The Commercial Law of Kuwait No. 68/1980 and the Implementing Regulations No. 8/1995 issued in the furtherance thereof by the Minister of Commerce & Industry govern the registration process of trademarks and the rights conferred upon an owner of a registered trademark in the State of Kuwait.
What is registerable as a trademark
Words, symbols, phrases, figures, logos, slogans, devices or designs or any combination of the above having a unique and distinctive shape in connection with the goods associated therewith.
What is not registerable as a trademark
A trademark cannot be registered in the State of Kuwait in inter alia any of the following instances:
- marks devoid of any distinctive feature, marks consisting of statements that are mere names given to goods or products by usage, or customary devices and ordinary drawings of goods and products;
- any expression, device or mark against public policy;
- public emblems, flags and other ensigns pertaining to the State, the United Nations or any of its bodies or any State having a reciprocal treatment with Kuwait or any imitations thereof;
- marks of the Red Crescent or the Red Cross and other similar marks and the imitations thereof;
- marks identical to or resembling emblems of pure religious nature;
- geological names, if the use thereof may cause confusion as to the origin or source of the goods;
- another person's name, surname, photograph or emblem, unless his prior approval has been obtained;
- statements pertaining to titles of honour, the lawful entitlement to which applicant is unable to establish; and
- marks which may mislead the public, or which contain false statements as to the origin or other qualities of the products, as well as marks embodying an imaginary, imitated or forged trade names.
What is the procedure for trademark registration
Applications for registration of trademarks must be filed with the Trademark Division of the Ministry of Commerce & Industry in the furtherance of the form (in Arabic) prepared by the Ministry. This form contains the following information:
- Name, profession, address and the tradename of the applicant (if any). If the applicant is a company, its name, address, objects and principal place of business must be stated.
- Name of applicant and place of residence
- Statements of goods, products or services and the Class pertaining thereto
- The place where the enterprise using or intending to use the mark for distinguishing its goods, products or services is located.
- The name and address of the agent, if the application was submitted by the latter.
- The address selected by the applicant in the State of Kuwait to which all correspondence and documents shall be sent.
- The signature of the applicant or his agent.
The Ministry's form must be accompanied by:
- Four photocopies of the trademark.
- Certificate of Registration of the trademark in the country of origin or a declaration that the same is not registered therein (Note: a certificate evidencing the registration of the trademark in another jurisdiction will suffice for the purpose of registration).
- Power of Attorney.
The Certificate of Registration of the trademark as well as the Power of Attorney must be notarised, legalised and consularised by the Kuwaiti Embassy or Consulate in the relevant jurisdiction. Both documents must be translated into Arabic which translation must be approved by the Translation Department of the Ministry of Justice.
Fees for Registration
- KD. 7 (Kuwaiti Dinars Seven) for trademark filing;
- KD. 10 (Kuwaiti Dinars Ten) for trademark publication;
- KD. 7 (Kuwaiti Dinars Seven) for trademark registration.
When the application is accepted, the Registrar of Trademarks will cause the publication of the trademark in three consecutive issues of the Official Gazette Al-Kuwait Al-Youm.
The State of Kuwait adopts the International Classification of Goods and Services of the World Intellectual Property Organisation and the goods and services are classified on the basis thereof.
When and how opposition proceedings are filed
Written oppositions against the registration of the trademark are presented to the Registrar of Trademarks within thirty (30) days as of the date of the last publication of the same in the Official Gazette. The Registrar must forward a copy of the opposition to the applicant for registration who must submit his written response thereon to the Registrar within thirty (30) days. Failing to respond within the prescribed period will nullify the registration process since the applicant will be considered as relinquishing his application for registration.
The Registrar may conduct hearings of the parties before deciding on the opposition. He may accept or reject the registration and such a decision is appealable to the Court of First Instance within ten (10) days as of the date of notification of the Registrar's decision.
What are the consequences of registration
When registered, the date of registration of the trademark and the consequences pertinent thereto will be deemed the date on which the application was first filed. The period of protection for a registered trademark is ten (10) years renewable for similar periods.
In the absence of the receipt of a written application to renew the trademark, the Registrar will notify the owner thereof in writing, at the address shown on the register, of the expiration of the period of protection of the mark. Such a notification must be sent during the month following the expiration of the protection period. Failing to submit the renewal application within the three months following the expiration of the protection period, the Registrar will be entitled to cancel the registration of the mark.
How a trademark registration is cancelled
- By the Registrar pursuant to a court order.
- By the court in the furtherance of the Registrar's application or any other interested party if the application is containing false information.
- By the court if the owner thereof did not use the mark for a consecutive period of five (5) years unless the owner submits a plausible explanation for the non-use of the same.
Cancellation and renewal of the of the trademark must be published in the Official Gazette.
What remedies are available to the owner of a duly registered trademark
Provided the infringement, counterfeit or imitation of a registered trademark is successfully established, the owner thereof can initiate the following actions against the importers, dealers and distributors of the counterfeit trademark:
Criminal Action:
In this connection Article 92 of the Commercial Law provides:
Whoever:
- counterfeits or imitates a trademark duly registered under the law in such a way that misleads the public or uses, in bad faith, an imitated or counterfeit trademark;
- places on his products, in bad faith, a trademark owned by others;
- knowingly sells, offers for sale or circulation or possesses with the intention to sell products bearing a counterfeit, imitated or unlawfully placed trademark, or
- violates in bad faith the provisions of Articles 87-91 (relating to trade description);
shall be punished with imprisonment for a term which shall not exceed three years and a fine not exceeding KD. 600/- or with either of these penalties.
Civil Actions:
Interlocutory Injunction: The owner of the mark may, at any time, even before the filing of a civil action or a criminal case, apply to the Court of Urgent Matters seeking an interlocutory injunction order for the seizure and confiscation of the counterfeit goods including those in the process of importation. This application must be substantiated with the original certificate evidencing the registration of the trademark and other evidence which would establish that the trademark has been counterfeit to the extent that the public might have been mislead.
Claim on the Merits: It is important to note that if the interlocutory injunction is obtained before trial, a claim on the merits has to be filed within eight days as of the date of the injunction order or otherwise the injunction is bound to fail. Under this heading, the owner of the mark may claim compensation for the loss it incurred following the circulation of the counterfeit products in the Kuwait market (i.e., drop in products sales etc.) as well as moral damages for the loss of its reputation.
For further information, please contact Al-Saleh & Partners on Tel No: (965) 246 7670 3 or Fax No: (965) 243 1039 or enter text search 'Al-Saleh & Partners' and 'Business Monitor'.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
