The Difference Between Trademark Registration Under the Madrid Protocol and the Saudi National System
A trademark is the beating heart of any commercial project and the shield protecting the identity an investor builds through years of effort. With the rapid evolution of the Saudi business environment and the opening of global markets, it has become essential for entrepreneurs and companies to make a strategic decision: Should you settle for local registration via the Saudi Authority for Intellectual Property (SAIP), or seek international protection via the Madrid Protocol?
In this article, we provide an in-depth comparison between these two systems.
What is the Madrid Protocol?
Originating from the Madrid Agreement (1891) and its 1996 Protocol, this is an international system managed by the World Intellectual Property Organization (WIPO). It allows for the registration and protection of trademarks in over 120 countries through a centralized application in English, with fees paid in Swiss Francs (CHF).
What is the Saudi Trademark System?
It is the GCC Unified Trademark Law, issued by Royal Decree No. (M/51) dated 26/07/1435 AH. It regulates all aspects of trademark registration, protection, and enforcement within the Kingdom of Saudi Arabia.
How to Register Under the Madrid Protocol?
- Basic Registration: The applicant must first have a “Basic Mark” registered or applied for in their home country (Office of Origin).
- International Filing: An application is filed with WIPO in Geneva, designating the specific member countries where protection is sought.
- Formal Examination: WIPO checks for formal requirements and records the mark in the International Register.
- Substantive Examination: Each designated country reviews the application based on its national laws. They have the right to refuse protection if the mark conflicts with local laws or existing marks.
- Notification: Decisions are communicated back to WIPO, which then notifies the trademark owner.
Registration Under the Saudi System
Our blog features various articles explaining the local registration process via SAIP. You may consult them or contact us directly to act as your legal representative in Saudi Arabia.
Comparison Table: Madrid Protocol vs. Saudi National System
|
Feature |
Madrid Protocol |
Saudi National System (SAIP) |
|
Prerequisites |
Requires a “Basic Mark” or application in the country of origin. |
Filed directly with SAIP; no prior registration required. |
|
Expansion of Classes |
Not possible after filing; must match the basic registration. |
Classes can be modified or expanded in later stages (if applicable). |
|
Registration Timeline |
Long (12 to 18 months). |
Rapid (3 to 6 months). |
|
Central Dependency Risk |
If the basic mark is canceled in the home country within 5 years, all international designations fail. |
No external risk; the registration stands independently. |
|
Probability of Refusal |
Varies by country; each state applies its own national laws. |
Consistent with Saudi/GCC legal standards. |
|
Total Costs (Basic) |
653 CHF (B&W) / 903 CHF (Color) + 100 CHF per country/class. |
100 SAR (Filing) / 500 SAR (Publication) / 5000 SAR (Registration). |
|
Government Interaction |
No need for local agents in every country (initially). |
Requires a licensed local legal agent for filing and follow-up. |
Q&A
- Q: Must the trademark be registered in my home country before filing internationally?
- A: Yes, a “Basic Mark” in your country of origin is a fundamental requirement for using the Madrid System.
- Q: What happens if my national application is rejected after I’ve applied internationally?
- A: For the first five years, the international registration is “dependent” on the national one. If the national mark fails, the international ones are canceled. It is best to secure your local registration first.
- Q: Which is better?
- A: If your primary market is Saudi Arabia, direct registration under the Saudi System is faster and more secure. Al-Salama Law Firm can serve as your local legal representative to facilitate this process.
Conclusion
Al-Salama Law Firm & Legal Consultations is your legal partner in safeguarding your brand. Protect your intellectual property today.
Consult with our attorneys now.
