Reasons for Trademark Refusal in Saudi Arabia and How to Avoid Them

Trademarks in Saudi Arabia are usually refused for one of two main reasons: lack of distinctiveness, for example because the mark is descriptive or generic, or similarity to an earlier mark registered or filed for similar goods or services. There are also other statutory grounds relating to public order and protected symbols. Most of these can be avoided with a good clearance search and an original mark chosen from the outset.

Why are trademarks refused?

The Saudi Authority for Intellectual Property (SAIP) examines every application to make sure the mark can perform its function: distinguishing goods and services without misleading the public or infringing the rights of others. The further a mark strays from this function, the more likely it is to be refused in whole or in part. Knowing these grounds before you file is far better than discovering them in an official decision after waiting and paying the fee.

What are the main reasons for trademark refusal?

• Descriptive marks: words that directly describe the product, its quality or its ingredients, such as naming a honey brand with a name that means "natural honey".
• Common or generic marks: the everyday names of the product, or symbols that are familiar in the sector.
• Misleading similarity: a mark that is close in sound, appearance or meaning to an earlier mark for identical, similar or related goods or services.
• Infringing a well-known mark: imitating a famous mark, in some cases even in a different class.
• Breaching public order or morality: words or images that conflict with religious or moral values.
• Protected symbols: official emblems, flags, and religious or international symbols used without authorisation.
• Misleading indications: suggesting a geographical origin or a characteristic that the product does not have.
• Using other people's names or images: without the consent of the person entitled.

How can you avoid having your trademark refused?

1. Choose an original mark: invented words, or words used in an unusual context, are stronger than descriptive words.
2. Carry out a comprehensive clearance search: covering words, figurative elements and related classes.
3. Add a distinctive element: if you must use a generic word, combine it with a distinctive design or word.
4. Check the meaning in both languages: make sure the mark has no inappropriate or descriptive meaning in Arabic or English.
5. Avoid misleading suggestions: do not use names of cities or characteristics that do not apply to your product.
6. Obtain the necessary consents: when using a person's name or image.

What is the difference between full and partial refusal?

Not all refusal decisions take the same form. In a full refusal, SAIP considers that the mark, in its current form, cannot be registered for any of the goods and services applied for, for example because it is entirely descriptive or identical to an earlier mark. A partial refusal is limited to certain items in the list of goods or services where your application conflicts with an earlier mark, while the other items are accepted. There may also be a conditional acceptance, requiring a particular amendment or a disclaimer of the exclusive right to use a generic element of the mark on its own.

Understanding exactly what type of decision you have received determines your next step: a partial refusal may be resolved by narrowing the list and proceeding with registration, while a full refusal calls for a deeper assessment of whether a grievance or a redesign is worthwhile.

What should I do if my application is refused?

A refusal is not always the end of the road. The options usually available include:

• Studying the grounds for refusal carefully: the refusal may be partial and relate only to some goods or services.
• Filing a grievance against the decision: in accordance with the statutory procedures and deadlines, with reasons and documents supporting the registrability of the mark.
• Modifying the mark and refiling: by adding distinctive elements or changing the design.
• Narrowing the list of goods or services: to avoid conflict with the earlier mark.
• Negotiating with the owner of the earlier mark: in some cases, a coexistence agreement may be a practical solution, subject to legal review.

Crucially, do not miss the statutory deadlines for a grievance, because missing them may forfeit your right to challenge the decision.

Frequently Asked Questions

Q: Can I register a generic word if I add a logo to it? A: This may be accepted if the logo is distinctive, but protection may be limited to the combined form and not extend to the generic word on its own.

Q: Are foreign words less likely to be refused? A: Not necessarily. A foreign word that describes the product in its own language is usually treated in the same way as a descriptive Arabic word.

Q: Does refusal mean I cannot use the name? A: Not necessarily, but it means you have no exclusive protection for it, and you may be exposed to risk if it is similar to a registered mark.

FATIMA AL ASMARI Law & Intellectual Property Company in Jeddah helps you assess your mark before filing through its trademark search service, and reviews refusal decisions and files grievances against them as part of its trademark follow-up service, for clients across Saudi Arabia. Book your consultation or call +966 56 685 9556.

Legal sources

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