Someone Registered My Trademark in Saudi Arabia: How Do I Get It Back?

If someone else has registered your trademark, the first thing to do is check the status of the application or registration with the Saudi Authority for Intellectual Property (SAIP), then gather evidence of your prior use or of the other party's bad faith. Depending on the stage the registration has reached, you may file an opposition during the publication period, or apply to the competent authority to cancel the registration if it has already been completed.

This article explains the available options in general terms, what strengthens your position, and when you need a specialist.

How Do I Find Out That Someone Has Registered My Trademark?

Business owners usually discover the problem in one of the following situations:

• When they try to register their own mark and the application is refused because an identical or similar mark is already registered.
• When products or business accounts bearing the same name appear in the market or on online platforms.
• When they receive a warning letter from another party claiming ownership of the mark.

In all of these cases, start by carrying out a trademark search in SAIP's database to find out the registered owner's name, the classes covered, the filing date, and whether the application is still under examination, has been published, or is finally registered.

Can I Oppose the Application if It Is Still in the Publication Stage?

Yes. Once an application is provisionally accepted, the mark is published so that any interested party has the opportunity to oppose it. This is the easiest and least costly stage at which to protect your rights, so it is important to monitor publications regularly.

To file an effective opposition:

1. Make sure the opposition is filed within the statutory period set for publication; you can confirm this on SAIP's platform.
2. State your grounds of opposition clearly, such as misleading similarity to your mark, your prior use, or the applicant's bad faith.
3. Attach supporting documents such as sales invoices, dated marketing materials, online store pages and your commercial registration (CR).
4. Follow up and respond to any submissions made by the applicant until a decision is issued.

What Should I Do if the Mark Has Already Been Registered in Someone Else's Name?

If the opposition period has passed and the registration has become final, you can still seek cancellation or invalidation of the registration before the competent authority, provided you have valid legal grounds. Grounds commonly relied on include:

• The registration was made in bad faith, for example where the registrant is a former partner, distributor or employee who became aware of the mark through their relationship with you.
• The mark is a well-known mark that you own; well-known marks enjoy special protection.
• The registered owner has not made genuine use of the mark for a period specified by law without an acceptable excuse.

The conditions and time limits differ for each ground, so it is advisable to have the case legally assessed before filing in order to choose the most suitable route.

What Evidence Strengthens My Position?

The strength of your position depends on what you can prove. Make sure you collect:

• Evidence of prior use: invoices, supply contracts, advertisements and dated product photos.
• Evidence of reputation: the extent of your market reach, media coverage, and customer or follower numbers where these are properly documented.
• Evidence of a previous relationship with the registrant: partnership, distribution or employment contracts, and correspondence showing they knew of your mark.
• Original design files for the logo, together with proof of their creation date and your ownership.

Does the Approach Differ if the Mark Is Registered in a Different Class?

Yes. Protection is, in principle, tied to the classes in which the mark is registered under the Nice International Classification, which has 45 classes. If the other party has registered the same name in a class unrelated to your business, you may still be able to register your mark in your own class, unless there is a risk of public confusion or one of the two marks is well known. If, however, the registration is in your own class or a closely related one, taking action becomes necessary to protect your business.

Can I Negotiate With the Person Who Registered the Mark?

In some cases an amicable solution is quicker, for example where the registrant transfers the mark to you through a trademark assignment under a written agreement. However, do not start negotiating before your legal position has been assessed, and do not send written admissions or offers that could later be used against you.

How Can I Prevent This From Happening Again?

• Register your mark early in every class you operate in or plan to expand into.
• Do not rely on your commercial registration or domain name alone; neither gives you trademark protection.
• Include express clauses in partnership, distribution and employment contracts that preserve your ownership of the mark.
• Monitor published trademarks regularly so that you can oppose in good time.

Frequently Asked Questions

Q: Is the fact that I have used the mark for years enough to prove my ownership? A: Prior use is important evidence, but the strongest protection comes from registration. Whether prior use is accepted as a ground for opposition or cancellation depends on the circumstances of each case and the evidence submitted.

Q: Can I keep using the mark while the dispute is ongoing? A: That depends on the status of the registration and the risk of an infringement claim, so it is advisable to consult a specialist before deciding.

Q: Are opposition and cancellation fees fixed? A: Fees are set by the competent authority and may change. Please check SAIP's platform for the current approved fees.

How Can We Help?

FATIMA AL ASMARI Law & Intellectual Property Company in Jeddah reviews your case, gathers the evidence, and prepares and follows up on your opposition or cancellation request with the competent authorities, for clients in all regions of the Kingdom. Book a consultation to have your position assessed before the statutory deadlines pass.

Legal sources

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