

(3)

(4)

Article 34:

The Office shall issue the trademark a certificate of provisional protection for a period not exceeding six months from the opening date of said exhibition.

Article 35:

The certificate of provisional protection stipulated in the preceding Article may not be issued except for exhibitions in respect of which a decision has been issued by the Minister of Commerce.

General Provisions

Article 36:

The officials referred to in Article (56) of the Trademarks Law who are appointed pursuant to a decision by the Minister of Commerce shall jointly or severally record all violations to the provisions of the Law and its Implementing Regulation hereof, regardless of whether such violations came into their knowledge through a complaint filed by a certain person or in the course of an inspection visit made by them to the market places or shops. A record of the occurrence of such violation shall be made and signed by the writer thereof as well as the owner of the shop or his substitute at the time said violation was recorded.

Article 37:

For the purpose of performing the tasks entrusted to them, the officials referred to in the preceding Article may do the following:

(a)

(b)

(c)

Article 38:

After investigating the violator, all violation papers, along with a specimen of the violation subject matter, shall be referred by the Deputy Minster for Internal Trade to the Bureau of Investigation and Public Prosecution, with a request to initiate a penal action before the Board of Grievances in accordance with Article (54) of the Law.

Article 39:

Officials appointed pursuant to a decision by the Minister of Commerce shall act as judicial investigation and recording officers and shall enforce the orders and judgments of the Board of Grievances in accordance with Articles (49) and (52) of this Law. They may, for this purpose, seek assistance from the police departments.

Article 40:

The Ministry of Commerce shall draft a notice of the judgment rendered against a repeating violator, in accordance with Article (45) of this Law, and it shall be published at the expense of the violator in a distinct place in two widely distributed newspapers, one of which is published in the province where the violator’s head office is located, if any.

Article 41:

If seizure is conducted pursuant to an order issued in accordance with the provisions of Article (49) of this Law, the party on whom seizure is effected may contest the adequacy of the security provided by the seizer, by virtue of a petition filed with the Board of Grievances within ten days from date of such seizure.

Appendix No. 1

Classes of Goods and Services

Class 1

Chemicals used in industry, research, scientific experiments, photography, agriculture, horticulture, and forestry; unprocessed artificial resins, unprocessed plastics; manures (natural or artificial); fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants; mordants; raw natural resins; metals in foil or powder form for painters, decorators, printers and artists.

Class 3

Bleaching preparations and other substances for laundering and ironing use; cleaning, polishing, scouring, and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices.

Class 4

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; diapers for enuresis patients, feminine sanitary pads.

Class 6

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; nails; articles made or repaired by locksmiths.

Class 7

Machines and machine tools; motors and engines ( except for land vehicles ); machine coupling and transmission components ( except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; washing machines and equipment; generators; electric blenders, mincers, juicers and grinders for household use, cleaning machines, sewing machines.

Class 8

Hand tools and implements (hand-operated); cutlery (forks, spoons and knives), side arms; shaving tools, razors; non-electric can openers.

Class 9

Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for connecting, switching, transmission, condensing, regulating and controlling power; apparatus for recording, transmission or reproduction of sound and images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines; data processing equipment and computers; fire-extinguishing apparatus; spectacles; televisions.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials;

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12

Vehicles; apparatus for locomotion by land, air or water.

Class 13

Firearms, ammunition and projectiles; explosives; fireworks.

Class 14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; homological and chronometric instruments.

Class 15

Musical instruments.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes ); playing cards; printers’ type; printing blocks; baby diapers made of paper and cellulose; waste bags.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 19

Building materials (non- metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; natural and artificial stone; cement, lime, gypsum; pipes made of bitumen and cement.

Class 20

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21

Household and kitchen utensils and containers (not of precious metal or coated therewith; combs and sponges; brushes ( except paint brushes ); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22

Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23

Yarn and threads for textile use.

Class 24

Textiles and textile goods not included in other classes; bed and table cover.

Class 25

Clothing, footwear, headgear.

Class 26

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28

Games and playthings; gymnastic and sporting articles not included in other classes;

Class 29

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; preserved foods; pickles.

Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces ( condiments ); spices; macaroni; ice.

Class 31

Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt, wheat.

Class 32

Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages, beer (malt drink).

Class 33

Removed.

Class 34

Tobacco; smokers’ articles; matches.

Second- Services

Class 35

Advertising; business management, business administration; office functions;

Class 36

Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37

Construction of buildings, roads, bridges and dams; painters and plumbers services; repair and maintenance services; installation services; hiring of tools or building materials.

Class 38

Telecommunications; diffusion of radio or television programmes.

Class 39

Transport; packaging and storage of goods; travel arrangements.

Class 40

Treatment of materials; cutting out and sewing of clothes.

Class 41

Education and instruction; providing of training; entertainment; sporting and cultural activities.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Class 43

Services for providing food and drink; temporary accommodation.

Class 44

Medical services; veterinary services; hygienic and beauty care; agriculture, horticulture and forestry services; barbershops services.

Class 45

Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.