Saudi Arabia is one of the larger economies in the Middle East. With a vibrant, technologically advanced economy and an influx of international brands, we have seen great interest in trade mark filings in the Kingdom. Conversely, we have also seen an increase in offensive, third party trade mark filings. In a recent matter, CWB represented a well-known business operating within the non-fungible token (NFT) market, against a bad faith trade mark filer for one of the client’s popular NFTs.
Our trade mark watch service uncovered the third-party application, which had been filed in an unrelated class. As regional practitioners well know, opposing a trade mark application in Saudi Arabia in an unrelated class can be difficult, if not for the primary considerations that the country is considered to be a first-to-file country, and reliance on unregistered, well-known rights, can be challenging. In illustration, the Trade Mark Office declined the opposition in the first instance. Finely crafted Court appeals had to be pursued. In these appeals, we were ultimately able to reverse the first decision, including on the basis that the client’s mark was found to be well-known, and that the client was clearly the legitimate proprietor of the mark reflected in the opposed application, with the inference that the opposed mark had been filed in bad faith.
Although Saudi Arabia is a first-to-file jurisdiction, our matter illustrated that, if properly argued and supported, well-known rights are enforceable in the Kingdom, including against filings in unrelated classes.