Trademark Infringement: Forms of the Offense and Legal Protection Mechanisms
Introduction:
A trademark is one of the most important tools that help consumers identify products and services. It protects them from confusion and deception when making choices. Additionally, trademarks assist merchants and manufacturers in improving the quality of their products to ensure market success and maintain their reputation.
However, infringement of trademarks disrupts this function and causes significant harm to society. The damage resulting from counterfeiting or forgery is not limited to the trademark owner; it also affects consumers who fall victim to this fraud and deception.
In this article, we will review the forms of trademark infringement, the legal mechanisms for their protection, and the deadlines for filing a claim.
Many people make the mistake of initiating procedures without fulfilling these requirements, which can lead to their applications being rejected and a loss of time and money.
First: Forms of Trademark Infringement
Trademark infringement can occur directly, such as through counterfeiting or forgery, and it can also occur indirectly. To distinguish between them, we will detail these two types as follows:
1. Direct Trademark Infringement
Direct infringement is defined as an attack on the physical trademark itself, which may alter its characteristics, form, or constituent elements. It also includes complete violation, such as placing the trademark on other products with the intent to distribute them.
Direct infringement takes two main forms:
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Counterfeiting: It involves copying the trademark in full or verbatim.
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Imitation: It involves using a trademark that closely resembles the registered mark in its entirety, in a way that causes consumers to be confused or misled.
There is another type of infringement called “Trademark Violation”This occurs when a person removes a registered trademark from the original owner’s products and places it on other products not intended for it, belonging to the offender. A well-known example is emptying an original perfume bottle and refilling it with counterfeit liquid.
Penalties for Direct Infringement
Article 42 of the GCC Trademark Law stipulates strict penalties:
“Anyone who counterfeits a registered trademark or imitates it in a way that misleads the public, or uses a counterfeit or imitated trademark in bad faith, shall be punished by imprisonment for not less than one month and not more than three years, and a fine of not less than SAR 5,000 and not more than SAR 1,000,000, or by either of these penalties.”
2. Indirect Trademark Infringement
Indirect infringement is defined as violating the trademark without personally engaging in counterfeiting or imitation. Instead, it occurs through promoting products or goods bearing a counterfeit trademark.This includes selling or acquiring them with the intent to sell, provided that the infringer has prior knowledge that they are counterfeit.
Indirect infringement also includes:
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Anyone who unlawfully places a mark or symbol on their goods or documents in a way that leads others to believe the trademark is registered (e.g., using the ® symbol when it is not registered).
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Anyone who, acting in bad faith, deliberately omits placing their registered trademark on the goods or services it distinguishes.
Penalty for Indirect Infringement
Paragraph (b) of Article 42 of the same law states:
“Anyone who sells or offers for sale goods bearing a counterfeit or imitated trademark, knowing them to be so, or anyone who uses an unregistered trademark, or unlawfully places a mark in a way that leads others to believe the trademark is registered, shall be punished by a fine of not less than SAR 1,000 and not more than SAR 100,000.”
Second: Methods of Trademark Protection
A registered trademark enjoys dual protection: Civil and CriminalInfringement constitutes a criminal offense, while at the same time granting the owner the right to claim civil compensation.
We will now review the most important measures established by the law:
1. Precautionary Measures (Urgent Protection)
Precautionary measures aim to address infringement quickly and immediately. They consist of a series of swift judicial actions to stop or prevent the violation before it occurs. The law allows the rights holder to take these temporary measures before presenting the dispute to the courts.
Types of Precautionary Measures: The trademark owner can submit a petition to the competent court to request one or more of the following:
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Evidence Preservation: A procedure aimed at preserving evidence (such as the existence of counterfeit goods or the tools used) before it disappears.
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Temporary Seizure: Seizing the items used in the infringement and the profits resulting from it.
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Issuance of a Court Order: To prevent counterfeit goods from entering commercial channels or being exported.
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Issuance of a Court Order: To stop the ongoing infringement or prevent it before it begins.
Procedures for Considering Precautionary Requests:
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The court must decide on the petition within 10 days (and it may be faster in exceptional cases).
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The applicant must provide evidence indicating that the infringement is likely to have occurred.
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Importance of Speed: The court may issue the order without summoning the other party (the infringer).This occurs if a delay would cause harm to the plaintiff or if there is a risk that the evidence might be destroyed.
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The defendant (infringer) has the right to appeal to the court within 20 days of being notified of the order.
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The court may require the petitioner to submit a financial bond. to protect the defendant from the potential abuse of rights.
Important Condition: The rights holder is required to file a “substantive lawsuit” (the main dispute). within 20 days. from the issuance of the precautionary order; otherwise, the order may be canceled.
2. Civil Protection (Compensation Lawsuit)
The law grants the trademark owner the right to resort to civil courts. They can file a lawsuit to stop the infringement and obtain sufficient compensation to cover the damage. Compensation includes the direct damages suffered, including: the profits earned by the infringer. as a result of the imitation.
- Assessment of Compensation: The court determines the compensation to the extent it considers sufficient to remedy the damage. In doing so, it takes into account the value of the original product or service (retail price) or any other criterion it deems appropriate.
- Right to Destroy Counterfeit Goods: Yes, the court, at the request of the rights holder, may order the destruction of the counterfeit goods. that are proven to be counterfeit, without any compensation to the defendant. The ruling usually also includes the destruction of materials and tools used in the manufacturing process. (It is worth noting that simply removing the counterfeit trademark from the goods is not sufficient for their release).
3. Criminal Protection (Public Rights Lawsuit)
The laws provide criminal protection for registered trademarks, as well as for “well-known” trademarks even if they are not registered. It is not required for the crime that the infringer has made a profit; the offender is punished whether they profited or not.
Forms of Criminal Infringement (Elements of the Crime):
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Counterfeiting or Imitation Crime: It requires a material element (the act itself) and a moral element (the intent to infringe and deceive the consumer).
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Crime of Using Another’s Trademark: It occurs when a registered trademark is placed on the infringer’s products, with the presence of bad faith and criminal intent.
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Crime of Selling Counterfeit Goods: It requires a material element (the sale or possession with intent to sell) and a moral element (prior knowledge that the goods are counterfeit).
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Crime of False Claim: Such as placing a symbol indicating the trademark is registered (®) when it is, in fact, not registered.
Expiration of the Claim (Statute of Limitations)
Yes, the public right to file a criminal lawsuit expires due to the statute of limitations. after a period of 5 years. from the date the violation was committed (without any investigative or judicial action taken).
However, it should be noted that the expiration of the public claim (criminal penalty) does not extinguish the private right of action. (which is the owner’s right to claim civil compensation for damages).
Summary: Is Your Trademark at Risk? Defending It Requires More Than Just a Complaint
It is clear from the above that protecting a trademark is a complex and precise legal process. It is not limited to simply “registering” the trademark, but extends to intricate defense mechanisms encompassing criminal aspects, civil compensation, and urgent provisional measures.
Dealing with cases of infringement requires expertise and immediate precision. Precautionary measures are governed by strict statutory deadlines (such as the requirement to file the substantive lawsuit within 20 days), and even a minor
At Yaqeen Al-Farasa Law Firm and Legal ConsultationsWe understand that your trademark is your reputation and most valuable investment. Our specialized intellectual property team not only provides registration services but also offers comprehensive legal protection. We handle all the complex procedures on your behalf, from obtaining urgent precautionary orders to stop counterfeiting, to filing criminal complaints, and up to claiming the maximum possible compensation to remedy the damages to your reputation and profits.
Don’t leave your trademark vulnerable to infringers. Protect your investment and vigorously defend your rights in court.[Contact Us] to have your case evaluated immediately.
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