In a recent decision, the Administrative Appellate Court of Saudi Arabia upheld a First Instance Administrative Court decision that dismissed an appeal against a trademark office’s final refusal based on the administrative court’s lack of judicial jurisdiction due to the transfer of jurisdiction over intellectual property (IP) disputes and appeals from the administrative to the commercial courts.
This decision, issued on June 22, 2021, is in line with the Saudi Arabian Supreme Judicial Council circular issued on March 15, 2021. The circular gives the commercial courts jurisdiction over all IP disputes. Accordingly, appeals against trademark office refusals and trademark cancellation actions previously filed before the administrative courts (or Board of Grievances (BOG)), are now under the jurisdiction of the commercial courts.
The current Gulf Cooperation Council (GCC) Trademarks Law, promulgated by Royal Decree No. M/51 on May 26, 2014 (published on January 7, 2016), is in force in Saudi Arabia and is intended to harmonize laws across all GCC countries. It loosely refers to the “competent court” as having jurisdiction over IP disputes. Until the March 15 circular, judicial jurisdiction remained with the BOG under the Board of Grievances Law. This law empowered the administrative courts with jurisdiction over appeals against final administrative decisions and all other administrative disputes.
The recent Saudi Commercial Courts Law in April 2020 (in force as of June 2020) defined several exclusive judicial jurisdictions for the commercial courts, including cases and violations arising from the application of IP regulations. This led to the BOG’s issuance of several judgments rejecting cancellation actions and appeals against trademark office refusals on jurisdictional grounds. It then paved the way for the March circular to definitively clarify jurisdiction.
The transfer of jurisdiction over IP disputes to the commercial courts aligns with Saudi Arabia’s plan to unify the authorities that regulate IP issues. This began with the formation of the Saudi Authority for Intellectual Property (SAIP) and the transfer of responsibilities for all matters related to trademarks, patents, and copyrights from several ministries and governmental bodies to the SAIP.
Those with trademark portfolios in Saudi Arabia should ensure they have the necessary powers of attorney in place to be able to appeal trademark office refusals and handle other IP disputes before the commercial courts.
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