Saudi Arabia: Specification Amendments in Trade Mark Opposition Settlements
In Saudi trademark opposition practice, navigating the timing of amendments to a specification of goods or services requires careful planning due to the strict procedural framework of the Saudi Authority for Intellectual Property (SAIP).
SAIP prohibits amendments to a trademark's specification of goods and services between the filing date and final registration. Because this restriciton applies continuously across the prosecution, acceptance, and publication phases, an applicant cannot amend the specification before the opponent allows the application to proceed to registration, even if such amendment is part of the settlement.
After registration, only limited changes are available. In practice, goods or services may be deleted from the specification, but additions or broader amendments are not permitted, even if the proposed wording would narrow the scope of protection.
If the parties agree to limit the specification, the settlement agreement should include clear undertakings, a specific deadline for filing the limitation request, and appropriate consequences if the trade mark owner does not comply.
In case the required change is substantial, it may be better for the applicant to allow the existing application to lapse and file a new application with a revised specification that reflects the agreed position.