By Firas Jayyusi
Tuesday 20th of December 2016.

Saudi Arabia uses the Nice Classification system for classifying goods and services for the registration of trade marks. However, there are some nuances in the implementation of the Nice Classification in Saudi Arabia that applicants should be aware of before filing applications.

The purpose of this article is to highlight the differences in the implementation of the Nice Classification in Saudi Arabia and some of the issues that have arisen as a result.

Exhaustive list of goods or services

 In 2013, in order to modernise and expedite the trade mark filing system, Saudi Arabia moved to a streamlined online filing system. One of the ways to simplify the filing process was to standardise the specification of goods and services that can be covered by a trade mark application. As a result, a trade mark application can now only be filed for goods and services selected from an exhaustive list of items based on the 10th edition of the Nice Classification.

Before filing an application, trade mark applicants need to devise an appropriate specification that conforms with this practice. For foreign applicants, this can mean re-drafting their usual specifications to conform with the prescribed list of goods and services. In cases where the Nice Classification has not kept up with technological advancement or does not contain items that cover a trade mark applicant’s core business, applicants need to either select the entire class heading or revert to broad terms that ostensibly cover the applicant’s business activities.

From an enforcement perspective, this can lead to difficulties. If a trade mark owner’s goods or services are not specifically listed in the exhaustive list, then it follows that they will not appear on the certificate of registration. Taking enforcement action through the Police or through the Anti-Commercial Fraud Department can be much more difficult if the goods/services when a trade mark owner is seeking to enforce are not specifically contained on the registration certificate.

Settlement/Co-existence Agreements

 A further complication in only allowing applicants to select items from an exhaustive list of goods and services is that the specification cannot be amended to include limitations or exclusions to those goods and services – either prior to filing or after registration. As a result, if a trade mark applicant resolves an opposition or dispute with a third party whereby the applicant agrees to limit its specification, the Trade Marks Office will not allow the applicant to amend the specification as it would no longer conform with the prescribed list.

Updates – Edition/Version

In Saudi Arabia, the trade mark office updates its classification after each new Edition of the Nice Classification is published. Currently, the list conforms more or less with the 10th Edition of the Nice Classification. Due to the effort required in updating the list, the list is not currently being updated with the annual revisions.

Arabic translations of English terminology

As trade mark applications are filed in Arabic in Saudi Arabia, the list has been compiled using Arabic translations of the English guide. As with all translations, this has lead to some inconsistencies – particularly in relation to specialised terms of art.

Accordingly, great care should be taken when preparing the Arabic version of the specification for filing at the Trade Marks Office to avoid surprises when trying to enforce a registration.

Class headings

It is possible to select the entire class heading when filing an application. The Trade Marks Office has taken the view that selecting the entire class heading covers all goods/services in that class. However, again, for enforcement purposes, having the specific goods/services at interest listed in the specification on the registration certificate is always preferable to having broad terms. In addition, if a dispute should come before the court, then it cannot be assumed that a court would determine that the class heading does in fact cover all goods in that class.

Public morals

 Trade mark applications in Saudi Arabia are examined on absolute grounds and, unlike many other jurisdictions in the world, objections will be raised if an application covers any goods or services which are deemed to be contrary to public morals. In practice, a trade mark application will be refused if it covers any goods or services that conflict with the principles of Islam.

By way of example, an application should not cover any of the following goods and services:

  • Class 28: Decorations for Christmas trees
  • Class 29: Pork
  • Class 32: Beers
  • Class 33: All alcoholic goods
  • Class 41: Gambling; providing casino facilities
  • Class 43: Bar services

Presumably, the likes of heroin and cocaine in class 5 would also be refused on this basis. It may, however, be possible to couch these goods in other broader terms, such as “pharmaceutical preparations”.

While smoking is technically haram under Sharia law, cigarettes, tobacco and other goods listed in class 34 are accepted for registration.

Re-classification

 From time to time, new editions of the Nice Classification introduce entirely new classes, new goods/services, or re-classify existing goods/services.

When this happens in Saudi Arabia, the Trade Marks Office does not update the register to re-classify applications or registrations according to the new classification.

For example, when the 8th Edition of the Nice Classification came into force, three new services classes (43, 44 and 45) were added. Most of the services in these three new classes fell in class 42 under the 7th Edition of the Nice Classification. Existing applications and registrations in class 42 did not, however, get reclassified into the new classes – either at the time or upon renewal. Accordingly, it is entirely possible that “food and beverage services” can exist on the register in both classes 42 and 43.

As a result of this anomaly, applicants must always take care when clearing marks for use in Saudi Arabia for services in classes 43, 44 and 45 to ensure that register searches are also conducted in class 42.

In addition, a holder of a class 42 registration for services that now fall in classes 43, 44 and 45 should consider obtaining protection in the new class. While the existing protection will continue to be valid and enforceable, it will not act as a block to third parties filing applications for the identical or similar mark covering the same services in the new class.

Such instances of inconsistency in the classification of goods/services and the overall position in the implementation of the Nice Classification system may pose risks of different levels to trade mark owners. Therefore, the applicants should ideally consult with local counsel for best approaches to mitigate these risks before filing their applications.