By David Harper
Sunday 27th of November 2016.

Letters of consent may, in certain circumstances, be an effective means for overcoming a refusal of a trade mark application that has been refused on relative grounds.

Relative ground refusals are encountered frequently in Saudi Arabia and, once raised, they can be difficult to overcome by argument alone. This is because the Trade Marks Office operates a strict classification system. Specifications often cover the entire class heading or are comprised of items selected from an exhaustive list prescribed by the Trade Marks Office. As there is no scope to craft a narrow specification or to add a limitation to the nature or type of goods and services, applications will often cover a much broader array of goods and/or services than necessary, which in turn means that refusals based on prior marks covering identical terms is more common place.

As a result, applicants often look to use letters of consent as a means of overcoming refusals based on prior rights. However, as the acceptance of a letter of consent is ultimately at the sole discretion of the decision maker, the costs, timeframe and uncertainty associated with the process usually means that trade mark applicants would only use letters of consent as a measure of last resort.

Accordingly, trade mark applicants are best advised to conduct comprehensive clearance searches in Saudi Arabia before proceeding to file an application to ensure that an application does not encounter a refusal on relative grounds by the Trade Marks Office.

Trade Marks Office refusals

Currently, the Trade Marks Office in Saudi Arabia is examining trade mark applications within a week of filing the application online.

Accordingly, where prior conflicting marks are present on the register, refusals are often issued before the applicant has an opportunity to seek consent from the owner of the prior mark. In such cases, the only means of redress is to appeal the examiner’s determination to the competent court (the Ministry of Commerce and Industry (MOCI) in Saudi Arabia) within the stipulated 60 day time period.

During the 60 days, it may be possible (depending on the location of the owner of the cited mark) for the trade mark applicant to seek consent from the owner of the cited mark, and to arrange for a letter of consent to be drafted, executed, notarised and legalised up to the Embassy of Saudi Arabia in the applicant’s home country.

However, often 60 days is not enough time to complete the legalisation process in the applicant’s home country. Further, even if the trade mark applicant is in a position to submit a duly legalised letter of consent to MOCI, the decision maker may very well be reluctant to overturn the decision of the Trade Marks Office examiner to refuse the application based on the prior conflicting mark. Indeed, in our experience, unless there is an obvious error of fact or in law, then the decision maker at the MOCI will usually follow the examiner’s decision and refuse the appeal.

It is at the next level of appeal – to the administrative court – where letters of consent are more likely to be accepted as a means of overcoming a refusal based on relative grounds.

Appeals to the Board of Grievances (Administrative Court)

If the trade mark applicant is able to obtain a duly legalised letter of consent from the owner of the cited mark, then it should consider appealing the further refusal of the application by the MOCI to the Administrative court.

Similar to the older Saudi Arabian Trade Mark Law of 2002, the new Unified GCC Trade Marks Law which was implemented in Saudi Arabia at the end of September 2016, does not contain any express provisions governing the acceptability of letters of consent as a means of overcoming refusals based on relative grounds. However we have had success in overcoming refusal of an application based on relative grounds before the Administrative Court.

Article 17 (2) of the new Unified GCC law states “The owner of the registered trademark shall have the exclusive right to use the mark and to prevent others who do not get his approval from using it or using any similar or identical sign including any geographical indication in the commerce context to distinguish goods or services related to those in respect of which the trademark is registered if such use my result in confusion for the public.

While the wording of Article 17 (2) is geared at establishing the need for a third party to seek consent prior to using a registered trade mark right (or similar mark) a similar interpretation may be adopted with regard to the registration of a trade mark.

Discretion

Given the absence of an express provision in the law or settled practice guidelines, the decision as to whether or not the MOCI or the administrative court accept the letter of consent falls to the sole discretion of the decision maker. As such, trade mark applicants can expect inconsistencies in the rule being applied.

That said, if the marks in question are materially different from one another and evidence of peaceful co-existence can be put forward from other countries (particularly in the region, especially other GCC countries), then in our experience, the decision maker would be more likely to exercise its discretion to accept the letter of consent as a means of overcoming the refusal.

Risks of seeking consent

While a letter of consent may, in certain circumstances, offer a solution to trade mark applicants for overcoming refusals based on relative grounds, approaching the owner of the prior mark can also carry a certain degree of risk.

Necessarily, an approach for consent to the owner of a cited mark alerts that party to the (potentially) conflicting application. Accordingly, if consent is refused, but the trade mark applicant overcomes the refusal by using a different method, then its trade mark application is more likely to be opposed during the opposition period by the owner of the cited mark. As such, the risk of approaching the owner of the cited mark for consent needs to be weighed up against the potential benefit of obtaining a letter of consent.