How to Do a Trademark Search Before Registering in Saudi Arabia: Practical Steps

To search for a trademark before registering it in Saudi Arabia, use the search service in the Saudi Authority for Intellectual Property (SAIP) database to check registered marks and pending applications. Search by name, by pronunciation and by figurative elements, within the class you intend to file in and related classes. An effective search, however, is not limited to finding an identical mark: it also involves assessing any similarity that could confuse consumers.

Why is a clearance search essential?

Many business owners skip this stage because they believe their name is unique, only to discover a similar mark later. A clearance search helps you:

• Reduce the risk of refusal on the grounds of similarity to an earlier mark.
• Avoid oppositions from existing trademark owners after your application is published.
• Protect your investment in your logo, packaging and marketing from the risk of a forced rebrand.
• Decide early whether to modify your mark before spending any money.

What are the steps in a trademark search?

1. Identify the target class: Start by finding the class of your goods or services under the Nice Classification, because similarity is assessed mainly within identical or related goods and services.
2. Search for exact matches: Enter the name of the mark as it is, in both Arabic and English.
3. Search for variations: Try alternative spellings, singular and plural forms, adding or removing the Arabic definite article "al-", and phonetic transliterations in Latin letters.
4. Search by meaning: If your mark is a translation of a foreign word, or vice versa, search for its equivalent in the other language.
5. Review figurative elements: If your logo has a distinctive design, search for marks with similar shapes.
6. Widen the search internationally: Use the World Intellectual Property Organization's (WIPO) global trademark database, especially if you plan to expand outside Saudi Arabia.
7. Document the results: Keep a list of close marks, with their numbers and classes, so you can assess them carefully.

How do I assess whether two marks are similar?

Similarity does not mean identity: your mark may be refused for being similar to another mark even if it differs by a letter or a word. The main assessment criteria include:

• Phonetic similarity: closeness in pronunciation or sound.
• Visual similarity: closeness in shape, font, colours or overall design.
• Conceptual similarity: both marks conveying the same idea.
• Relatedness of goods and services: the closer the products, the greater the likelihood of confusion.
• Overall impression: the mark is considered as a whole, as the average consumer sees it, not detail by detail.

When should the search be done?

The best time to search is before you commit to anything that would be hard to reverse. In practice, it is advisable to search at these points:

• When choosing your business name, and before adopting it as a trade name.
• Before hiring a designer for your logo and visual identity.
• Before registering the domain name and social media accounts under the name.
• Before printing packaging or launching advertising campaigns.
• Before expanding into a new product class or a foreign market.

Remember that search results reflect the position on the date of the search; new applications may be filed afterwards, so do not delay filing for long once you have confirmed the way is clear.

Is a do-it-yourself search enough?

Always start by searching yourself: it costs relatively little and quickly gives you an initial picture of how crowded the market is with names close to yours. A do-it-yourself search is useful for ruling out obvious matches, but it may not reveal every potential similarity, particularly phonetic or figurative similarity or connections between different classes. Reading the results also requires experience in judging what SAIP may consider similar. It is therefore best to combine your initial search with a professional search that includes a written opinion on the prospects of registration.

What should I do if I find a similar mark?

• Assess the degree of similarity and the classes in which it is registered; it may not conflict with your business.
• Consider modifying your mark by adding a distinctive element or changing the design.
• Check the status of the earlier mark; it may have expired or been refused.
• Consult a specialist before deciding whether to file.

Above all, do not ignore the result in the hope that your mark will slip through unnoticed. Filing despite an obviously similar mark may end in refusal, or in an opposition after publication.

Frequently Asked Questions

Q: Does a clearance search guarantee that my mark will be accepted? A: No, but it significantly reduces the risk, because SAIP carries out its own examination according to its own criteria.

Q: Should I search only in the same class? A: Start there, then review classes related to your business, as similarity can extend to related goods or services.

Q: Is it enough that the domain name is available? A: No. The availability of a domain or account name does not mean the mark is not registered with SAIP.

FATIMA AL ASMARI Law & Intellectual Property Company in Jeddah offers a trademark search service with a professional assessment of your registration prospects, and then handles trademark registration once the mark is shown to be ready, for clients across Saudi Arabia. Book your appointment or call +966 56 685 9556.

Legal sources

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