A trade mark is anything which has a distinctive form used in distinguishing goods or products so as to indicate that they belong to the proprietor of the mark either because he has manufactured or selected them, or because he deals in or offers them for sale. A trademark may be words, figures, letters drawings, emblems, devices, engravings, signatures, seals or any other distinctive mark.

A mark proprietor, in order to safeguard his right and be able to protect it from other persons encroachments, he is required to have it entered in the Register of commerce in which shall be recorded the mark, its owner’s name and address and a description of the goods. Later any alteration, transmission or assignment, occurring to the mark, must be inscribed in the Register. The public have the right to inspect the said Register and to take certified extracts there from.
 

General Information of Trade Mark /Service Mark Protection

Duration

10 years from the date of filing and always renewable for like periods, Renewal must be applied for during the last year before expiry or within three months grace period with fine.

Legal Effect

Legal protection is available through registration. Registration confers proprietary right and ownership of a mark cannot be contested after a lapse of five years from registration, provided registrant has made a continuous use of the mark.

Trademark Registrable

Letters, number/digit, surname, first name, if the name is of a third party his approval is necessary, design in colours or colour combination, three dimensional signs, shape of a product or its packing, sound/audible mark, trade dress, any sign expect a sign which is of religious nature, contrary to public order or moral standards.

Trademark not Registrable

Mark having no distinctive features or marks consisting of the usual denomination, description or representation of the product concerned, expressions, designs or marks that are contrary to the public order or morality, representation or imitation of public emblems, flags or ensigns pertaining to the state, or public offices like U.N.O or Red –cross, mark identical to the religious emblem, geographical names if their use is likely to cause confusion to the origin of the goods or any mark for the products of beer(alcoholic), ale, porter, alcoholic beverages and mark likely to deceive the public or comprising false statements of the origin or other features of the goods or marks which contain an imaginary, forged origin.

Goods/Services not protected

Beer (alcoholic), ale, porter, alcoholic beverages, pork and products and all related services thereof.

Classification of goods and services

Kuwait follows international classification, marks for goods and services are registrable, and goods are divided under classes 1 to 34 and services under classes 35 to 42(Nice Agreement), retail services can be protected, maximum one class of goods is allowed in an application, separate applications are required for the goods under different classes, registration can be obtained exactly same as the general wording on the basic registration, class headings (all goods under one class) can be obtained only on the basis of the basic registration.


Print of the Mark

Fifteen prints required for filing an application, the print should conform exactly with the print shown on the basic registration, maximum size of prints should not exceed 5cm x 5cm colour marks are registrable, for filing a colour mark colour prints should be submitted, colour marks and distribution of colours must be specified in the same manner as it is specified in the basic registration.

Applicant

1, An individual or more than one individual in accordance with the basic registration 2, Legal Entity 3, An Association of Manufactures or Producers 4, Government agencies.

Application Requirements

1, Application Form and Power of Attorney

Application form is in Arabic and should be prepared by the local agent, all foreign applicants should appoint their local agent/attorney for filing their applications, a Power of Attorney should be filed along with the application, the name and capacity of the signatory/ies be specified on the power of attorney, Official seal of the applicant‘s company be affixed on the Power of Attorney. A General Power of Attorney may be advisable and can be used for continuous applications from same applicant, Power of Attorney may be used for the whole life of the registration and same can be used for opposition, renewal and assignment, Power must be legalized by the Kuwaiti consul in the applicant country if no Kuwaiti consul, any Arab consul having their consulate in Kuwait, if not legalize it with British Consulate.

2, Certified Copy of the Home Registration

Certified copy of the basic/home Registration (certified copy of application is not acceptable) should be submitted along with the application, an English Sworn translation of the basic registration is necessary, if the Certified copy of the basic registration is not in English, validity of the basic registration must be clearly mentioned in the basic Registration, the applicants name and address should be in accordance with the basic registration, if not the necessary documents proving the changes, should be submitted along with the application. Home/basic registration should be legalized by the Kuwaiti consulate of the applicant country if no Kuwaiti consulate legalizes the same by British Consulate.

Or

In the absence of home registration a certified copy of any foreign (overseas) country’s registration is also acceptable. As a supporting document. Foreign country registration must be accompanied with a declaration from the applicants stating that they have no registration in their home country(suitable declaration form available on request) all these documents should be legalized by the Kuwaiti Consulate or any Arab Consulate having their consulate in Kuwait, if not British Consulate.

Or
Certified copy of the foreign(overseas) country’s registration along with Certified copy of home country application (instead of Declaration) all legalized by the Kuwaiti consulate, if no Kuwaiti Consulate or any Arab consulate having their consulate in Kuwait, if no British consulate.

Or

Certified copy of the foreign country’s registration along with an Official search report showing negative registration of the mark in the applicant’s country. All these documents should be legalized by the Kuwaiti consul, if no Kuwaiti Consulate or any Arab consulate having their consulate in Kuwait, if no British consulate.

Prints of the Mark

Ten prints are required for filing an application, the prints should conform exactly with the prints shown on the basic registration if the mark is not printed on the Home or Foreign Certificate of Registration, the print affixed thereon should be stamped with the seal, of the Trade Marks of Patent Office issuing the certificate, maximum size of prints should not exceed 5cm x 5cm, colour marks are registrable, for filing a colour mark colour prints should be submitted, colour marks and distribution of colours must be specified in the same manner as it is specified in the base registration.

List of Goods

List of goods to register should be in accordance with the basic registration, no deviation is acceptable.

Arabic Translation and Legalization

Any foreign documents attached to the application should be accompanied with English translation must be translated to Arabic and should be legalized by the Ministry of Foreign affairs as well as the Ministry of Justice in Kuwait

Examination of the Application

An application may be rejected due to the following reasons:

1, Formal reasons 2, lack of distinctiveness or descriptiveness 3, Public policy 4, Immortality 5, Resembles to an official symbol 6, resembles of a national flag 7, resembles to surname 8, resembles to a Geographical name or indication 9, Resembles to a prior trade mark application or registration owned by third party.

If the preliminary examination is acceptable to the trade mark office, the first official acceptance may expect within 18 months from the filing date, at least 2 years time is required for an application to register.


Publication of the Mark

After examination, the office may request a disclaimer, if the conditions are accept able to the applicant, the trade mark is allowed for publication in Official Gazette for three consecutive publications. If no opposition is filed within 30 days from the third publication of the Official Gazette, the trade mark is allowed to register in supplemental register.

Opposition

Upon publication, a trade mark application may be opposed by, the owner of a mark previously filed/registered or owner of a non registered famous mark, or any interested party who can file an opposition based on absolute reasons such oppositions should be supported with copies of early registration and details of use.

Legalized Power of Attorney along with some arguments/reason to oppose should be filed along with opposition and the supporting documents can be filed at a later stage. The Registrar shall send, by registered mail, a copy of the notice of opposition to the applicant or his agent who shall, within 30 days from the receipt thereof, send to the Registrar a written counter statement (in duplicate) of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application. Upon study the merits of the opposition the newly applied mark might be rejected or suspended. If two or more persons apply at the same time for the registration of the same mark or nearly identical or similar marks in respect of the same class of product or services the Registrar shall suspend all applications until an assignment approved by all parties in favour of one of them is produced or until a final judgment is rendered in favour of any of the disputing parties. Opposition must be filed within 30 days of the date of the third publication of the official gazette and no extension of days will be allowed in this case.


Appeals against Decision of the Office Decision

Any decision of the trademark Registrar’s Office can be appealed and the same be lodged before a Court within 10 days from notification of the Register’s decision and the appellant must engage a local Attorney to contest his case.


Renewal of the Mark


Always a registered trademark is renewable; the first renewal is due in 10th year from the application date and can be renewed within 12 months prior to the expiry date. Maximum of three months grace period is allowed, with a fine, if the applicant fails to apply for the renewal, the trade mark authority shall, at its own accord; strike off the mark from register.

Legalized Power of Attorney is submitted along with renewal application, old Power of Attorney can also be used.

Original or Certified copy of them registration must be submitted to the office to enter new terms of protection, no other document or translation is necessary for the renewal.



Assignment

Assignment must be recorded before a trademark application/registration is used any proceedings against third party or in order to prevent the mark from being cited by the examiner against new application for a similar mark filed by the assignee.

Deed of assignment should include the transfer of the related business and goodwill, no associated marks are assigned simultaneously in order for the assignment deed valid, and a nominal amount may be indicated in the assignment deed.

Any of the following documents is required to the Office in order to record an assignment:

1, A copy of the original assignment deed or merger agreement.
2, The original assignment deed or merger agreement (or a certified copy thereof).
3, An official certificate issued by a public officer such as Secretary of State, Notary (or a certified copy thereof)
4, Request and furnish the standard form our Office.

Power of attorney from the Assignee and the Assignor along with the any one of the above assignment deed should be legalized by the Kuwaiti consulate in the applicants
Country, if existing, otherwise British consulate.

All foreign supporting documents should be accompanied with English translation and the same should be translated to Arabic and legalized by the Ministry of Justice in Kuwait

Original Or Certified copy of the registration must be sent to the Office for endorsement with the Trademark Office.

Change of Name

Change of Name must be recorded before a trademark application/registration is used any proceedings against third party or in order to prevent the mark from being cited by the examiner against a new application for a similar mark filed by the same owner.

Any of the following documents is required for a change of name.

1, The original extract (or a certified copy thereof) proving the change of name.
2, An Official Certificate issued by a Public Officer such as a Secretary of State, Notary (or certified copy thereof)
3, A simple declaration from the applicant attesting the change of name (available on request)

A Power of Attorney in the new name along with the document proving the change of name must be legalized by the Kuwaiti consulate of the applicant’s country. If no Kuwaiti consul, legalize the same by British consulate.

All documents for change of name, accompanied with English translation (if the document is not executed in English) should be translated to Arabic and legalized the same by the Ministry of Justice in Kuwait.

Original Certificate of Registration must be sent to the agent for endorsement with the Trademark Office.


Change of Address

Change of Address must be recorded before a trademark application/registration is used any proceedings against third party or in order to prevent the mark from being cited by the examiner against a new application for a similar mark filed by the same owner.

Any of the following documents is required for a change of address.

1, Extract of the Commercial Register.
2, An Official Certificate issued by a Public Officer such as a Secretary of State, Notary (or certified copy thereof) may be used
3, A simple declaration from the applicant attesting the change of address(form available in our Office).

A Power of Attorney in the new address along with the document proving the change of address must be legalized by the Kuwaiti consulate of the applicant’s country. If no Kuwaiti consul legalized by British consulate.

All documents for change of address, accompanied with English translation (if the document is not executed in English) should be translated to Arabic and legalized the same by the Ministry of Justice in Kuwait.

Original Certificate of Registration must be sent to the agent for endorsement with the Trademark Office.

Cancellation of a Trademark Registration

If the applicant is not willing to continue his registration may ask for cancellation of the same by simply filing an application along with a fresh specific legalized Power of Attorney and the mark will automatically be removed from the supplementary register.

The competent authority or any interested person may apply with a judgment from the court to strike of any unjustifiably registered marks.

File an application by any interested person through court may order to strike off the registration if it is established that the mark had not been effectively used for five consecutive years.

If the Owner fails to apply for the renewal within three months following the expiry date, the authority shall, at its own accord, strike the mark off the register. Once the mark is struck off it shall not be registered again for the same of similar products or services in favour of a third party except after a lapse of three years from the date of striking off.

Penalties

Any person who,

1. falsifies or imitates a mark registered under the law so as to mislead the public or uses, in bad faith, a falsified or imitated mark;
2. in bad faith, places on his products a mark which is the property of another person;
3. knowingly sells, offers for sale or circulation, or possesses, with intention to sell, products bearing a falsified, imitated or unlawfully placed mark;
4. in bad faith, infringes the provisions of Articles 94 to 98 pertaining to trade descriptions;
shall be punished with imprisonment for a period not exceeding three years and a fine not exceeding Six hundred Kuwaiti Dinars or with either of these penalties.
The owner of a mark may, at any time, even before instituting civil or criminal action, upon application, to the judge competent to hear the civil or criminal action, filed together with an official certificate purporting to the registration of the mark, ask for leave to take precautionary measures as may be required, more particularly the seizure of the instruments or tools used or that may have been used in the commission of the offence, as well as the products, goods, firm style, wrapping materials, papers or any other thing on which would have been placed the mark or descriptions, the subject matter of the offence.
Such seizure may be effected on importing the goods from abroad.
The Court order may also call upon one or more experts to assist the person effecting the seizure in his duty and it may require from applicant to produce a bail.
The seizure proceedings set down in the proceeding article shall be null and void, if not followed, within eight days from the date of effecting the seizure, by the institution of a civil or criminal action against the person in respect of whom such proceedings had been taken.
The Court may, in any civil or criminal action, order the forfeiture of the articles seized or to be seized for deducting the price thereof from damages awarded or fines, or the disposing thereof in any other way as may be deemed expedient by the Court.
The Court may also order the destruction of the illegal marks and, when expedient, the destruction of the products, wrapping materials, packing materials, firm styles, catalogues and other things bearing such mark or trade descriptions, as well as the destruction of instruments and tools used, particularly, in the falsification operation; it may also order, even in case of acquittal, the destruction of all the aforesaid.
The Court may order publication of the judgment in the Official Gazette at the expense of the adjudged person.

Classes of Products and Services


Class-1- Chemical products used in industry, science, photography, agriculture, horticulture and forestry; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry.

Class-2- Paints, varnishes and lacquers; preservatives against rust and against deterioration of wood; colouring matters, dyestuffs, mordents; natural resins; metals in foil and powder form for painters and decorators.

Class-3- Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, cosmetics, hair lotions.

Class-4- Industrial oils and greases (other than edible oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; all kinds of candles and wicks.

Class-5- Pharmaceutical, veterinary and sanitary substances; sick children’s food; plasters, material for bandaging; material for stopping teeth and dental wax; disinfectants; herbicides and insecticides.

Class-6- Unwrought and partly wrought metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains(1) (except driving chains for vehicles); cables and wires (non-electric) locksmiths’ work; metallic pipes and tubes; safes and cash boxes; steel balls, horse-shoes; nails and screws, other goods (not included in other classes) in non-precious metals; ores.

Class-7- Machines and machine tools, motors (except for vehicles); machine belting and couplings (except for vehicles); large size agricultural implements; unloading equipment.

Class-8- Hand tools and instruments; cutlery, forts and spoons; side arms.

Class-9- Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counter freed apparatus; talking machines; cash registers; calculating machines; fire-extinguishing apparatus.

Class-10- Surgical, medical, dental and veterinary instruments and apparatus (including artificial limps, eyes and teeth).

Class-11- Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes

Class-12- Vehicles; apparatus for locomotion by land, air or water.

Class-13- Firearms; ammunition and projectiles; explosive substances; fireworks.

Class-14- Precious metals and their alloys and goods in precious metals or coated therewith (except cutlery, forks and spoons); jewellery; precious stones; chorological and other chronometric instruments.

Class-15- Musical instruments (other than talking machines and wireless apparatus).

Class-16- Paper and paper articles, cardboard and cardboard articles; printed matter, newspapers and periodicals, books; book-binding materials; photographs; stationery, adhesive materials (stationery); artists’ materials, paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards, (printers’) type and clichés (stereotype).

Clas-17- Gutta percha, indiarubber, balata and substitutes, articles made from there substances and not included in other classes; materials for packing, stopping or insulating; asbestos, mica and their products; hose pipes (non-metallic).

Class-18- Leather and imitations of leather and articles made from these materials and not included in other classes; skins, hides; trunks and traveling bags; umbrellas, parasols and sticks; whips, harness and saddlery.

Class-19- Building materials; natural and artificial stone, cement, lime, mortar, plaster and gravel; earthenware or cement pipes; road making materials; asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots.

Class-20- Furniture, mirrors, and frames; articles (not included in other classes) consisting of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone, sheel, amber, mother-of-pearl, meerschaum, celluloid, and substitutes for all these materials.

Class-21- Small domestic utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (other than for colouring) and brush making materials; instruments and material for cleaning purposes; steel wool; glassware, porcelain and earthenware (not included in other classes).

Class-22- Ropes, string, nets, tents, sunshades, (awnings), tarpaulins (other than those used as floor mats) sails, sacks, padding or stuffing materials (hair, capoc, feathers, seaweed & Co.); raw fibrous textile materials.

Class-23- Yarns, threads.

Class-24- Tissues; bed and table covers; textile articles not included in other classes.

Class-25- Clothing, including boots, shoes and slippers.

Class-26- Lace and embroidery; rib bands and braid; buttons, press buttons, hooks and eyes; pins and needles; artificial flowers.

Class-27- Carpets, rugs, mats and matting; linoleums and other materials for covering floors; wall hangings (non-textile).

Class-28- Games and playthings; gymnastic and sporting articles (except clothing); ornaments and decorations for Christmas trees.
Class-29- Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; the various kinds of jams, eggs, milk and other dairy products; edible oils and fats; preserves, pickles.

Class-30- Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and iced confectionery; honey, treacle, yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices; ice.

Class-31- Agricultural, horticultural and forestry products and grains (not included in other classes); living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals.

Class-32- Mineral and aerated waters and other non-alcoholic drinks; other preparations for making beverages.

Class-33- Raw or manufactured tobacco; smokers’ articles; matches.Services

Class-35- Advertising business management; business administration; office function.

Class-36- Insurance; financial affairs; monetary affairs; real estate affaires.

Class-37- Building construction; repair; installation services.

Class-38- Telecommunications.

Class-39- Transport; packaging and storage of goods; travel arrangement.

Class-40- Treatment of materials.

Class-41- Education ; providing of training; entertainment ; sporting and cultural activities.

Class-42- Providing of food and drink; temporary accommodation; medical hygienic and beauty care; veterinary and agriculture service; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes.