Trademark Infringement
Trademarks are among the most vulnerable rights subject to infringement through counterfeiting, imitation, or unauthorized and bad-faith use. Consequently, the Saudi legislator has established deterrent penalties for anyone who infringes upon the trademarks of others. Al-Salama Law Firm & Legal Consultations explains everything related to the methods of trademark infringement and the prescribed penalties.
Table Of Content
What Constitutes Trademark Infringement?
Trademark infringement occurs through:
- Imitating or counterfeiting a mark.
- Selling, trading, or possessing (for the purpose of sale) goods bearing a counterfeit or imitated mark, or a mark placed unlawfully, with prior knowledge.
- Offering services under such marks.
- Bad-faith use, such as intentionally omitting the registered mark from goods or services.
- Possessing tools or materials intended for use in counterfeiting or imitating registered or famous trademarks.
Filing a Trademark Complaint
A trademark infringement complaint is submitted through the Saudi Authority for Intellectual Property (SAIP) website by providing the necessary documents proving the infringement. This service is free of charge.
Distinction: Imitation vs. Counterfeiting
- Trademark Imitation: Creating a mark that resembles the original in its overall appearance, leading to public confusion or deception.
- Trademark Counterfeiting: The literal and exact reproduction of a registered mark so that it appears identical to the original.
The Crime of Trademark Imitation
The Saudi legislator has criminalized the imitation of trademarks and stipulated specific penalties within the Law.
Penalties for Trademark Infringement
According to Article (42), Paragraph (A):
Without prejudice to any harsher penalty stipulated in another law, imprisonment for a period of no less than one month and no more than three years, and a fine of no less than 5,000 SAR and no more than 1,000,000 SAR (or its equivalent in GCC currencies), or either penalty, shall be imposed on:
- Anyone who counterfeits or imitates a registered mark in a manner that misleads the public, or anyone who uses a counterfeit or imitated mark in bad faith.
- Anyone who, in bad faith, places a mark owned by others on their goods or uses it in relation to their services.
According to Article (42), Paragraph (B):
Imprisonment for a period of no less than one month and no more than one year, and a fine of no less than 1,000 SAR and no more than 100,000 SAR, or either penalty, shall be imposed on:
- Anyone who sells, offers for sale, or possesses for sale goods bearing a counterfeit, imitated, or unlawfully used mark with prior knowledge.
- Anyone who uses an unregistered mark in prohibited cases (e.g., marks violating public morals, state emblems, religious symbols, or misleading geographical indications).
- Anyone who unlawfully records on their marks or documents information leading to the belief that the mark is registered.
- Anyone who intentionally omits placing their registered mark on goods/services in bad faith.
- Anyone possessing tools or materials for the purpose of counterfeiting or imitating marks.
Recidivism (Repeat Offenses):
Under Article (43), repeat offenders face up to double the maximum penalty, the closure of the business for 15 days to 6 months, and the publication of the judgment at the offender’s expense.
Key Differences
| Feature | Trademark Imitation | Trademark Counterfeiting |
| Definition | Creating a mark similar in “substance” to the original to mislead consumers. | Literal and exact copying of the original mark to create an identical replica. |
| Degree of Similarity | Minor differences exist, but the general look (colors/fonts) suggests it is the original. | 100% identical; indistinguishable from the original by the naked eye. |
| Method of Deception | Relies on “simulation” and creating confusion for the public. | Relies on “embodying” the original mark and stealing its identity entirely. |
| Judicial Standard | Proven by the “Average Consumer” standard (likelihood of confusion). | Proven by comparing geometric and visual identicalness. |
| Penalty | Imprisonment (1 month – 3 years) and/or fine (5k – 1M SAR). | Imprisonment (1 month – 3 years) and/or fine (5k – 1M SAR). |
Q&A
Q: What is considered a trademark violation?
- Imitation and counterfeiting.
- Unauthorized use of the mark.
- Use of the mark in bad faith.
Q: What are the penalties?
- For Counterfeiting/Placing marks on goods: Up to 3 years imprisonment and/or a fine up to 1 million SAR.
- For Selling/Possessing/Using unregistered marks illegally: Up to 1 year imprisonment and/or a fine up to 100,000 SAR.
Al-Salama Law Firm & Legal Consultations
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