Enforcement of Trademark Rights in front of Saudi Authority for Intellectual Property (SAIP)
Saudi Arabia Focus
Ahmad ZazaPartner,Intellectual Property
Ala'a Al BatainehHead of Intellectual Property- Jordan
The Saudi Authority for Intellectual Property (SAIP) is the government agency in Saudi Arabia responsible for overseeing and enforcing intellectual property rights within the country. It was established to protect and promote innovation, creativity, and intellectual property rights.
The main tasks of SAIP are:
Registering and protecting intellectual property rights, including patents, trademarks, copyrights, and industrial designs.
Administering the intellectual property system in Saudi Arabia, including the examination and granting of intellectual property applications.
Raising awareness about intellectual property rights and the importance of protecting innovation and creativity.
Supporting businesses and individuals in their intellectual property needs, including providing advice and assistance in the registration process.
Providing training and education to stakeholders on intellectual property matters.
Collaborating with international organizations and other governments to promote and protect intellectual property rights globally.
Enforcement of Intellectual Property Rights (IPR’s) through the two following methods:
- local market actions, by investigating and prosecuting infringement cases.
- Customs actions : enlist theassistance of customs authorities to prevent the import of infringing goods.
SAIP is currently the major active law enforcement agency in KSA with respect to anti-counterfeiting actions and has its own inspectors in liaison with the Ministry of Commerce (MOC) which conducts regular market visits and undertakes inspections on behalf of brand owners.
For the purpose of facilitating the process of trademark protection and to enable all brand owners to protect their trademarks through administrative procedures effectively, SAIP is ready to receive trademark enforcement cases on a complimentary basis. This free of charge complaints mechanism is a great benefit to brand owners, as they can file an endless number of complaints with neither official filing fees nor inspection fees.
Once the brand owner has filed the complaint before SAIP, the raid against counterfeit goods will take place and will be conducted by their specialized inspection team in liaison with the MOC inspectors. During these raids, the inspection team search for and seize counterfeit products, such as counterfeit clothing, electronics, and luxury goods that infringe the IPRs of trademark owners.
After the raid, the relevant SAIP case team may ask the brand owner for a genuine sample and/or an authentication letter to authenticate the seized goods or otherwise to complete their study of the case, whereupon they will decide whether the case ought to be transferred to the Public Prosecution for further action before the complaint is finally transferred to the criminal Court.
SAIP took over the role of Customs in terms of IPR’s broader procedures and they became responsible for notifying brand owners of any suspected shipments.
As a first step, the brand owner must furnish SAIP with list of his registered trademarks through his legal representatives. SAIP is responsible for preventing the import of counterfeit goods, including items that infringe trademarks, and copyrights. SAIP works with rights’ holders to identify and seize infringing goods, and coordinates with local and international law enforcement agencies as needed. To support IP enforcement, SAIP liaises with Saudi Customs and provides training and resources to its staff and participates in international efforts to combat intellectual property theft.
The remedies available for intellectual property infringements in Saudi Arabia can vary depending on the specific case and the type of IP right involved. The most common remedies for SAIP actions include:
Seizure and destruction of infringing goods.
Injunctions to prevent further infringement.
Criminal penalties, including imprisonment and fines.
It's important to note that the specific remedies available may depend on the circumstances of the case, and that it may be necessary to pursue legal action through the Saudi court system to enforce IP rights. Additionally, rights holders may seek assistance from government agencies such as the Saudi Customs and the Ministry of Commerce and Investment in enforcing their rights.
It may be concluded that SAIP has lived up to its promise of providing services for encouraging the enforcement of IPRs. SAIP has improved the enforcement capabilities of their teams by training them and raising the awareness by providing adequate tools & resources.
Developing effective enforcement mechanisms, is one of the most effective tools SAIP adopted through focusing on IP protection services, specialized IP enforcement agencies, and IP protection programs to better protect IPRsin the country.
Also, SAIP cooperates with international organizations such as the World Intellectual Property Organization (WIPO), to enhance the protection and enforcement of IPRs in the country.
The future of IPR’s protections in the Kingdom of Saudi Arabis is no doubt a promising one. Since SAIP assumed its responsibilities a few years ago, it has become very active in terms of IPR enforcement and brand owners have already noticed the reformand are looking forward to even greater improvements in this regard.
In advantaging their IP positions, brand owners are well advised to consider immediate actions to take before SAIP, which are now leaders in the Kingdom of Saudi Arabia in terms of enforcement.
For further information,please contact Ahmad Zaza and Ala’a Al Bataineh.
Published in March 2023
