International Trademark Registration via the Madrid System From Saudi Arabia

You can register your trademark internationally from Saudi Arabia through the Madrid System by filing a single international application via the Saudi Authority for Intellectual Property (SAIP), in which you designate the countries where you want protection from among the members of the Protocol. The application must be based on a national application or registration for the same mark in the Kingdom. The World Intellectual Property Organization (WIPO) then records the international registration, and each designated country examines the application under its own laws.

What Is the Madrid System?

The Madrid System is an international mechanism administered by the World Intellectual Property Organization. It allows a trademark owner to seek protection in multiple countries with a single application, in one of the system's languages, paying fees in a single currency, instead of filing separate applications in each country. Saudi Arabia is a member of the Madrid Protocol, which allows trademark owners there to use this mechanism.

Who Can File Through the Madrid System From Saudi Arabia?

Applicants must have a connection with the Kingdom as defined by the system, such as being a Saudi national, being domiciled in the Kingdom, or having a real and effective industrial or commercial establishment there. They must also have a basic mark, meaning an existing application or registration for the same mark with the Saudi Authority for Intellectual Property.

What Are the Steps for Registering a Trademark Internationally via the Madrid System?

1. Confirm the basic mark: a Saudi application or registration for the same mark, covering the same goods and services or falling within their scope. If you do not have one, start with domestic trademark registration.
2. Search in the target countries: check that no similar marks are registered there, because a domestic search is not enough for foreign markets.
3. Choose the countries: select the member countries where you actually plan to operate.
4. Prepare the international application and file it through SAIP as the office of origin, specifying the goods and services under the Nice Classification.
5. Pay the fees: these include a basic fee and a fee for each designated country, calculated according to WIPO's schedules, and can be estimated using its official tools.
6. International registration: WIPO examines the formal requirements, then records the mark in the International Register and notifies the designated countries.
7. National examination: each country examines the application under its own law and may grant or refuse protection within the time limits set by the system.

What Are the Benefits of Registering Through the Madrid System?

• One application instead of multiple applications in different languages and procedures.
• Centralised management: the international registration can be renewed, or a change of owner or address recorded, through a single procedure covering the designated countries.
• The option to expand later by adding new countries to the existing international registration through a subsequent designation.
• Savings in time and cost, often, compared with registering separately in each country.

What Limitations of the Madrid System Should I Know About?

• Dependence on the basic mark: the international registration remains tied to the Saudi application or registration for five years from the date of international registration. If the basic application is refused, cancelled or restricted in scope during that period, international protection is affected accordingly. In that case, the system allows transformation into national applications, subject to conditions.
• Not available in every country: some countries are not members of the Protocol, and registration there must be made directly.
• National refusals: acceptance at the international level does not mean acceptance in every country, and you may need a local agent to respond to a refusal by a particular country.
• Limits on goods and services: the list of goods and services may not go beyond the scope of the basic mark.

How Do I Choose Which Countries to Designate in the International Application?

Choosing countries is both a commercial and a legal decision, and it should take the following into account:

• The markets where you actually sell or plan to enter in the next few years.
• Countries where manufacturing or sourcing takes place, because counterfeiters may start there.
• Countries where e-commerce platforms that list your products are widely used.
• Your available budget, since fees are calculated per designated country, so you can start with the most important markets and add others later.

When Is Direct Registration in a Country the Better Option?

Filing directly may be more suitable if you are targeting only one country, or a country that is not a member of the system, or if your basic mark is at risk of opposition in Saudi Arabia and you do not want to tie your international protection to it. This decision requires a case-by-case assessment.

Frequently Asked Questions

Q: Does an international registration automatically cover every country in the world? A: No. Protection is limited to the countries you designate in the application, and further countries can be added later.

Q: How long does an international registration last? A: The international registration is renewed periodically under the Madrid System rules. Up-to-date details are available on WIPO's website.

How Can We Help?

FATIMA AL ASMARI Law & Intellectual Property Company in Jeddah helps you assess whether your trademark is ready for international expansion, choose the countries, and prepare and follow up on the application. Book an intellectual property consultation before entering new markets.

Legal sources

This article is for general awareness and is not legal advice.