17 Dec 2021

Protect the trademark even if it is not officially registered

One of the institutions deceived for illicit gain by exploiting the mistake of one of the companies that had published a trademark for it over the years, as the latter had slackened in registering its trademark that it had made public, which enabled the institution to register the trademark with the Ministry of Commerce and notified the company not to use the trademark, which removed the company from the market and followed It has material losses, and here the question arises: does the system protect the trademark, even if it is not registered in the Kingdom?

To answer this question, we say:

First, from the root side:

The trademark represents a financial right that is respected in Sharia and in the system that gives its owner the right to protect it and take care of it from abuse by all means of abuse in accordance with the decision of the Islamic Fiqh Council No. (43 (5/5)) attached No. 2), and to the hadith of the Prophet, peace and blessings be upon him ((from the previous to What a Muslim has not preceded, then he has more right to it.” The texts and rules of Sharia have established precedence and that it is legally considered, including the jurisprudential rule: “He who has previously been permitted is more entitled to it.” It has already been granted it and it is more entitled to it, and if the system stipulates that the owner of the trademark is the one who registered it, but this right is not to be released according to what is settled by the provisions of the Court, because the prior use of the trademark and its innovation is the proof of ownership and the originator of it, because the registration of the trademark The commercial site includes the emptying of the real estate or the registration of the movable – in some of its cases – it is a condition for establishing the right, as it is a revealer of the right and not a creator of it. The rulings settled on him Judicial, including (Judgment No. 145/D/E/7 for the year 1430 AH, and confirmed by the Court of Appeal No. 890 S/6 for the year 1431 AH).

 

And since the trademark is a financial right, and one of the purposes of Islamic Sharia is to save money, and registration is only a means to achieve this goal, which is to save money, and the means are not intended for themselves, but rather are a follow-up to the purposes so that if he reached the goals without them, he did not use them, (Al-Muwafaq Al-Shatibi 2 /212).

Second: From the legal side:

Article (7) of the Unified Trademark System issued by Royal Decree No. (M/51) dated: 7/26/1435 AH states: (1) A person who registers a trademark in good faith is considered its owner, and the ownership of the trademark may not be disputed when associated with it. Registering the mark by using it for at least five years without the existence of a judicial dispute regarding it. by the person registered in his name), and from this it appears that whoever uses a trademark, even if he does not register it, may protect it according to the system and must submit to the judiciary a valid and reasoned lawsuit stating the priority of his use of the trademark in question and requesting the cancellation of the registration for others.
In accordance with Article (25) of the old Trademarks Law, which reads (the competent department and any interested party may request the cancellation of the trademark registration in the following cases: C- If the trademark was registered based on fraud or false information, and the Board of Grievances is competent to decide on requests to cancel the registration) The company may also rely on the text of Paragraph (2) of Article (7) of the Unified Trademark System issued by Royal Decree No. (M/51) dated: 7/26/1435 AH in force, and the Corporation when I submitted to the Ministry of Commerce a request to register the mark. It stated, according to the registration form, that the mark was its invention and not an imitation or transferred from any other marks owned by others. The submitted declaration is a false declaration because it is aware that this mark is owned by the company that published the mark, which is considered to be making false statements to a government agency, and the company is required to prove the institution’s mistake in order to judge it with what it claims.
The trademark system protects any well-known mark even if it is not registered in the Kingdom of Saudi Arabia.
If the infringed mark was previously registered in any country that is a member of the Paris Convention and signed by Saudi Arabia, according to Article VI therein (it is acceptable to deposit every trademark or industrial trademark registered in accordance with the law in the country of origin, and it is also protected in the state it is in other countries “the Union”). The matter with which it is necessary to refrain from registering a mark that was previously registered for others in any of the member states.

In conclusion: that the system wanted that no one enrich themselves at the expense of anyone in order to achieve the goal that Islamic Sharia aims to, as it came to forbid deception and what leads to confusion among people, to pay harm and prevent it from happening, and to block every pretext for corruption, and that the company competing against the company has aimed at registering the mark. The company from the market, and since the legal rule stipulates that the harm is removed, and that the acceptance of the trademark registration means that the company is forced not to deal with its trademark, which it has made effort and time to publicize, and then liquidate its business. Al-Zarkashi said, “The damage in money is the same as harm in the instant.” Al-Zarkashi explained to Al-Kharqi, and since the outcome of registering a mark is the occurrence of great damage to the company, but the institution will not be harmed by registering another mark of its own creation, or canceling and writing off that mark according to the rule ( Warding off evil takes precedence over bringing benefits.

So we say that the trademark, even if it is not registered in Saudi Arabia, is protected due to its popularity or due to its prior use

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