Challenge
The client approached ATB Legal with a dual-jurisdiction trademark matter involving parallel trademark filings in the UAE and the Kingdom of Saudi Arabia (KSA). While the UAE trademark proceeded smoothly, the KSA trademark encountered a critical procedural issue that required immediate legal intervention.
In Saudi Arabia, trademark ownership requirements are strictly enforced. The client’s trademark application had initially been filed in the name of an individual, whereas the Saudi Authority for Intellectual Property (SAIP) required the trademark to be registered in the name of the business entity. This discrepancy posed a serious risk, including potential rejection, delay, or loss of priority.
The client’s key concerns were:
- Rectifying the ownership issue without jeopardizing the application
- Ensuring full compliance with Saudi trademark regulations
- Completing the process within tight statutory timelines
- Coordinating efficiently across jurisdictions, languages, and authorities
What appeared to be a “minor change” on paper carried significant legal and commercial consequences if not handled promptly and correctly.
Solution
We had proposed a structured and legally compliant ownership rectification strategy tailored specifically to Saudi trademark law and practice. The solution involved:
- Converting trademark ownership from the individual applicant to the correct business entity through a legally valid assignment
- Drafting customized trademark assignment and ownership transfer agreements
- Ensuring bilingual documentation (English and Arabic) compliant with KSA formalities
- Managing cross-border coordination with trusted Saudi associate partners
- Completing the rectification without disruption to the overall trademark protection strategy
Our objective was clear: resolve the issue decisively, preserve the client’s rights, and ensure enforceability of the trademark in both jurisdictions.
Approach
We adopted a hands-on, end-to-end approach, combining legal precision with practical execution.
Step 1: Legal Assessment & Risk Evaluation
We conducted an immediate review of the KSA trademark filing to identify procedural non-compliance and assess risks related to ownership, timelines, and enforcement.
Step 2: Strategic Structuring of Ownership Rectification
We advised the client on the most effective route—formal assignment of trademark rights from the individual to the business entity—ensuring compliance with Saudi trademark regulations.
Step 3: Drafting of Assignment Documentation
Our IP team drafted:
- A Trademark Assignment Agreement
- A Change of Ownership/Ownership Transfer Agreement
Each document was carefully structured to meet SAIP requirements, ensuring clarity on transfer of rights, goodwill, and future enforceability.
Step 4: Translation & Localization
Recognizing the importance of linguistic and legal accuracy in Saudi filings, all documents were professionally translated into Arabic, ensuring consistency between English and Arabic versions.
Step 5: Cross-Border Coordination
We worked in close coordination with our KSA associate partners, managing submissions, clarifications, and procedural follow-ups with SAIP acting as a single point of contact for the client.
Outcome
- The KSA trademark ownership was successfully transferred to the correct business entity
- The application proceeded in full compliance with Saudi trademark law
- No loss of priority or rights occurred
- The UAE trademark was secured smoothly and efficiently
- The client obtained a clear, enforceable trademark position in both jurisdictions
Most importantly, the client gained reassurance that even complex or corrective IP actions such as ownership changes, assignments, or modifications can be handled efficiently when guided by experienced counsel.
This case highlights a critical but often overlooked reality in intellectual property law:
even minor inaccuracies in ownership or filings can have major legal consequences especially in jurisdictions like Saudi Arabia.
ATB Legal Services
ATB Legal Comprehensive Intellectual Property Services
ATB Legal offers end-to-end intellectual property protection and advisory services across the UAE and the Middle East. Our expertise covers the full spectrum of IP rights, including:
- Trademark filing, prosecution, enforcement, oppositions, recordals, renewals, and portfolio management
- Patent filing, prior art searches, drafting support, PCT guidance, and coordination with international patent offices
- Copyright registration, protection, licensing, and infringement advisory
- Design and utility model filings and enforcement
- Anti-counterfeiting measures, including customs recordation and border protection actions
- IP commercialization, licensing agreements, assignments, and due diligence for corporate transactions
- IP strategy, audits, and long-term portfolio management for businesses of all sizes
At ATB Legal, our mission is to protect, strengthen, and maximize the value of your intellectual property assets ensuring your business can innovate, grow, and compete with confidence in the regional and global marketplace.
