Abdulaziz K. Shukri, Partner at Kamal Hussein Shukri & Associates Law Firm
According to Saudi law do designers have any rights per say / (per se)? Can a designer claim his designs and have it trademarked?
Yes. The designer’s brand i.e. logo, name, symbol is protected under Saudi Trademark Laws if registered at the Ministry of Commerce. However, the fashion designs/drawing are protected under Saudi Copyright Laws if registered and authenticated.
Can imposters be sued? And on what basis?
Yes, they can.
Regarding Trademarks, as stated above, in accordance to article 21 of the Saudi Trademark Laws, “A person who has registered a trademark shall become its exclusive owner, and the use of a registered trademark by any person is subject to the consent of its owner. The owner of a registered trademark shall have the right to file a lawsuit to prevent others from using it or from using any other sign similar to it and liable to mislead the public as to the products or services for which the trademark is registered and as to similar products or services.
The rights resulting from registration of the trademark do not include the fair use of the signs, statements and descriptive drawings which do not include the special characteristic of the registered trademark.” Moreover, it should be noted that in accordance to Article 22 of the Saudi Trademark Laws, “The rights of a party resulting from registration of a trademark shall continue for ten years unless otherwise renewed.”
I personally found that posting the fakes on Social Media has proven to be very effective in the sense where the imposters become embarrassed and ashamed and have no choice but to remove their copied posts. Is it dangerous for the original brands to do so?
In general, defamation and any action that harms a person’s reputation is a crime under Saudi Law as such a person must be careful posting anything online before going through the proper legal channels to avoid any legal claims that might arise because of said action.
However, if the original Trademark and/or Copyright is registered and the owner discovered an imposter then he must inform the imposter that it is a crime under Saudi law and to immediately cease any activity in relation to the Trademark and/or Copyright, otherwise the owner shall be forced to raise a claim against the imposter.
Furthermore, should a final judgement be issued against the imposter then the owner can post such information to the public if the imposter continues posting fakes.
We understand from the fashion industry that law suits are very arduous and require a great deal of time and money. When is it worth pursuing? And when is it not?
Law suits are only worth pursuing if a third party uses a registered Trademark and/or Copyright or any other sign similar to it that is liable to mislead the public as to the products or services for which the Trademark and/or Copyright is registered, or to similar products or services and if the infringement adversely affects the owner’s business.
Is any copied brand entitled to compensation? If so how and how can it be done?
Regarding Trademark, if that brand is registered as a trademark under the Ministry of Commerce. Under the Saudi Trademark Law there are both public and private rights. With regards to the public right, in accordance with article 43, anyone who imitates a registered trademark shall be punished with imprisonment for a period not exceeding one year or a fine not less than fifty thousand riyals and not exceeding one million riyals or both.
Furthermore, with regards to the private right, anyone who has suffered damage as a result of the imitation of the registered trademark or the commission of any of the offenses provided for in the Saudi Trademark Law may claim appropriate compensation for the damages sustained, from the person responsible for the offense.
It can be done by raising a claim before the Commercial Court and it shall have jurisdiction to decide all civil and criminal lawsuits and disputes arising out of the implementation of this Law as well as the imposition of the penalties specified herein for the violation of the provisions hereof in accordance with article 53 of the Saudi Trademark Law.
Regarding Copyright, the designs/drawing must be registered at the Ministry of Culture and Information. In accordance to Article 22 of the Saudi Copyright Law if a person infringes on any rights specified in Article 21 he shall be subjected to one or more of the following:
2. A fine not exceeding two hundred and fifty thousand riyals.
3. Closing the violating establishment or the one which participated in the violation of the copyright, for a period not exceeding two months.
4. Confiscation of all copies of the work along with the materials used or intended for use in the infringement on the copyrights.
5. Imprisonment for a period not exceeding six months.
What do you advice designers to do to protect themselves?
Legally, all you can do as a designer is make sure your Trademark and/or Copyright is registered and renewed. And should anyone infringe on your rights as explained above you may raise a claim before the competent authority. Another suggestion would be to publish the designs through a publishing house. By doing so you may protect the drawings and designs and prove that they were formally your intellectual property.