What Rights Arise from Trademark Registration? A Guide for Trademark Owners
Introduction
Once your trademark is officially registered with the Saudi Authority for Intellectual Property (SAIP), you don’t just obtain a logo — you acquire an “asset” with significant economic and strategic value. This registration grants you exclusive and monopolistic rights, the most important of which is your absolute right to use the trademark and dispose of it.
In this article, we provide a detailed overview of the legal nature of these rights and the key actions you may take with them as the owner of the trademark.
First: The legal nature of the right arising from ownership of a trademark
Once the registration is completed, the applicant is considered the exclusive owner of the trademark. This means that they alone—without any other party—have the right to use it for the products or services for which it was registered. This exclusive right is what enables them to distinguish their goods and protect them from counterfeiting or imitation, all of which are fundamental attributes of property rights.
However, trademark ownership enjoys a unique distinction from traditional property rights (such as real estate), and this uniqueness is represented in the following:
- A Right Pertaining to Intangible Property: A trademark is not a tangible physical object; rather, it is an intangible asset with financial value.
- A Temporary Right: This right is not permanent; the original protection period expires 10 years from the date of filing the registration application, and it is subject to continuous renewal.
- A Right That Can Be Forfeited (Cancellation): The trademark right is forfeited if the owner does not use it for five consecutive years without a valid excuse, and any interested party may request its cancellation from the authority’s records.
Second: Key Legal Actions Concerning the Trademark
As a valuable “asset,” a trademark can be subject to various legal actions. Its owner may assign it (for consideration or gratuitously), pledge it, or license it to others, and it can also be transferred through inheritance or a will.
These actions can be detailed as follows:
1. Sale (Assignment of Ownership)
- The law allows the trademark owner to dispose of it through sale, legally known as “assignment of the trademark” to another party. For this transaction to be valid, the law requires it to be in writing and registered with the Saudi Authority for Intellectual Property. Importantly, the sale or assignment is not enforceable against third parties until it is recorded in the trademark register.
- The law also allows flexibility by permitting the trademark to be transferred independently and separately from the commercial establishment or company. It is worth noting that if the entire store or company is sold or its ownership transferred, the trademark is implicitly included as part of the transaction, unless the contract explicitly excludes the trademark from the sale.
2. Examination of the Application by the Authority
-
After submitting the application, the Authority carefully examines it to ensure that all formal and substantive requirements are met.
- Formal Requirements:
- Ensuring that the application is completed in accordance with legal requirements.
- Verifying the payment of the required fees.
- Ensuring that all foreign documents are translated by an accredited translation office.
- Substantive Requirements:
- Verifying that no similar trademarks are already registered.
- Ensuring that the trademark does not violate public order or the Trademark Law.
3. Decision on the Application (Approval or Rejection)
The Authority is required to decide on the application within 90 days from the date of submission, with the decision being either approval or rejection.
- If the Authority finds deficiencies in the application, it may return it to the applicant, who is then required to complete the deficiencies within 90 days.
- If the deficiencies are not completed within this period, the Authority considers the applicant to have withdrawn their application.
If the application is approved: If the application is approved, the applicant is required to pay the publication fee. Payment must be made within 30 days from the date of notification of approval. Failure to pay is considered a withdrawal of the application.
If the application is rejected: The applicant has the right to appeal to the Trademark Appeals Committee. The appeal must be submitted within 60 days from the date of notification of the rejection. If the committee rejects the appeal, the applicant may file a lawsuit before the Commercial Court against the committee’s decision within 30 days from the date of becoming aware of the decision.
4. Publication and Opposition
After the trademark registration is approved and published, any interested party has the right to file an opposition.
- Opposition Period: 60 days from the date of publication.
- Notification of the Applicant: If an opposition is filed, the Authority provides the applicant with a copy within 30 days.
- Response to the Opposition: The applicant must respond within 60 days from the date of notification; failure to respond within this period is considered a withdrawal of the application.
4. Publication and Opposition
If the publication period ends without any opposition being filed, the trademark is registered. The Trademark Department at the Authority records the trademark after the payment of fees and then issues the trademark registration certificate.
Conclusion
It is clear from the above that the registration process requires several precise requirements. The applicant must carefully fulfill them before submitting the application.
It is important to note that all fees paid to the Authority are non-refundable, even if the application is rejected. To ensure the application is submitted correctly by professionals, we at Yaqeen Al-Farasa are pleased to offer this service. We are intellectual property agents accredited by the Saudi Authority for Intellectual Property.
You can request the service through the page Trademark Registration Services on our dedicated page, or by contacting us directly through the page Contact Us.
Comments are closed