Saudi Arabia
JordanHow to Protect Your Trademark from Legal Hijacking in the Saudi Market
A Step-by-Step Breakdown of the Unified Licensing Process and Its Benefits
A recent case that sparked widespread debate on social media illustrates the crucial importance of timely trademark registration. Two competing Egyptian restaurant companies became embroiled in a controversy after one of them entered the Saudi market first and registered a well-known trademark that actually belonged to an established restaurant in Egypt.
While some might view this move as fair competition, it effectively barred the original trademark owner from leveraging their brand in Saudi Arabia, hindering plans for expansion and new branches. This incident reignited important legal discussions about trademarks, the “first-to-file” principle under Saudi law, and the limits of fair competition.
This real-world example demonstrates how being first to market can be weaponized through legal means, making early trademark registration not a secondary option but a strategic necessity for any company aiming for regional growth.
Which Law Governs Trademarks in Saudi Arabia?
Trademarks in the Kingdom of Saudi Arabia are governed by the GCC Trademark Law, adopted by Royal Decree No. (M/51) dated 26/07/1435 AH. This unified framework enhances the protection of intellectual property rights across Gulf Cooperation Council (GCC) member states.
One of the law’s most critical legal principles is the “first-to-file” rule, which clearly states that legal protection is granted to the party that first registers the trademark in the Kingdom, regardless of prior use or reputation abroad.
In other words, foreign use or fame of the mark holds no legal weight in Saudi Arabia unless the trademark is officially registered with the Saudi Authority for Intellectual Property (SAIP). This is a fact often overlooked by companies when planning entry into the Saudi market.
Why Is Early Trademark Registration Crucial?
Under Saudi law, trademark registration is the only way to guarantee legal protection within the Kingdom. Mere use of the mark abroad—even if it is well-known or long-standing—does not entitle the owner to any legal rights in Saudi Arabia without official registration.
Key reasons to prioritize early registration:
- Prior foreign use has no legal effect: Saudi law does not recognize trademark use in other countries as proof of ownership.
- Others may register the mark first: Any party—individual or company—may register a mark in Saudi Arabia even if it is already used and famous elsewhere.
- Avoid future disputes: Early registration provides solid legal grounds for enforcing your rights before courts or government entities.
Delays in registration expose businesses to serious risks, including the loss of their trademarks or entanglement in costly legal disputes with less entitled but faster-acting competitors.
What to Do If Your Trademark Has Been Registered by Someone Else
If you discover that your trademark has been registered in Saudi Arabia by another party, you may pursue the following legal remedies:
1. File an Opposition with SAIP
If the trademark is still in the publication phase, a formal opposition can be filed within 60 days of publication. Supporting evidence should include:
- Proof of prior use abroad.
- Evidence of wide-scale brand recognition (advertising, websites, verified accounts).
- Indications of bad faith on the part of the registrant.
2. Request Cancellation of the Trademark Post-Registration
If the mark has already been registered, you may file a trademark cancellation lawsuit before the competent court based on:
- Bad faith in registration (e.g., evidence the registrant intended to hinder competition).
- Global reputation: Was the trademark registered in multiple countries? Is it widely known? This can support claims of the rightful owner’s good faith and the registrant’s bad faith.
- Documented and continuous use of the trademark inside or outside the Kingdom.
Parallel Actions to Consider
Based on our experience as a Saudi law firm, legal procedures alone may not always be sufficient. We often recommend parallel strategies that can save time, effort, and cost, such as:
- Amicable negotiation with the registrant, which, although potentially costly, may lead to a mutually beneficial resolution.
- Request a suspension of trademark use from SAIP if the use is causing substantial harm.
- File a commercial complaint if the use is deceptive or misleading to consumers.
Legal Tips to Avoid These Risks
Given the vital role trademarks play in business success, we advise all entrepreneurs and companies to invest in their trademark protection by taking the following steps:
- Register early in your target markets before market entry.
- Think beyond local registration—protect your brand regionally and internationally.
- Monitor published trademarks on SAIP’s website regularly.
- Do not rely solely on your brand’s reputation—register it to ensure legal protection.
- Hire an IP lawyer if a dispute arises to handle it properly and efficiently.
Final Thoughts
Delaying trademark registration is not merely an administrative oversight—it’s a real legal and commercial risk that can cost companies their most valuable asset: brand identity.
The Saudi legal system, grounded in the GCC Trademark Law, favors those who act first. Therefore, proactive and well-planned registration is one of the most effective tools a business can use—especially during regional or international expansion.
At Al Madani & Co, we are proud of our proven track record in this area. We have successfully registered and protected numerous local and international trademarks for our clients across various sectors. Our in-depth knowledge of the Saudi legal system makes us a trusted partner for any business seeking to safeguard its trademark rights within the Kingdom.
Contact US
Your Trusted Partner
Info@almadanilaw.com
