With the establishment of the Saudi Authority for Intellectual Property (SAIP), Saudi Arabia consolidated all intellectual property (IP) departments under one umbrella. The purpose of this newly-minted local entity is to lead the national strategy for the promotion of IP, revising and issuing regulations, providing services in a timely and high-quality manner, increasing IP awareness and providing education and training for all stakeholders, and coordinating IP enforcement efforts with other local Ministries and Departments.
In December 2019, SAIP issued the Implementing Regulations for Optional Registration of Copyright Works, authorizing the voluntary registration of architectural designs and computer software and applications, which must be filed through SAIP’s online platform. Although Saudi Arabia is a member of the Berne Convention for the Protection of Literary and Artistic Works, it is worth noting that voluntary registration may prove useful for evidential and enforcement purposes, by providing prima facie evidence of the existence, date, and author/owner of the relevant copyright work in Saudi Arabia.
While SAIP claims dominion over all IP matters, issues pertaining to dispute resolution and enforcement are delegated to other branches of government. With the aforementioned brief overview of SAIP and its most recent developments in mind, the subsequent discussion will address IP disputes in Saudi Arabia.
Copyright and Patent Disputes
In January 2020, the Supreme Judicial Council announced that the Commercial Courts, along with the Commercial Departments of General Courts, will be handling all copyright and patent-related disputes.
Following this update, the Ministry of Justice backed the Supreme Judicial Council’s decision by training judges on copyright systems and how to handle patent disputes. “We want to provide the best judicial principles and training on IP system based on research and study,” the Ministry announced in a statement to the media. “We are collecting the previous work done by related committees that looked into those cases to prepare for the shift.”
The Commercial Courts, which will be comprised of three judges, will hear infringement and invalidation cases. By resorting to the legal system, cases, where one of the parties is a national entity, can be brought in front of Saudi Courts. This update indicates a decentralization of the outgoing process to raise grievances, which for patent matters used to be under the jurisdiction of a committee housed at the King Abdul Aziz City of Science and Technology— which meant that all related cases were heard and processed in one location.
Criminal prosecutions against trademark infringers is the exclusive responsibility of the public prosecutor in Saudi Arabia. Brand owners and rights holders cannot initiate or follow up on criminal actions, but are entitled to file a civil action against infringers before the competent Commercial Court in order to claim compensation.
Accordingly, in order to enforce trademark rights against infringers, brand owners can file complaints with the Anti-Commercial Fraud Department at the Ministry of Commerce or at the Commercial Court. Filing an administrative action before the Anti-Commercial Fraud Department (ACFD) must be done in writing, and must include all evidence of infringement and registered rights over the trademark. It is worth noting that SAIP plans to absorb the responsibilities of ACFD in the near future to offer a streamlined and centralized service. If pursuing the legal route, a statement of claims must be filed before the Commercial Court in writing. There are no pre-trial procedures in Saudi Arabia.
In theory, there are no restrictions or preconditions under the Gulf Cooperation Council Trademark Law for filing a civil action against trademark infringers. However, recent Court practice indicates that a civil action will not be admitted if the applicant does not prove they have previously filed a complaint against the defendant before ACFD, and the prescribed administrative measures have been exhausted.
Preemptive Strikes through Customs Recordal
According to the old adage, the best defense is an offense—something which might be particularly salient in the field of IP when considering Customs recordal. Trademark owners can formally request the SCA to safeguard against counterfeiting and trademark infringement. Filing a request requires recordal of trademarks with Customs. The application must be accompanied by a copy of the certificate of registration and a legalized power of attorney. The application must be made through a local agent signing a memorandum of understanding with the SCA, which will then issue a recordation notice that is valid for one year and is renewable for like periods.
Upon recordation, the SCA would stop shipments of suspected counterfeit products from entering into Saudi Arabia and issue notifications to the attorney on file so that the latter can verify the authenticity of the suspected products. If confirmed to be fakes, the goods would be confiscated and destroyed by the SCA.
The Best of Both Worlds
It is worth noting that these updates in procedures by SAIP, and Saudi Arabia at large, follow a broader international trend that is heading towards specialization, aimed at having trained judges resolving IP disputes in a timely and consistent manner, while taking into consideration previous decisions, and increasing their experience and knowledge of ongoing developments in the IP and technology field locally, regionally, and internationally. This would suggest that as more time progresses, Saudi Courts will be more competent to address and resolve IP disputes.
On the other hand, one fundamental advantage of the recordation system is that it permits SCA officials to adopt an ex-officio border system, which allows for prompt and proactive action and avoids delays inherently involved in seeking judicial action—thus supporting the idea of an “offensive” defensive enforcement strategy outside the Court.
The current status of the laws and regulations provide innovators with all the rights to be able to protect their own inventions and encourage further investment in developing innovative products and processes in Saudi Arabia. Creating the right protection and enforcement environment is crucial to these developments and rights holders must be ready and willing to adopt a model that incorporates both legal and regulatory approaches in order to arrive at a well-established IP protection strategy.
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