Saudi law protects the rights of nationals and foreigners in the field of intellectual property. Every natural or legal person that suffers injury resulting from trademark law infringement may claim damages. Expert proceedings regarding the infringement are permissible, and damages for trademark and patent infringements are punitive and provide compensation for the injured.
Intellectual property rights are also indirectly protected by the provisions of the Regulations for Combating of Commercial Fraud, which enable Saudi authorities to impose numerous sanctions for the production of counterfeit products or unlicensed copies of products, that include seizure and destruction of such products and imposing monetary fines up to SR 100,000 for violation of the provisions of the regulations.
The burden of proof in intellectual property cases lies with the plaintiff, and it is an onerous responsibility, unless the unlawful products are seized. Under Saudi law, documentary evidence does not supplant oral evidence, but the two combined may support each other. In trademark cases, discovery may provide the injured party with material and documentary evidence which alleviates the burden of proof.
Orders are enforced in respect of payment of money by effecting seizure against the party losing the case. With regard to prohibitory injunctions and writs of mandamus, orders are submitted to civil right directorates of the Interior Ministry to execute. Non-compliance with such orders may result in the imprisonment of the offender and the seizure of his assets.
The Saudi Patent Regulations of 1989 established a patent registration system, covering any new article, methods of manufacture (including improvements in either of them) and product patents. In 1996, the Saudi Patent Office granted its first patents since its establishment in 1990.
A patent may be granted to either Saudi or foreign citizens, including companies. Upon compliance with the registration formalities, the application receives a filing number and the filing date is secured. Patents are valid for fifteen Hijri years (a lunar year under Islamic precepts) as from the date of grant and may be extended for an additional period of five years.
The rights to a patent belong solely to the inventor, who may assign these rights with or without consideration. An industrial patent must be exploited within two years as from the date of grant, and if reasonable grounds are provided, this period may be extended for another period not exceeding two years. Failure to exploit the patent within the relevant period of time entitles the Patent Office to grant a compulsory license for exploiting the patent to any person capable of fully exploiting it.
Patent cases are heard by an administrative commission that has legal competence. This commission sits in the City of King Abdul Aziz for Science and Technology. Decisions concerning patents may be contested by third parties within ninety days of the announcement that a patent has been granted.
Trademarks and service marks registration is governed by the Trademarks Regulation of 1984. Saudi Arabia follows the International Classification of goods and services, but is subject to various limitations. For instance, trademarks for certain alcoholic goods are not registerable. Additionally, registration applications may be rejected if the trademark offends or is contrary to public morality.
A trademark/service mark application accepted for registration is published in the Official Gazette (Ummulqura). If no opposition is filed within three months, the owner would have an incontestable right to use the trademark/service mark for ten Hijri years as of the date of filing the application. The registration of the trademark/service mark can be renewed for additional periods of five Hijri years each. Use of trademarks in not compulsory for purposes of registration or keeping registration in force. A trademark/service mark may be canceled if it was not used for a period of five successive years.
Unauthorized use of a registered trademark/service mark, an imitation applied on goods or with respect to services of the same class, storage, sale, exhibiting for sale or using the trademark/service mark in the course of unauthorized promotion are offenses punishable under Saudi law by fines and imprisonment.
Infringement proceedings in relation to trademarks are heard by the Grievance Board. Forged and imitated goods may be seized by the Commerce Ministry or its branches. If civil proceedings in a trademark case are not initiated before the Grievance Board within 10 days, however, the precautionary proceedings shall become void. A public case must be heard within three years of the alleged offense having been committed. There is no such limitation for private cases.
Decisions of the Trademark Office can be challenged through administrative judiciary channels in the Commerce Ministry and legally before the Grievances Board. Applicants or third parties that have an interest in objecting to a registration have the right to challenge such decisions.
Saudi Arabia does not have a statutory design registration system in force. Protection is thus limited and the only available means of protection is through publication of cautionary notices in the Ummulqura or in local newspapers. These notices define the owner's interest in the property, announce the ownership thereto and alert the public against any possible infringement. Since cautionary notices are not covered by regulations and are not registered with any government department, it is advisable to republish such notices at frequent intervals.
Following pressure from the US Special Trade Representative Office, Saudi Arabia issued its Copyright Regulations in 1989. These Regulations are fairly limited in scope in that they fail to protect foreign copyrights. Also the Regulations do not address enforcement or registration procedures.
Saudi copyrights are generally protected for the life of the author plus fifty and twenty-five years with respect to books and sound and audio visual works respectively. As to computer software, while its protection seems explicit, the Regulations do not specify the protection duration.
© 2000 Mena Report (www.menareport.com)