Trademark Assignment in Saudi Arabia: Steps and Required Documents

A trademark assignment is the transfer of the rights in a registered trademark from its current owner to a new owner, whether by sale, assignment, inheritance, merger or otherwise. In Saudi Arabia this is done by concluding a clear transfer agreement and then filing a request to record the change of ownership with the Saudi Authority for Intellectual Property (SAIP) through its online platform. The transfer cannot be relied on against third parties until it has been recorded in the register.

When Do I Need to Transfer Ownership of a Trademark?

Many situations call for a transfer. The most common include:

• Selling the business, or part of its assets, to an investor or another company.
• Converting a sole proprietorship into a company, where the owner wants to transfer the mark to the new entity.
• Restructuring a group of companies and consolidating its trademarks in a single company.
• The mark passing to the heirs after the owner's death.
• Settling a dispute in which one party gives up, in favour of the other, a mark it had registered.

What Documents Are Required to Transfer a Trademark?

Requirements may vary depending on the nature of the transfer and the parties involved, but they usually include:

1. An assignment agreement or declaration signed by the current owner and the new owner, identifying the mark by its registration number and the classes covered.
2. The identification details of both parties, and the commercial registration (CR) if either is a business.
3. A power of attorney for the accredited agent if the agent will handle the procedure on behalf of the parties.
4. Proof of the signatory's authority to sign for the company, such as a partners' resolution or the authorised signatory's details.
5. In the case of inheritance: the official legal documents establishing the heirs and their respective shares.
6. Notarization or legalisation of documents where one of the parties is outside the Kingdom, as required by the competent authority.

It is advisable to check SAIP's current requirements before filing to avoid the request being rejected or delayed.

What Are the Steps to Record a Trademark Assignment With SAIP?

1. Check the status of the mark: make sure it is registered, valid and not expired, and that there are no encumbrances on it, such as a pledge or an existing licence that needs to be dealt with.
2. Draft the transfer agreement: it should identify the mark, the consideration (if any), the date on which the rights pass, and what happens to existing licences.
3. Prepare the documents and have them notarized where necessary.
4. File the request to record the assignment through SAIP's online platform and pay the approved fee.
5. Follow up on the request and respond to any comments until the transfer is entered in the register.

You can entrust these steps to a specialist through our trademark assignment service to reduce the risk of rejection.

It is best not to delay filing the recordal request after the agreement is signed. For as long as the register shows the old owner, that owner remains the apparent rights holder as far as third parties are concerned, and the new owner may find it difficult to renew the mark, file oppositions or take action against infringers in their own name.

Can a Trademark Be Transferred Without Transferring the Business?

As a general rule, the law allows ownership of a trademark to be transferred either independently of the business or together with it, depending on what the parties agree. However, the transfer should not mislead the public about the origin or quality of the goods or services, which is why the agreement needs to be drafted carefully.

What About Trademarks Registered Outside the Kingdom?

If the mark is also registered in other countries, whether through direct national registrations or via the Madrid System, transferring its ownership in Saudi Arabia does not automatically transfer it in those countries. Each registration has its own procedures, and for an international registration it may be useful to file a change-of-ownership request through the World Intellectual Property Organization (WIPO) to cover the designated countries. The transfer agreement should therefore list all registrations and specify who will handle the procedures for each and who will bear the cost, to avoid ownership of the mark being split between different owners in different countries.

What Are the Key Clauses in a Trademark Assignment Agreement?

• Precise identification of the mark by registration number, image and classes.
• A declaration by the assignor that it is the sole owner and that the mark is free from disputes or third-party rights, or disclosure of any that exist.
• What happens to licences previously granted to third parties.
• The assignor's undertaking to cooperate in the recordal procedures and sign whatever is required.
• The geographical scope if the mark is registered in other countries.
• The dispute resolution mechanism and the governing law.

Our contract drafting and review service can help you include these clauses in a way that protects your interests.

Frequently Asked Questions

Q: Is signing the contract enough for ownership to pass? A: The contract governs the relationship between the parties, but relying on the transfer against third parties requires it to be recorded with SAIP. So do not rely on the contract alone.

Q: Does the trademark's term of protection change after the transfer? A: No. Protection continues for the original registration term, and the new owner is responsible for renewing it when it expires.

Q: How long does the transfer process take? A: The time varies depending on whether the documents are complete and on the competent authority's procedures. You can track the status of the request on SAIP's platform.

How Can We Help?

As an accredited trademark agent with SAIP, FATIMA AL ASMARI Law & Intellectual Property Company in Jeddah drafts the transfer agreement, prepares the documents, and files and follows up on the request for clients across the Kingdom. Book your consultation now.

Legal sources

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