The Five-Year Non-Use Vulnerability Under Article 22 of the GCC Trademark Law

1. What is non-use cancellation?

Non-use cancellation is the procedure by which a Saudi trademark registration can be revoked because the registered owner has failed to use the mark in Saudi Arabia for a continuous period of time. It is governed by Article 22 of the Common Trademarks Law of the GCC States, adopted in Saudi Arabia by Royal Decree No. M/51 of 26/07/1435H.

Under Article 22, a registration can be cancelled on petition of any interested party where the owner has not seriously used the mark in Saudi Arabia for five consecutive years, absent a legitimate justification. The five-year clock runs from the date of registration.

The non-use ground exists to keep the Saudi trademark register clear of “dead wood” — registered marks that no one is actually using, but which nonetheless block fresh applications for similar marks. It is a key tool both for trademark maintenance (for owners who wish to keep their rights alive) and for clearance (for applicants whose preferred marks are blocked by unused prior registrations).

2. Why Saudi law requires use

Trademark rights are not granted as abstract monopolies. They exist to protect signs that function as source identifiers in the marketplace. A mark that sits on the register without commercial use serves none of the purposes for which trademark protection is granted — it does not identify a source, it does not build consumer recognition, and it does not contribute to fair competition.

By making registrations vulnerable to non-use cancellation, Saudi law:

• Encourages registered owners to use their marks commercially,
• Frees up valuable brand vocabulary for genuine market participants,
• Reduces the burden on the register and on subsequent applicants, and
• Aligns Saudi law with international standards reflected in TRIPS Article 19 and the trademark laws of other major jurisdictions.

The five-year period adopted by the GCC Trademark Law is consistent with the standard adopted in most major jurisdictions, including the European Union and the United States.

3. The five-year clock

The five-year non-use period under Article 22 begins to run from the date the registration is granted. A registered owner has a five-year grace period to commence genuine use of the mark in Saudi Arabia. After that, the mark becomes vulnerable to cancellation if it has not been used.

The period must be continuous and consist of five years. Intermittent use that is genuine and commercial can defeat a non-use claim — the law does not require continuous use, only continuous non-use of five years or more.

It is important to note that the five-year period is reset each time the mark is used. Where an owner has used the mark, then stopped, then restarted, the clock starts again from the most recent period of use. A petitioner must establish that there has been a continuous five-year stretch of non-use leading up to the petition.

4. What counts as “serious use”?

Article 22 refers to serious use in Saudi Arabia. Token, sporadic, or sham use is not sufficient to defeat a non-use challenge. SAIP and the Saudi courts look for evidence that the mark has been genuinely deployed in commerce in connection with the goods or services for which it is registered.

Typical indicators of serious use include:

• Local sales of the registered goods or provision of the registered services in Saudi Arabia,
• Advertising and marketing directed at Saudi consumers,
• Use of the mark on packaging, labels, and commercial documents distributed in Saudi Arabia,
• Use of the mark on a Saudi-facing website or e-commerce platform with verifiable sales, and
• Use through licensees or authorized distributors, where the licence is recorded and the use is attributable to the registrant.

Use outside Saudi Arabia — for example, sales in other GCC countries or use on a foreign website not directed at the Saudi market — does not count. The use must be in Saudi Arabia, in connection with the goods or services covered by the registration.

5. The dual-script dimension of use

Saudi trademark applications must include a mandatory Arabic transliteration, and SAIP examines the mark in both Latin and Arabic. A natural question is whether use of only one script form constitutes use of the mark.

In practice, use of either script form will generally count as use of the registered mark, provided it preserves the distinctive character of the mark as registered. Where the registered mark consists of a Latin word and its Arabic transliteration as a single combined mark, use of either form alone may suffice — though prudent registrants use both forms to put the question beyond doubt.

Registrants relying on use in only one script should ensure that the form used corresponds to the mark as actually registered. Material departure from the registered form may not save the registration from a non-use challenge.

6. Legitimate justifications for non-use

Article 22 allows the registered owner to defeat a non-use claim by showing legitimate justification for the failure to use. The justification must be a genuine obstacle to use, not merely a business decision to focus elsewhere.

Recognized justifications include:

• Import restrictions or regulatory barriers preventing the registered goods from entering Saudi Arabia,
• Force majeure — war, natural disaster, or comparable circumstances,
• Regulatory approvals pending for the registered goods (for example, pharmaceutical or food approvals), and
• Pending litigation or other legal impediments outside the registrant’s control.

The justification must be the actual cause of non-use, not a pretext. Ordinary commercial considerations — such as a decision to delay market entry, lack of distribution, or strategic reordering of priorities — will not qualify as legitimate justifications.

7. Who can file a non-use cancellation petition?

Article 22 permits any interested party to petition for non-use cancellation. This is a broad standard and includes:

• Applicants whose own Saudi application has been refused based on the cited registration,
• Brand owners whose marks compete with the registered mark,
• Parties facing an opposition or infringement claim from the registered owner, and
• Other commercial actors with a demonstrable interest in clearing the register.

The petitioner must demonstrate a genuine commercial interest in cancellation. Mere curiosity or abstract concern about register hygiene is not enough, but the threshold is low in practice and is usually met by applicants whose own filings are blocked.

8. Non-use cancellation as a clearance tool

For applicants whose preferred mark is blocked by an unused prior registration, a non-use cancellation action under Article 22 is one of the most effective clearance strategies available in Saudi practice.

The typical workflow is:

• Conduct a pre-filing clearance search of the SAIP register in both Latin and Arabic.
• Identify any prior registrations that block the proposed mark.
• For each blocking mark, investigate whether the registered owner is actually using the mark in Saudi Arabia.
• Where there is no evidence of use and the registration is five or more years old, consider filing a non-use cancellation petition.
• Re-file the applicant’s mark once the blocking registration is cancelled.

This is a particularly valuable strategy where the blocking mark belongs to an inactive or defunct local entity. It is less useful where the blocking owner is a major operator with a clear use record.

9. Burden of proof in a non-use action

In a non-use cancellation action, the burden of proving use rests with the registered owner, not the petitioner. Once the petitioner has shown a prima facie case of non-use — typically by demonstrating an absence of evidence of use in Saudi Arabia — the burden shifts to the registrant to produce evidence of serious use.

This burden allocation reflects the fact that evidence of use is in the registrant’s possession and control. The registrant is best placed to produce sales records, advertising materials, and other commercial documents demonstrating that the mark has been used in Saudi Arabia.

For registrants, this means that maintaining a contemporaneous use file is essential. Documentary evidence of Saudi use should be collected and retained throughout the life of the registration, not assembled reactively when a cancellation petition is filed.

10. Procedural framework

Non-use cancellation petitions in Saudi Arabia are filed before the appropriate forum — in most cases the Administrative Court (Diwan Al-Mazalim) for decisions of SAIP, or before the Commercial Court where the question arises in the context of an infringement action.

The procedure typically involves:

• Filing of the petition setting out the grounds and the alleged period of non-use,
• Service on the registered owner,
• Production of evidence by both sides — with the registrant producing evidence of use and the petitioner producing evidence of non-use,
• Hearings and submissions, and
• A decision cancelling, maintaining, or partially cancelling the registration.

Decisions are subject to appeal in accordance with the applicable procedural rules. Where the petition succeeds, the registration is cancelled and the petitioner may then proceed with its own application without the prior blocking registration.

11. Partial cancellation for unused goods

Where a registered owner has used the mark for some of the registered goods or services but not others, the registration is vulnerable to partial cancellation in respect of the unused items. This is a particularly important issue for older registrations that were filed with broad specifications based on the practices of the time.

Partial cancellation is a powerful tool for applicants because it can carve out exactly the goods or services that block the proposed mark, while leaving the registrant’s used categories intact. This may also make the proceeding less contentious than a full cancellation, which the registrant has strong reasons to oppose.

12. Maintenance: defending against non-use challenges

For registered owners, defending against a non-use challenge is fundamentally a documentation exercise. Best practices include:

• Maintaining a chronological file of Saudi-facing advertising and marketing materials,
• Retaining sales records and distribution agreements showing the mark in use in Saudi Arabia,
• Documenting use on Saudi-facing digital platforms (websites, e-commerce, social media),
• Recording licences and quality-control activities for licensee use, and
• Filing periodic statements of use where the registration covers a broad specification.

Owners with broad portfolios should consider a periodic audit of their Saudi registrations to identify those vulnerable to non-use and either commence use or accept that those registrations may be lost.

13. Strategic considerations

The five-year non-use vulnerability under Article 22 has several strategic implications:

• For applicants: Non-use cancellation is a viable clearance route where blocking marks are old and apparently unused. Investigate before assuming a refusal is final.
• For registered owners: Use the mark, or risk losing it. Defensive filings that are never used are increasingly vulnerable as the register matures.
• For brand owners planning Saudi entry: File only for goods and services you genuinely plan to offer in Saudi Arabia, or expect overly broad specifications to be vulnerable.
• For licensors: Ensure licensee use is genuine, controlled, and properly documented so that licensee activity supports the registration.

14. Summary: Article 22 and the five-year rule

Article 22 of the GCC Trademark Law is one of the most important provisions affecting the lifespan of a Saudi trademark registration. It balances the rights of registered owners against the public interest in a clear, accurate register populated by marks that are actually in use.

Key takeaways:

• A Saudi registration becomes vulnerable to cancellation after five consecutive years of non-use, beginning from the registration date.
• Use must be serious, commercial, and in Saudi Arabia — foreign use and token use do not count.
• Legitimate justifications such as import restrictions or force majeure can defeat a non-use claim.
• Any interested party can file a non-use cancellation petition; the burden of proving use rests on the registrant.
• Partial cancellation is available for unused goods within an otherwise used registration.
• Non-use cancellation is a powerful clearance tool for applicants facing old or apparently inactive blocking marks.
• Registered owners should maintain a contemporaneous use file to defend their registrations.

Understanding the five-year non-use vulnerability is essential both for maintaining Saudi rights and for clearing the way for new applications.