Significant changes to trademark application process introduced

With effect from September 25 2013, the Trademark Office in the Ministry of Commerce and Industry (MOCI) in Saudi Arabia has made significant changes to the trademark application process. All rights holders will need to be aware of these changes and take account of them when instructing trademark applications in Saudi Arabia.

The changes are as follows:

• All applications must be submitted electronically. No hard-copy applications will be accepted after September 25 2013.
• The Trademark Filing Portal can be found here.  
• All trademark attorney firms must register with the Trademark Filing Portal to be able to file electronic applications. Only registered local attorneys are able to file through the portal.
• The power of attorney from the applicant to the agent must first be approved. The details of the applicant are entered on the Trademark Filing Portal and a colour scan of the power of attorney is uploaded. The Trademark Office will review the scan of the power of attorney against the applicant’s details and decide whether the power of attorney is accepted or rejected. The acceptance or rejection is expected to be issued on the same day the information is entered.
• If the power of attorney is accepted, the original document must be taken to the Trademark Office. The office will verify whether the original document matches the scanned copy on the Trademark Filing Portal. This verification is expected to take place on the same day as the information is entered onto the Trademark Filing portal or the following day.
• When the original power of attorney has been verified against the scanned copy and registered to the local attorney’s online account, the application form will be activated so that the trademark application can be filed.
• The verification of the power of attorney needs to be done only once and will be sufficient for any number of future applications.
• The Trademark Filing Portal will only accept goods and services from the predefined list in the system, with rights holders able to select either the exact class heading or a selection from the detailed goods/services of each class as set out in the 10th edition of the Nice Classification published in 2012.
• The trademark must be submitted in JPEG format with a resolution of 200 by 400 pixels. Scanned copies of the mark will not be accepted.
• All notifications about the application will be sent to the local attorney through email or SMS to a dedicated email box and mobile phone number, respectively.
• The original certified copy of the priority document must be available at the time of filing the application. The scanned copy is uploaded onto the Trademark Filing Portal and the original must be submitted to the Trademark Office either on the same day or on the next day. The office is expected to expedite verification of powers of attorney associated with applications claiming priority so the chances of the priority deadline being missed are reduced.  

At the moment, it is not clear whether the system will allow more than one agent to have an approved power of attorney from the same rights holder, although the expectation is that it will.

For the time being, online filing is limited to new applications. Applications for other transaction (eg, renewals, assignments and changes of name/address) are to continue to be made using the existing, paper-based, processes.

These changes continue a pattern of changes at the Trademark Office in Saudi Arabia over the last couple of years. Online publication of trademark applications started last year.

More recently, the Trademark Office has been requiring changes to specifications, particularly around retail services in Class 35. For some time the office has rejected applications for identical or similar marks in the same class, even if the goods or services are very different.

These new changes require rights holders to: 

• craft specifications which use wording found in the 10th edition of the Nice Classification published in 2012 (this is different to the 2013 edition on the WIPO website as the current edition); and
• instruct applications in good time to meet priority deadlines to allow for the power of attorney to be verified.

Edward Hardcastle, Rouse, and Mohammad Jomoa, Kadasa & Partners