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Friday, March 10, 2017

With the adoption of the Gulf Cooperation Council Trademark Law in the country, Saudi Arabia has updated its opposition procedure from a legal to a purely administrative proceeding. Given that oppositions are now administrative proceedings in Saudi Arabia, they are in principle less expensive than the legal proceedings adopted previously.

The opposition process remains similar to the previous one, since trademarks that have been approved for publication in Saudi Arabia are published for opposition and may be opposed by any interested party with grounds for an opposition. The opposition period is 60 days from last publication date in the Official Gazette and requests for extending an opposition are not possible.

Opposition proceedings are based on written record with jurisdiction mostly limited to the issue of registrability. Since Saudi Arabia is a first-to-file country, the applicant or the authority administering the opposition cannot require the opponent to provide proof of use of the earlier registered mark that is the basis of the opposition. In order to contest use, the applicant must initiate separate non-use cancellation proceedings. Opposition proceedings will not be interrupted pending the issuance of a decision in the cancellation proceeding and vice versa.

Even if prior rights are not established in the Saudi Arabia, an opposition can still be filed based on fame. The extent to which a trademark is considered famous is usually determined according to the international standards for the protection of well-known trademarks (Article 6bis of the Paris Convention), as well as the local standards for well-known trademark protection.

Any probative evidence will be accepted, and a determination will be based on the totality of the evidence, including such factors as (i) the duration and geographic extent of sales; (ii) sales figures; (iii) advertising figures and samples of advertising; (iv) awards, reviews and press reports; (v) the reputation of the mark within the relevant trade and consumer groups in the country; and (vi) expert testimony and surveys designed to assess the recognition of brand names.

Other admissible grounds for opposition include: absolute grounds; bad faith issues; rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark); rights under Article 8 of the Paris Convention (trade names); rights under Article 6ter of the Paris Convention (Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations); offenses against public policy or principles of morality. This list should certainly not be considered exhaustive and conclusive.

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