The importance of a trademark lies in distinguishing your e-commerce store's goods and services from competing stores by identifying the store's name and logo, and gaining trust from customers. Therefore, it is essential for every  e-store owner not only to strive to build a store that reflects their brand, but also to apply for intellectual property rights for their trademark and all of its elements from the very first days of the store.

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In a previous article, we discussed trademarks, their importance, and how to build a strong brand for your online store. In this article, we introduce you to the steps of trademark registration in Saudi Arabia.

But what is meant by a trademark in Saudi Arabia?

The trademark system in Saudi Arabia defines a trademark as follows:

“For the purposes of applying the provisions of this system, building a brand applies to names taking a distinctive form, signatures, words, letters, numbers, drawings, symbols, stamps, reliefs, or any other sign or combination thereof that is visually perceptible and capable of distinguishing industrial, commercial, artisanal, or agricultural products, a forest exploitation project, or natural wealth, or to indicate that the item to be trade-marked belongs to the owner of the trademark by virtue of manufacture, selection, invention, or trade, or to indicate the provision of a service.”

Who is entitled to register a trademark in Saudi Arabia?

According to Article (4) of the Trademark Law, the following categories are eligible to register a trademark in Saudi Arabia:

1.  – Natural or legal persons holding Saudi nationality.

2. – Persons usually residing in the Kingdom and authorized to conduct a commercial or craft activity.

3. – Persons belonging to a country that treats the Kingdom on a reciprocal basis.

4. – Persons belonging to a member country of a multilateral international treaty to which the Kingdom is a party, or residing in that country.

5. – Public utilities.

Trademark Registration in Saudi Arabia

In the Kingdom of Saudi Arabia, trademark registration is mandatory to grant trademark rights. Only in some exceptional cases can an unregistered trademark be protected. Trademark applications must be submitted to the Ministry of Commerce in the Kingdom of Saudi Arabia   (MCI).

Registered trademarks in the Kingdom of Saudi Arabia are valid for ten (10) years from the date of filing the application and can be renewed indefinitely for additional periods of ten (10) years. Renewal can be requested within twelve (12) months prior to the expiration date. After that, there is a grace period of six (6) months during which the trademark can be renewed, upon payment of late renewal fees.

Court Lawsuits:

• The company was unhappy with this name change, so Victoria's Secret filed a lawsuit in the District Court for the Western District of Kentucky claiming, among other allegations, a violation of the Federal Trademark Dilution Act (FTDA).
  
  

• The court barred the Moseleys from using the name Victor's “Little Secret” because it tarnished the Victoria's Secret trademark. Both sides filed for summary judgment. Victoria’s Secret proved that it had acquired the trademark for its name in 1981, spent $55 million advertising its brand, owned  750 Victoria's Secret stores, and distributed 400 million copies of its catalog.

Ruling in favor of Victoria’s Secret:
After lengthy trials, the court ruled in favor of Victoria's Secret and issued an injunction against using the name “Victor's Little Secret.” The small store's name was changed to “Victor's Little Secret.” (1)

This story is probably more than enough to understand why it is important to register the trademark of your online store

And if you're not convinced! There are more reasons:

Reasons for you to care about registering your trademark:

• Standard of differentiation from competitors

One advantage of registration is establishing a strong brand identity and making it unique to the services and products offered, compared to competitors, and this can only be officially proven through its registration.

• Competitor knowledge

Access to databases of registered trademarks can be a real asset for business owners. By conducting a search related to the company's field of service and goods, the business owner can see  registered trademarks in this field.

• Long-term brand protection

 When a trademark is registered in Saudi Arabia, the protection period for filing a trademark is 10 years, as stipulated in Article (22) of the Trademark Law. The owner of the registration will be able to use their mark permanently.

• Brand exclusivity

Exclusivity is essentially the most important benefit of registering a trademark, as trademark registration provides the rights of its owner, most importantly the monopoly of using their trademark to sell, market, or communicate about the products and services developed by the owner.

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• Facilitating court procedures

Registering the trademark in databases is highly useful in determining who has prior use of the mark in litigation between two parties wishing to use the same trademark. The fact that a trademark is registered can act as a serious warning and deterrent to people who intend to use the same mark.

Article (4) of the Trademark Law states: (A well-known trademark whose reputation has exceeded the borders of the country in which it was registered to other countries may not be registered for identical or similar goods or services except upon an application submitted by the owner of the famous trademark or with his express consent). 

How do you apply for trademark registration in Saudi Arabia?

Things you must prepare before applying:

• Registration application.

• Representation of the trademark.

• List of goods and services to be protected.

• A certified copy of the priority document and its Arabic translation must be submitted within 6 months of the filing date.

• Upon successful registration of a trademark in Saudi Arabia, a hard copy of the trademark certificate will not be issued. Only digital certificates are granted by the Saudi Authority for Intellectual Property upon registering a trademark.

• The grant fee must be paid within 30 days from the end of the publication period.

• The approximate time from filing to grant is 3 to 5 months if no opposition is filed, and 12 months with opposition.

• For foreign applicants, it is necessary to register trademarks through a local trademark attorney.

• Examination is conducted with regard to compliance with formal and substantive requirements. In addition, the Saudi Trademark Office searches for prior trademarks. The application is then published for opposition, which can be filed within 60 days from the date of publication. Here are: 12 steps to extract a commercial register for your company

Steps to register a trademark in Saudi Arabia

-A trademark can be registered in Saudi Arabia through the unified national government services portal.

-An application for registration for each trademark meeting the conditions set forth in Article 1 of this system shall be submitted by the interested party if they are resident in the Kingdom, or by their official agent resident therein; this is submitted to the competent administration of the Ministry of Commerce in accordance with the terms and procedures specified by the implementing regulations.

Registering a trademark in Saudi Arabia requires simple steps on the service website, which are as follows:

1. Log in to the Saudi Authority for Intellectual Property website (here).

2. After filling in the login details, go to the option to register a trademark on the right.

3. Click on the option to register a new trademark and start filling out the electronic application.

4. Pay the application fee via the SADAD system, which is 1000 Riyals.

5. The application will be reviewed and the trademark examined within 7 business days.

6. After accepting the application, the trademark is published electronically for 60 days (after paying the publication fee of 1575 Riyals).

7. In case there is no opposition to the trademark, the final registration invoice of 5000 Riyals is issued.

8. The trademark registration certificate is issued electronically and protected for 10 years.

9. The owner of the trademark, as soon as its registration is completed, is given a certificate that includes the details specified by the implementing regulations, namely:

10. The sequential registration number of the trademark.

11.  The date of filing the registration application, the date of registration, and the priority date, if any.

12.  The commercial name or the name of the trademark owner, their residence, and nationality.

13. An image of the trademark.

14. A list of products or services for which the trademark was registered and their category.

- To search for accepted trademarks even after two months have passed from the date of acceptance, you can visit the Ministry of Commerce website.

-Go to the electronic services directory, and select