ACFD recognises importance of protecting registered trademarks against use as trade names

Saudi Arabia

The Anti-counterfeiting and Fraud Department (ACFD) within the Ministry of Commerce and Industry (MOCI) in Saudi Arabia is a platform through which trademark owners can seek to enforce their registered trademark rights without having to resort to lengthy and expensive criminal and/or civil court actions.

The headquarters of MOCI are located in Riyadh, with branch offices in other cities. Once a complaint for trademark infringement has been filed before the appropriate branch office of the ACFD (via a MOCI office), an assigned officer of the ACFD will examine the complaint and determine which investigatory steps need to be taken, including an inspection of the premises of the defendant, and whether a raid is necessary. In the event that these steps identify counterfeit and/or infringing products and materials, these will be confiscated.

The ACFD may also issue a direction to the defendant to remove all infringing materials from its premises, including any signboards if the dispute involves the unauthorised use of the complainant’s trademark on any parts of the defendant’s premises. The defendant may be required to sign an undertaking to the effect that it will permanently refrain from illegally using the trademark of the complainant without the necessary authorisation to do so. The ACFD is also authorised to destroy the confiscated products and materials and to issue a seizure report to the complainant. If the situation warrants, the ACFD may also impose interim sanctions and/or injunctions preventing the defendant from carrying out certain business transactions. In the event of a failure to comply with an order of the ACFD, such injunctions can go as far as freezing all works, applications and licensing activities before all governmental agencies, ministries and departments.

If the defendant is not prepared to comply with the ACFD’s requirements and continues with the infringing activities, the ACFD will forward the matter to the Bureau of Investigation and Public Prosecution, with its recommendations. The Bureau will then investigate the matter and, if it finds that the defendant has breached trademark rights, it will refer the case to the competent court.

In order to file a complaint before the ACFD, the following documents and information are required:

  • a copy of a valid trade licence/commercial licence of the applicant company;
  • a coloured copy of the registration certificate of the trademark in question;
  • the class of the trademark of the complainant;
  • the official complaint letter (on the company’s letterhead) with signature and stamp;
  • the complaint letter should include the location details of the infringing shops/warehouses/exhibitions/stores, with GPS locations;
  • a letter stating the differences/similarities between the original and counterfeit trademarks in colour (on the letterhead of the trademark owner);
  • in the event that the original products are sold only through the trademark owner and not through any other outlets or retailers, a letter from the trademark owner confirming that this is required; and
  • a copy of ID and/or legalised power of attorney.

Some complaints require additional details, such as:

  • purchase invoices; and
  • samples of the genuine and infringing (counterfeit) products.

The ACFD’s approach to recognising trademark infringement has always been conservative. More specifically, in order for the ACFD to consider a complaint, direct infringement is required, as there is no concept of ‘passing off’ contrary to what is available in common-law jurisdictions. That being said, in recent years the ACFD has extended its enforcement capabilities to also recognise infringement by way of trade names. 

In a recent matter, the complainant successfully filed a complaint with the ACFD for trademark and trade name infringement. The ACFD recognised that the infringement was not only taking place on the goods containing the infringing products, but also through signboards. This is an important step away from the traditional view that the enforcement of trademarks is possible only against infringing goods; it appears that the ACDF is also recognising the importance of protecting a registered owner’s trademark against use as a trade name.

Omar Obeidat, Mohamed Ali and Othman Al Tamimi, Al Tamimi & Company, Dubai

Al Tamimi handled the abovementioned complaint with the ACFD

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