Saudi Arabian Trade Mark Office changes application procedure

With thanks to good friends Rouse and Kadasa & Partners, news of major changes to the application procedure at the Trade Mark Office in Saudi Arabia. The Alert, sent out by Rouse, reads:
Significant changes to the trade mark application process in Saudi Arabia

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

The changes are:

• All applications must be submitted electronically. No hard copy applications will be accepted after 25 September 2013
• The Trade Mark Filing Portal is on the MOCI website: http://tm.mci.gov.sa/
• All trade mark attorney firms must register with the Trade Mark 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 Trade Mark Filing Portal and a color scan of the Power of Attorney is uploaded. The Trade Mark 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 Trade Mark Office. The Trade Mark Office will verify that the original document matches the scanned copy on the Trade Mark Filing Portal. This verification is expected to take place on the same day as the information is entered on to the Trade Mark 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 trade mark application can be filed
•  The verification of the Power of Attorney only needs to be done once and will be sufficient for any number of future applications
•  The Trade Mark Filing Portal will only accept goods and services from the predefined list in the system which includes the exact class headings and the detailed goods/services of each class as set out in the 10^th Edition of the Nice Classification published in 2012.
•  The trade mark 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 available at the time of filing the application.  The scanned copy is uploaded on to the Trade Mark Filing Portal and the original must be submitted to the Trade Mark Office either on the same day or on the next day. The Trade Mark 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 if 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 (renewals, assignments, changes of name/address and so on) are to continue to be made using the existing, paper based, processes.

These changes continue a pattern of changes at the Trade Mark Office in Saudi Arabia over the last couple of years. Online publication of trade mark applications started last year.

More recently the Trade Mark Office has been requiring changes to specifications particularly around retail services in class 35. For some time the Trade Mark 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 10^th 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, Partner, Rouse

Mohammad Jomoa, IP Manager, Kadasa & Partners  

Further update on the 10th Edition of the Nice Classification

Good friends Saba & Co. have sent out their January newsletter which reports that:

"According to Ministerial Resolution no. 1147, dated October 16, 2012, the Saudi Trademark Office shifted its trademark classification system from the 9th edition to the 10th edition of the Nice International Classification for Goods and Services, which entered into force on January 1, 2012. This decision became effective on November 23, 2012 and applies to both new and pending applications. For pending applications, the Registrar may ask for a class amendment upon examination, or at the time of publication or registration."

The website version of the report (here) then provides a useful summary of which classification system is followed in many countries in the region. Some of this information is different

This part of the Empty Quarter is now going to have to do some proper work to identify which countries are signatories to the Nice Agreement and which editions each are following as the information from Saba is different from the information posted by me last month!

Update to 10th Edition of the Nice Classification

WIPO's ever useful email news list reports that there is an update to the 10th Edition of the Nice Classification which will come into effect on 1 January 2013. The Information Notice can be found here.

This is not quite so useful for practitioners in the Gulf. Only Bahrain is a party to the Nice Agreement.  Kuwait, Oman and the UAE follow the Ninth edition, Saudi Arabia the Eighth and Qatar the Seventh.

This part of the Empty Quarter wonders what might be holding back the various Trade Mark Offices from adopting the current (or at least most recent) version of the Nice Classification. Uniformity in the classification system assists rights holders. This part of the Empty Quarter also wonders if the UAE Trade Mark Office will be better able to adapt to the newer classification now that they are using the WIPO IPAS system.