Apr 17, 2024 (Newsletter Issue 3/24)
New Practice for Refused Trademarks Implemented
The Saudi Authority for Intellectual Property (SAIP) has recently put in place several amendments to its practice.
One of the latest changes SAIP has introduced is the cancellation of granting applicants a 10-day period to amend the form of their refused trademark applications and they start using outright rejections after examination for trademarks that do not meet the formal and legal requirements, entitling applicants to only one venue, which is that of filing appeals within a non-extendable period of 60 days before the Appeals Committee.
Trademark applicants are now advised to be more accurate and careful in weighting all possible scenarios before submitting their trademark application, which could lead to possible rejections.
Source: www.jahip.com
Mar 05, 2024 (Newsletter Issue 2/24)
Protection Duration of Industrial Designs Extended
In line with the amended patents, industrial designs, integrated circuits and plant varieties law No. 197 dated Sep. 19, 2023 issued by the Saudi Authority for Intellectual Property (SAIP), the validity of industrial designs has been extended from ten (10) years to fifteen (15) years. Currently, the 11th annuity fees for active designs filed in 2013 must be settled before May 23, 2024, to benefit from the extension of the protection period.
Source: www.jahip.com
Nov 07, 2023 (Newsletter Issue 9/23)
12th Edition of the Nice Classification Adopted
In a remarkable step towards developing its intellectual property framework, the Saudi trademarks office (SAIP) has taken a great step by adopting the 12th edition of the Nice Classification. This update marks a jump from the outgoing 11th edition.
Some of the salient changes that came along with this adoption is that class heading can no longer be claimed whilst the selection of goods should be in exact conformity with the list of goods of the 12th Edition of the Nice Classification.
Source: www.jahcoip.com
Jan 12, 2023 (Newsletter Issue 1/23)Legalization of Documents by Apostille SufficientOn 7 December 2022, the Convention of 5 October 1961 Abolishing the Requirement of Legalization for Foreign Public Documents (1961 Apostille Convention) entered into force in Saudi Arabia, following the deposit of the instrument of accession on 8 April 2022.
The above decision was enacted by Royal Decree No. M/40 and published in the Official Gazette No. 4916 of 7 January 2022. The Saudi authorities have started accepting Apostilled documents for proceedings of patents, trademarks, and designs.
Source: JAH Intellectual Property, Qatar Jun 30, 2022 (Newsletter Issue 8/22)Official Publication Fees ReducedThe official publication fees for new trademark applications and recordals have been reduced with effect from 9 June 2022. This reduction applies retroactively to all trademark applications pending examination, regardless of the filing date or recordal filed after that date will be subject to the new fees.
According to the online payment portal, the new publication fees in local currency (including VAT) are as follows:
- Publication fees for opposition purposes for regular trademarks, series of marks, or a collective mark: 575 SAR
- Publication fees for effecting renewals, license, or mortgage of trademark registration: 1,150 SAR
- Publication fees for recordal actions such as change of name and/or address, assignment, merger, or amendment of trademark registration: 575 SAR
Source: JAH & Co. IP, Qatar Feb 24, 2022 (Newsletter Issue 3/22)Accession to The Hague Convention ApprovedThe Council of Ministers of Saudi Arabia enacted the Royal Decree M/40 dated 26/05/1443 H approving the Kingdom’s accession to the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille). It is expected that the legal formalities for accession will be completed during the year.
Under current practice, official documents such as Powers of Attorney must be legalized in order to be recognized by the authorities in Saudi Arabia.
Source: JAH & Co. IP, Qatar Oct 20, 2021 (Newsletter Issue 15/21)Trademark Enforcement Matters Assigned to SAIPPursuant to Ministerial Decree No. 496 of 2018, the Ministry of Commerce has delegated trademark enforcement matters to the Saudi Intellectual Property Authority (SAIP).
As a result, as of August 15, 2021, trademark legal actions may be pursued through SAIP’s platform www.saip.gov.sa and its online portal.
Source: JAH & Co. IP, Qatar May 06, 2021 (Newsletter Issue 9/21)
Accession to Nice Agreement
On April 22, 2021, the Government of Saudi Arabia deposited its instruments of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977, and as amended on September 28, 1979.
The Nice Agreement will enter into force, with respect to the Kingdom of Saudi Arabia, on July 22, 2021.
Source: www.wipo.int
Jan 28, 2021 (Newsletter Issue 2/21)
Registration of Collective Marks Containing Geographical Indications
The Saudi Authority for Intellectual Property (SAIP) has recently launched a service for the registration of collective marks containing geographical indications in line with the international practices.
SAIP explained that collective marks containing geographical indications can be registered for products that have specific geographical origin, specifications or reputation attributed to that origin. The registration of such collective marks contributes to the distinction of geographical origin, materials, manufacturing method and other common characteristics of goods or services.
Source: www.agip.com
Oct 08, 2020 (Newsletter Issue 16/20)
Accession to Vienna Agreement
On September 3, 2020, WIPO notified the deposit by Saudi Arabia of its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.
The said instrument of accession contained the following declaration:
- In accordance with Article 16(2) of the Vienna Agreement, the Kingdom of Saudi Arabia does not consider itself bound by the provisions of paragraph (1) of Article 16 relating to the settlement of any dispute before the International Court of Justice.
The said Agreement will enter into force on December 3, 2020.
Source: www.wipo.int
May 28, 2020 (Newsletter Issue 8/20)VAT Rate Increased SoonThe Saudi Minister of Finance announced an increase of the value added tax (VAT) rate from 5% to 15% as of July 1, 2020.
The VAT was introduced in January 2018 and applies to goods and services, with some limited exceptions on basic food items, healthcare, and education.
Source: JAH & Co. IP, Qatar Mar 21, 2019 (Newsletter Issue 4/19)Official Trademark Filing Fees ReducedOn March 7, 2019, the Saudi Minister of Commerce and Investment has promulgated a Ministerial Decision reducing the official fees for filing, registration, search and renewal of trademarks whereas increasing official fees for trademark assignment recordation and amendment of the form of registered trademarks. The decision will be effective upon publication in the Official Gazette.
The new official fee for filing a trademark application will be SAR 200 (paper and electronically) instead of SAR 1,000. The e-publication fee is SAR 3,000 for foreign companies and SAR 1,500 for local companies stays the same, and the registration fee will be SAR 3,500 instead of SAR 5,000.
A copy of the Ministerial Decision along with the list of new fees and its English translation is available here
Source: JAH & Co. IP, Qatar Jan 16, 2018 (Newsletter Issue 1/18)New VAT Rate EffectiveAs of January 1, 2018, Value Added Tax (VAT) of 5% will be applied in Saudi Arabia in relation of goods and services.
Professional (attorney) charges of all new intellectual property IP cases and pending cases to be completed on or after January 1, 2018, will be bound to the new VAT rate.
Furthermore, publication fees of all types of trademark applications such as new, renewal and recordal applications have increased by 5% and shall be included in the VAT.
Source: JAH & Co. IP, Qatar Dec 20, 2017 (Newsletter Issue 22/17)PoA Validity Term DeclaredThe Trademark Office in Saudi Arabia declared that the validity of the Power of Attorney (PoA) is now five years from the date of issuance, unless the duration on the PoA is stated unlimited or the POA is revoked.
The above directives are put into effect by a memo issued by the Ministry of Justice on March 15, 2016, but was implemented recently by the trademark authorities.
It is worth noting that a scanned colored copy of the PoA will be sufficient at the time of filing in support of trademark application. The original document may be submitted at a later stage.
Source: JAH & Co. IP, Qatar Nov 22, 2017 (Newsletter Issue 20/17)Value Added Tax Rate Implemented SoonSaudi Arabia and the United Arab Emirates are set to implement VAT (Value Added Tax) in their jurisdictions. The VAT will apply to goods and services at the standard rate of five percent, with some limited exceptions on basic food items, healthcare, and education.
All IP matters in Saudi Arabia and United Arab Emirates filed as on January 1, 2018, will be subject to VAT, as well as all pending stages for the previous work.
The VAT Law is based on the common principles agreed by all Gulf Cooperation Council countries as outlined in the GCC VAT framework agreement. Each member state of the GCC (which also includes Bahrain, Kuwait, Oman, and Qatar) is expected to establish their own separate national legislation concerning the VAT and as such the detailed compliance requirements and set of rules.
Source: JAH & Co. IP, Qatar Apr 12, 2017 (Newsletter Issue 7/17)Administrative and Reduced Opposition Procedure NowSaudi Arabia has updated its opposition procedure from a legal to a purely administrative proceeding with the adoption of the Gulf Cooperation Council Trademark Law in the country. The oppositions are now filed with the Trademark Office instead of the Board of Grievances (first instance court) which used to be the case.
Further, the opposition period has been reduced from 90 to 60 days accordingly from the last publication date in the Official Gazette, not extendable.
Source: JAH & Co. IP, Qatar Feb 22, 2017 (Newsletter Issue 4/17)Publication Fees for Trademark Recordals IncreasedThe Saudi Trademark Office issued an official circular, announcing an increase in the official publication fees for the following trademark recordal actions:
- Recordal of assignment or merger from SAR 500 to SAR 1,500
- Recordal of change of name and/or address from SAR 500 to SAR 1,500
- Recordal of license agreement or cancellation of the same from SAR 1,000 to SAR 2,000
- Recordal of mortgage agreement of a trademark or cancellation of the same from SAR 1,000 to SAR 3,000
- Amendment of goods and services by removing or restricting the list of goods and services from SAR 1,000 to SAR 1,500
- Amendment of the form of the mark for trademark registration from SAR 500 to SAR 1,500
- Cancellation of a trademark registration by owner SAR 3,000
- Change of name and address of agent for service from SAR 500 to SAR 1,500
The above increase in the official publication fees will come into force from February 19, 2017 and will be applied retroactively for recordals already filed with the Trademark Office.
Source: JAH & Co. IP, Qatar Oct 12, 2016 (Newsletter Issue 18/16)Trademark Registration Fees IncreasedThe Saudi Trademark Office has officially increased the fees of trademark registration. The GCC TM Law and its Implementing Regulations had been published at the Official Gazette in Saudi Arabia (Um Al- Qura), issue No. 4625, on July 1st, 2016; pursuant to the Saudi Royal Degree No. M/51 dated April 26, 2014.
The new official fees as per below are applicable as of October 2, 2016:
Filing Fees USD 270/SAR 1,000
Publication Fees USD 800/SAR 3,000
Registration Fees USD 1,335/SAR 5,000
The official fees for filing and publication have remained unchanged whereas the registration fees have been increased from USD 800 to USD 1,335 USD.
It remains to be seen whether the fees increase will retroactively apply to the pending applications or if there are going to be changes concerning renewals, recordals. So far there has been no official notification in this regard yet.
Source: JAH & Co. IP, Qatar Sep 13, 2016 (Newsletter Issue 16/16)Major Procedural and Fee Changes ExpectedThere are major procedural and fee changes in Saudi Arabia expected. The GCC TM Law and its Implementing Regulations had been published in the Official Gazette in Saudi Arabia (Um Al- Qura), issue No. 4625, on July 1, 2016. Pursuant to the Saudi Royal Degree No. M/51 dated April 26, 2014, the GCC TM Law shall come into force in Saudi Arabia within 90 days from the publication of the Implementing Regulations of the GCC TM Law (September 27, 2016).
Following is the verbal information provided by the Saudi Trademark Office:
1. Possible hike in official trademark registration fees from USD 1,870 to USD 2,400.
2. The opposition period will be shortened from the current 90 days to 60 days for all new applications filed on or after the implementation of Law.
3. The oppositions are to be filed with the Higher Committee of the Trademark Office, swapping the current practice of filing opposition with the court.
4. There would be official fees for appeals to Minister & Oppositions.
5. Similar to the implementation of GCC Trademarks Law in other gulf states it is expected that the increased fees would be applied retroactively for pending applications in terms of publication and registration.
Source: JAH & Co. IP, Qatar Apr 05, 2016 (Newsletter Issue 6/16)Official Renewal Publication Fee IncreasedAs form March 24, 2016, new official publication fees for renewal of trademark registration has been implemented. The Saudi Trademark Office has raised the official publication fees from SAR 300 to SAR 3,000 for each class. The total official fees for trademark renewal per class are 6,000 SAR or 1,600 USD.
Further, the renewal of trademarks will be filed and completed online.
Source: JAH & Co. IP, Qatar Sep 29, 2015 (Newsletter Issue 15/15)Increase of Official Fees ExpectedIt is expected that the official fees for the publication of renewals and recordal of assignments in Saudi Arabia will be increased from 15 October 2015.
Please be advised that the old fees of said publication of assignments were SAR 500 and for renewals SAR 300. The new fees is expected to be SAR 3000 for both.
Source: JAH & Co. IP, Qatar Jun 10, 2014 (Newsletter Issue 9/14)
Deadline for Submitting PoA Changed
The Saudi Trademark Section of the Ministry of Commerce and Industry announced that the new deadline for submitting a PoA will be 90 days from the date notification is received from the office. Previously, the PoA had to be submitted within 30 days of the filing date. This change comes as a result of the introduction of an electronic filing system.
Source: INTA Bulletin, Vol 69, No. 10 of June 1, 2014; Saba & Co. IP, Head Office, Lebanon and Salem Law Firm, Jordan
Mar 18, 2014 (Newsletter Issue 5/14)New Scale for Filing and Registration NumbersThe Saudi Trademark Office has started to adopt one number for the trademark which will be used as filing and registration number at the same time. This number is the electronic reference of the mark which starts with the Lunar year, for instance: 143500541. The system will restart the counting at the beginning of every Lunar year.
Source: JAH & Co. IP, Qatar Feb 04, 2014 (Newsletter Issue 2/14)E-Publication Fees IncreasedOn 14 January 2014, the Saudi Trademark Office (STO) has announced that the official e-publication fees for all new trademark applications has been increased with immediate effect.
The e-publication fees of new trademarks are SAR 1,500 (EUR 290) for local companies and SAR 3,000 (EUR 590) for foreign companies.
Source: JAH & Co. IP, Qatar Dec 17, 2013 (Newsletter Issue 18/13)E-Filing PracticeThe new Saudi electronic system adopts basically the Nice Classification of Goods and Services and accordingly the main items in the respective class heading should merely be included and not all the goods falling in the relevant list of goods of the Nice Classification or the goods or services requested by the applicant.
In this perspective it should be noted that Saudi Arabia does not adopt a subclass system which means that registration of a trademark in a certain class of goods or services provides a legal protection for any items in that class though it is not clearly indicated in same. Also, the Saudi Trademarks Registrar will not allow the registration of a similar or identical trademark for different goods or services in the same class.
According to a recent arrangement introduced by the Saudi Trademark Office, trademark applications will be accepted on formal grounds only if they comply with the above.
Given that trademark applications can only be submitted electronically, all applications with an item that is not in line with the above will not be properly docketed into the system, which will basically result in considerable delays.
Source: JAH & Co. IP, Qatar Oct 01, 2013 (Newsletter Issue 14/13)Electronic Filing Now PossibleThe Saudi Trademark Office announced that it has started receiving electronic filing of new trademark applications.
According to the Office, all attorneys and agents can file their trademark applications through the new system in Saudi Arabia which will be under testing for a limited period of time.
The new filing system requires uploading the legalized Power of Attorney to be submitted in original copy.
The new filing system will capsulize the trademark registration process which may be complex and requires the necessity to meet many requirements within strict time deadlines.
Source: JAH & Co. IP, Qatar Jul 02, 2013 (Newsletter Issue 10/13)Official Weekend ChangedPursuant to the Royal Decree issued by King Abdullah Bin Abdulaziz No. A/185 dated 14 Sha’aban 14340 H corresponding to 23 June 2013, the official weekend in Saudi Arabia has changed from Thursday - Friday to Friday – Saturday starting 29 June 2013, to align its banking and business days with most of the region and to better serve its economy and international commitments.
Source: JAH & Co. IP, Doha, Qatar Jan 18, 2013 (Newsletter Issue 1/13)Accession to Nice AgreementThe Tenth Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification) has been officially adopted in the Kingdom of Saudi Arabia, according to the Trademark Office at the Ministry of Commerce and Trade.
The Trademark Office is now ready to receive trademark applications for goods and services under the same edition of the classification.
The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. The system groups products into 45 classes and allows users seeking to trademark a good or service to choose from these classes as appropriate.
Source: JAH & Co. IP, Doha, Qatar Dec 04, 2012 (Newsletter Issue 18/12)Amendments to Trademark Law The Ministerial Decision No. 1147 dated October 16, 2012 of the Saudi Ministry of Commerce and Industry became effective as of the date of its publication.
The main amendments are listed as follows:
- Renewal applications are only examined to ensure a legalized power of attorney in the name of the agent renewing the mark and the original registration certificate of the mark are enclosed with the renewal application.
- The Trademark Office will publish a notification that indicates the trademark’s assignment and includes: trademark’s description; number and date of trademark registration; name of previous trademark owner; name of new trademark owner, his nationality and address
- The Trademark Office will publish notices on trademarks cancelled on the website of the Ministry of Commerce and Industry. Before such publication was made in the Official Gazette "Umm Al Qura".
Source: JAH & Co. IP, Doha, Qatar Nov 19, 2012 (Newsletter Issue 17/12)
Publication in Official Gazette No Longer Requested
The publication in the Official Gazette (Um Al Qura) is no longer requested in Saudi Arabia.
By pursuant of the Ministerial Decree No. 1147 dated 16 October 2012 the Ministry of Commerce and Industry (MOCI) provides for publication of different request and applications concerning trademark in the Ministry of Commerce website instead of the Official Gazette "Umm Al Qura".
The Decree amended several Articles in the Implementing Regulations of Trademark Law including the provisions organize publication of accepted applications, renewal applications; assignment applications; license applications, cancellation requests of mortgage and license and Administrative and Court cancellation decisions of trademark registrations.
The decision allows publication of the above requests in the website of ministry of commerce and industry (MOCI) or any other place determined by MOCI.
The decision became effective upon on its publication in the Official Gazette.
Source: SMAS IP, Saudi Arabia
Mar 27, 2012 (Newsletter Issue 5/12)Trademark Office Online ServicesThe Trademark Office of Saudi Arabia has recently launched an online service through the Ministry of Commerce official website www.mci.gov.sa
Interested parties can easily check the status of Saudi trademark applications by simply inserting the filing number in the designated field.
Source: SMAS IP, Saudi Arabia Nov 08, 2011 (Newsletter Issue 13/11)Validity of the PoA AmendedThe Saudi Arabian Trademark Directorate has issued a new directive declaring that as of November 27, 2011, the validity of the Power of Attorney is ten Hegira years which is equivalent to nine year and eight months according to the Gregorian Calendar and is calculated as from the date of the stamp of the Saudi Arabian Embassy abroad on the power of attorney.
The validity of the trademark registration in Saudi Arabia is ten Hegira years (equivalent to approximately nine years and eight months according to the Gregorian calendar) as from the filing date. As the renewal fees of a trademark registration can be paid during the last 12 Hegira months of the current protection period it will be possible to use the same power of attorney used for filing the application if the renewal instructions are received at the beginning if the lat year protection period to avoid executing a fresh power of attorney for renewal and unnecessary disbursements.
Source: JAH & Co. IP , Doha, Qatar Oct 25, 2011 (Newsletter Issue 12/11)Legalization of Power of Attorney RequiredThe Saudi Trademarks Directorate announced that all new trademark applications should be accompanied with a copy of a legalized power of attorney provided that the original of same should also be submitted at a later stage after filing for verification, effective 27 November 2011. No new trademark applications will be accepted for filing without a legalized power of attorney as per the current practice. Also, the validity of the legalized powers of attorney will be ten years only.
Source: JAH & Co. IP , Doha, Qatar Legal basis is the GCC Trademark Law adopted by Kingdom of Saudi Arabia, effective from September 27, 2016.
Saudi Arabia is a member of Paris Convention.
Trademark protection is obtained by registration.
Member of Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents as of 7 December 2022.
Nice classification, 12th edition
Exceptions: No trademark protection can be achieved covering alcoholic goods in class 33 and alcoholic beer in class 32, Christmas trees and related articles (class 28 & 31), pork meat (class 29), as well as related retail services in class 35.
Art. 2 of the GCC Law determines the following non-exhaustive list of registrable trademarks: As a trademarks shall be considered anything having a distinctive form such as names, words, signatures, letters, symbols, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, figurative elements, shapes, colours and colour combinations or any other mark or group of marks if used or intended to be used either to distinguish goods, products or services of a facility or other facilities or to indicate the rendering of a service or the control of inspection of goods or services. The voice or odor shall be considered as part of the trademark.
The following trademark types are registrable: trademarks, service marks, collective marks, sound marks, smell marks, color marks, and certification marks.
As of 30 October 2020, the Saudi Authority for Intellectual Property (SAIP) announced that the definition of a trademark has been broadened and now allows the registration of surnames as marks. The SAIP will assess several aspects when examining surname trademark applications, including but not limited to:
• If the surname complies with the conditions and formal registration requirements related to trademarks;
• If the mark is the surname of the applicant;
• If the surname has been in commercial use for a time period that is not less than 10 years;
• If the surname is protected by a foreign trademark registration, then the applicant must submit a copy of the registration certificate;
• If the surname is considered a component of the mark and not the mark itself.
It is worth noting that surnames that are not allowed to be registered as trademarks are tribal or clan names.
The trademark application is filed at the Trademark Office electronically through a portal on their website. A separate application has to be filed for each class and a separate sum of official fees is to be paid for each class.
Foreign applicants need a local agent.
It is permitted under the practice of the Saudi Trademark Registrar to file trademark applications and obtain a filing number and date as well as the official filing certificate with uploading a simple coloured copy of the Apostilled/legalized power of attorney on the portal of the trademark office the original of which can be submitted at a later stage after filing for verification with no limit and at no additional cost. A power of attorney must also be dated. Any power of attorney without an express date of execution is void.
The validity of the Apostilled/legalized powers of attorney will be five Hegira years (equivalent to approximately four years and 10 months according to the Gregorian calendar) and is calculated as from the date of the stamp of the Saudi Arabian Embassy abroad on the power of attorney.
Foreign applicants do not need a domestic registration.
The application process includes formal, absolute and relative grounds which includes an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use. If a trademark application gets rejected due to absolute and relative grounds the examiner allows to the applicant to amend the mark within 10 working days if there is a conflicting cited or ii) the mark is considered descriptive or generic or iii) it is not registrable due to any other reason stipulated in the trademark law or (iv) there is a disclaimer condition or certain descriptive terms ; otherwise, the application will be officially considered as rejected. Appeal to the Appeals Committee is possible within sixty days from the notification date of the initial rejection which also subject to appeal before the Administrative Court within 60 days of decision of Appeals Committee.
The processing time from first filing to registration is approx. 5-6 months.
The first office action is taken after approx. one week.
The trademark application is published on the website of Ministry of Commerce and Industry (MOCI) at the following link: http://eservices.mci.gov.sa/Eservices/Commerce/Trademarks.aspx
Trademark registration certificates are issued electronically in lieu of paper format without hard copies.
Pursuant to Ministerial Decree No. 496 of 2018, the Ministry of Trade has delegated the matters of trademark enforcement to the Saudi Authority for Intellectual Property (SAIP).
As a result, trademark legal actions may be pursued through SAIP’s platform and its online portal as of August 15, 2021.
National:
The opposition period is 60 days from publication date of the application in the Official Gazette, non-extendable.
A trademark registration is valid for 10 years according to the Hegira (Islamic) calendar (approximately 9 years and 8 months according to the Gregorian calendar) as from the filing date. The registration is renewable for periods of 10 Hegira years (9 years and 8 months). The registration is renewable for equal periods.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is SAR 1,000 (paper and electronically). The publication fee for opposition purposes for regular trademarks, series of marks, or a collective mark is SAR 500. The registration fee is SAR 5,000.
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General Trademark Regulations
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Jul 30, 2024
JAH Intellectual Property, Doha, Qatar
