The Saudi Trade Mark Law sets out the rights of a trade mark owner in Saudi Arabia against infringement. Since the law provides protection against infringement only for registered trade marks in Saudi Arabia, unregistered trade marks cannot be enforced. Administrative and legal actions are available against trade mark infringement in Saudi Arabia.

Administrative action

A trade mark owner has the right to enforce his trade mark through filing an official written complaint with the Anti-Fraud Commercial Department (AFCD) in the Ministry of Commerce. The complaint should be accompanied by compelling evidence of infringement including (1) a copy of trade mark registration certificate in Saudi Arabia, and (2) samples or photos proving the alleged trade mark infringement. In pursuance of the complaint, the officials at AFCD shall raid the infringer's outlet in order to verify the accuracy and correctness of the complaint.

If the allegations prove to be correct, the officials would normally confiscate infringing signs, products, etc, and draft a seizure report explaining the case. The AFCD would normally destroy all the infringing materials and give a warning in writing to the infringer requiring him not to use the subject trade mark, or import, produce or sell the infringing materials again. The infringer is also required to sign a commitment letter undertaking not to use the subject trade mark or import, produce or sell any such infringing material again.

If the infringer fails to comply with the commitment letter, the AFCD is authorised to investigate the matter again and eventually refer it to the public prosecutor to take a criminal action against the infringer that may incur imprisonment and/or a fine.

Legal actions (civil and criminal)

A trade mark owner may directly file a criminal and/or civil lawsuit against the infringer before the Board of Grievances (First Instance Court). A successful prosecution may result in imprisonment and the maximum penalty is one year and/or a fine of between SR50,000 ($13,000) and SR1 million ($270,000).

The trade mark owner has also the right to apply for a seizure of infringing materials prior to filing the lawsuit by submitting a written application along with the supporting evidence to the Board of Grievances. A financial security has to be provided upon the Board decision, and the lawsuit has to be filed within 10 days of the decision to seize, otherwise the seized infringing products will be released.

Salah Deeb

Al Tamimi & Company
Dubai International Financial Centre
6th Floor, Building 4 East
Sheikh Zayed Road, Dubai
United Arab Emirates
Tel: +971 4 364 1641
Fax: +971 4 364 1777
info@tamimi.com 
www.tamimi.com