FAQ's Regarding Trademark

1. What is the date and number of the current trademark law?
The current law No.2 (commercial code) came in to force on January 23, 1961

2. Is the country a member of Paris convention?
No

3. What membership or affiliation or treaties your country already signed?
a. Gulf cooperation council (G.C.C)
b. WIPO
c. WTO
d. GCC Patent Law treaties

4. Does the trademark law provide for Licenses?
No, there is no provision for licenses (or registered users) in trademark law

5. My company's name is entered on the Trade Register: should it be registered as a trademark?
A trademark is any symbol used to distinguish a product or service of a company. So, if your company name fits this definition, it may be a trademark. And you can seek protection of your trademarks for international clients the registration seeks on the basis of a basic registration. If your basic registration allows the protection of company name we can apply for the same.

6. Can an advertising slogan be registered as a trademark?
A trademark is any symbol used to distinguish a product or service of a company. So, an advertising slogan, which fits this definition, may be a trademark (refer mark registrable). And you can seek protection, for international clients the registration seeks on the basis of a basic registration. If your basic registration allows the protection of company name we can apply for the same

7. Can a smell or a sound be registered as a trademark?
A trademark is any symbol used to distinguish a product or service of a company. So, a smell or a sound, which fits this definition, may be a trademark. However, you should bear in mind that the trademark must be capable of graphic representation, so the smell or sound will have to be able to be registered as “the smell of ...” or “the sound of ...”.

8. Can I register an idea or a concept as a trademark?
No, a trademark is any symbol used to distinguish a product or service of a company. An idea or a concept does not fit this

9. Can I register retail services?
Yes

10. If an application for a device mark is filed in colour, is there any benefit for filing the same application in black and white?
A mark registered in colour, the protection available only for that particular colour, however if a mark registered in black and white will protect for all colours.

11. Is use of products or services necessary for filing & maintaining a trademark?
Use is not necessary for the seeking protection of a trademark and no certificate of use is necessary for the renewal of a trademark. However 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

12. Is it necessary the basic certificate of registration is valid at the time of filing an application?
Yes, the validity of registration should clearly mention on the basic registration if it is not mentioned an official documents stating the validity of the trademark issued from the appropriate authority should be submit.

13. My country is not having Kuwaiti consulate or embassy for legalization of the document what step I should take for legalizing these documents?
If a country doesn’t have the Kuwaiti consulate it is appropriate for you to legalize the document with British consulate. And the same we can additionally legalize with British consulate in Kuwait.

14. What is the minimum period for the registration of a trademark?
It depends with the process of application inside the ministry; normally it will take 18 months for an application to complete the process for registration.

15. What does “refusal on absolute grounds” mean?
Trademarks Office has had legal power to refuse an application on specific grounds: for the purposes of the Law, the “mark” filed are not considered to be able to be a “trademark” for one of 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

16. What does “refusal on relative grounds” mean?
Trademark office able to reject a trademark on “relative grounds”: this is where the application is rejected because the trademark already exists and other parties have prior rights to the mark. Rejection on relative grounds may be obtained through the opposition procedure. This right may be granted either to the public, which will reject the application.

17. What is a disclaimer condition? Is it imposed for all application?
It is a condition imposed by the Registrar for multi worded applications, The Registrar will accept the application only if the applicant agrees in writing not to use the trademark separately and use it as a whole in the same form as applied.

18. What is associated mark? Is it necessary to link together with the registration applied for?
Associated marks are identical or similar marks owned by the same person and used for the same or similar classes of goods or products. The marks or their distinctive characters, the registration of which is applied for separately, shall also be deemed as associated marks. Upon examination of the application the Registrar will impose condition to associate such marks. Normally applying additional entries to makes the link.

19. Can I use a trademark, which has been rejected by the Trademarks Office?
In principle, there is nothing to prevent you using it to market your products or services. However, it will not be protected. Since it is not protected, you risk being sued by third parties.

20. If I am interested can I apply for trademark cancelled by its owner?
You have to wait three years from the struck of date for apply for the registration of a mark cancelled by its owner.

21. What is meant by “3D mark”?
A 3D mark is a synonym for a shape mark. For example, the shape of a bottle registered as a trademark.

22..What is the difference between a trademark applied for and a registered trademark?
A trademark is only registered if, when the application is filed, it has met certain requirements and if the procedure has been able to be followed properly. Several months elapse between application and registration without affecting the inception of the protection.

23. What is the difference between a firm of trademark Agent and the Trademarks Office /competent authority?
The Trademark Office is the official body responsible for the registration of trademarks. The Office ensures that the mark accepted will uniformly protected by Law. It is a public body, which administers the Register and regulated by Government.
A trademark agent is a person or a firm specializing in the area of industrial property who or which will advise and guide any person interested in that area. It is compulsory for an International applicant to appoint their agent to act on their behalf for the process of trademark in Kuwait

24. Can I file my application directly?
For Kuwaiti applicants, it is possible to file their application directly, but most of the application is processed through trademark agent/attorney. For international applicants it is necessary to appoint their local agent and a suitable Power of Attorney should be submitted along with the application.

25. If I change my trademark while it is in existence (e.g. by modernizing the lettering), am I still protected or do I have to file another application?
The protection applies to the mark as it was filed. Any change in the distinctive aspect of the mark requires a new application. However in certain cases the slight changes possible through entries for details contact us.

26. Can I fill the application to register my trademark in English?
No, applications are filed in Arabic, the official languages and your agent will process your application

27. For how long is a filed application valid?
An application filed for a trademark, followed by registration, is valid for a period of 10 years. It can be renewed indefinitely, for successive periods of 10 years.

28. How much does it cost to file an application (Official)? Is it possible for refund of fees once paid?
The official fees for filing an application is approximately US$ 120 up to registration and it is not possible to refund or endorse the fees once paid

29. What is the total cost (official+ Professional) for the registration of a trademark in your country?
You may contact our Office for quotation stating your job requirement.

30. Can you explain the application process in chronological in your country?
1. Formal examination
2. Examination as to inherent regiistrabiility (absolute ground)
3. Examination as to the right of third parties (relative grounds)
4. Impose disclaimer if necessary
5. Publication of the application
6. Opposition proceedings
7. Registration

31. On what date does the protection start?
On the day on which the written application is received by the Trademark Office, your form will be stamped with the date and application number is allotted on serial basis with an Official receipt for your application: this date, the filing date, will be considered to be the date from which the applicant will enjoy the right of protection, provided that the application meets the minimum requirement including the payment of fees.

32. Is it possible to request an availability search without filing an application at the same time? What are the advantages and disadvantages of doing so?
Yes. The advantage is that you know in advance, from the results, whether it is sensible to apply to register the mark.

33. Is it essential to submit search report when filing an application, and can I do it myself?
Search availability is not necessary for filing an application. No, the search can perform only through your local agent since it is not available on the net and no Official search report may issued in this respect

34. Is there any time limit for recording assignment? If so what is the fine for late filing of assignment?
There is no time limit for recording the assignment however 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.

35. What are the minimum requirements for filing an application?
In order for an application to be acceptable, it must meet certain minimum requirements.
1. Duly completed application form in accordance with the provision of law
2. Power of Attorney (legalized)
3. Basic registration (legalized) for alternative please refer filing requirement
4. Official fees

36. Is it possible for me to register a trademark while my trademark is in application stage i.e., without a basic registration?
No it is not possible for you to file an application if your trademark is in the application stage, if your trademark is not registered anywhere you have to wait until your trademark mature somewhere. In Kuwait for international applicants basic registration is the base of registration.

 
37. Do I have to register my mark?
No, but use of a trademark gives no right to protection under Kuwait Law. According to the current practice, the party who registers a trademark is considered the exclusive owner. That ownership cannot be disputed if the registered owner has used the mark continuously at least five years from the registration date. Moreover it is difficult to prove non-use of a trademark since the owner of the trademark not necessary to submit any document that proves the use of his mark to the authority.

38. If I have been using my mark for several years without registering it, don't I have any rights against a third party who copies it?
No, use of a mark does not give you any right to protection under Kuwait trademark Law. Only application gives exclusive rights to a trademark. And it is not possible for you to take the appropriate action against a third party who copies it.

39. When I can apply for the renewal of my trademark? From what date the renewal date is calculate? How long your Trademark Office needs to issue my renewal Certificate?
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. Trademark office will not issue a certificate of renewal instead the new protection period is endorsed on the Certificate itself. For this purpose you should return your original certificate of registration to your agent for endorsement.

40. Does the same law govern patents and trademarks?
No, although both subjects belong to the field of industrial property, they are governed by quite different legislation.

41. What is the difference between a trademark and a patent?
A trademark is defined as any symbol used to distinguish a company's products or services. Filing an application, valid for 10 years, which may be renewed indefinitely, may protect it. In simple terms, a patent is a novel, technical invention. A patent may be requested for an invention, which will not be able to be revealed to the public until it is patented (otherwise it would lose its novel character). The protection of the patent applies for a limited number of years. For example, your company may invent a new product, which will have to be patented, and this product will be marketed by a symbol, which may be registered as a trademark. In this case, the patent protects the invention and the symbol is protected by the application to register

 
42. Is trademark Office will take action against abuse of my mark by a third party? If not how can I take necessary action?
The Trademark Office has no jurisdiction as far as abuse or infringements of existing trademarks are concerned: it is up to the owner of the prior mark - which must be registered in this case - to take the appropriate action. It will ultimately be for the judge to decide whether or not there has been an infringement or a violation of the law. For more information and opinion on a particular case, you should contact us directly.

43. What is priority”? Is it possible to claim priority for trademark in Kuwait?
The “right of priority” exists in some 161 States, which have ratified the Paris Convention. If you register your trademark, within 6 months from the date of the national application, in one of the member countries of the Paris Convention, you can claim your “right of priority”. Kuwait is not a member therefore, Priority cannot claim for trademark.

44. What do the letters R or TM mean after certain trademarks?
These symbols have no legal validity in Kuwait. However, they may indicate that the sign used is a registered trademark and therefore protected in the U.S., the letters TM are placed after trademarks for which an application has been filed and is being processed, whereas the letter R means that the application procedure has been successfully completed and the trademark has been registered.

45. What’s the difference between a trademark (registration) and a domain name (registration)?
Trademarks and domain names are two completely different topics:
- a trademark is a symbol, which is used to distinguish products and services of a company. By registering it at the Trademark Office you get protection, in other words, it gives you the exclusive right to use this mark. I

- a domain name is a sort of address, similar to a telephone number, to identify a site on the World Wide Web (Internet). To obtain this address, you have to register with a national organization (KSRC) for more information contact our Office.


46. Does the law provide Opposition proceedings? Who can file an opposition?
Yes. Before registration
-The Owner of a mark previously registered or filed
- The Owner of a non-registered well known (6bs Paris convention) mark
- Any interested party or Authority based on absolute reason

46. Any annual or periodic fees are necessary for maintaining the registration status of a trademark?
No fees other than renewal fees should be paid for the maintaining the registration of a trademark

48. Is it possible for me to apply for the transfer of ownership of trademark before publication?
Change of ownership like Assignment, change of name and change of address, merger on trademark is possible only after it is published and not opposed.

49. What are the duration of trademark protections in other parts of Middle East?
Country Classification Protection Renewal
in Years in years
 

50. Must an amount be indicated in the assignment deed?
Yes, A nominal amount is recommendable and is acceptable to the Trade Mark Office

51. Is it necessary to include the transfer of the related business and/or the goodwill in the assignment deed?
Yes