Wednesday 8 January 2014

Changes to trade mark practice in Saudi Arabia

With thanks to good friends Kadasa & Partners news of further changes to the practice at the Trade Mark Office:

"Further to the recent changes to the Saudi trademark practice ensuing from the online filing application, we have been notified of the following new changes and developments:

1) Trademark Registration Certificates:

Registration certificates for electronically filed applications will be computer-generated. Traditional registration certificates have been prepared by trademark agents and submitted for signature, stamp and lodging a counterpart in the Trademark Office Records. As we have understood, traditional certificates will be processed for old pending applications filed before the online filing system.

2) Applicant Name and address

Arabic translation of non-Arab clients’ names, addresses and PoAs are no longer required. It has become possible to submit untranslated PoAs and register the name and address of the non-Arab applicants in English only on the online portal. The name and address in English characters will appear in the application form, the publication, and the registration certificate. It is noteworthy that the non-Arab applicants’ names and addresses will appear in English only in registration certificates corresponding to all applications, which have already been filed online when those applications were in Arabic translated names and addresses."

These continue a process of changes to administrative procedures at the Trade Mark Office (reported here and here).

This part of the Empty Quarter generally welcomes process improvements. The Saudi Trade Mark Office has significantly reduced the time taken to examine and approve new trade mark applications with some being examined and published within a week of filing, which is to be applauded. However, where this is accompanied by overly prescriptive requirements the benefits to rights holders and consumers can be reduced. There have been a number examples of amendments being required by the Trade Mark Office to trade mark applications after the end of the opposition period so that the applications comply with the subsequent specification requirements. These retrospective amendments to previously approved and published applications reduce certainty for rights holders and the general public. This part of the Empty Quarter hopes that this particular process change will end soon.

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