The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement is followed in Kuwait, but the 8th Edition of the classification has not yet been adopted. The trademark law does not provide for the protection of trademarks covering alcoholic drinks in classes 32 and 33 and pork meat in class 29. Class No. 33 has been completely dropped and the international class 34 has been reinstated for tobacco products. A separate application should be filed with respect to each class of goods and services.
Once a trademark application is filed, the trademark is examined as to its registrability. In case the Registrar rejects a trademark, the applicant may file an appeal in court within 30 days as of the date of the official notification. Trademark applications accepted by the Registrar are published in 3 consecutive issues of the Official Gazette of Kuwait (Al-Kuwait Al-Youm). There is a 30-day period open for filing opposition by any interested party. The statement of opposition to the registration of a trademark should be submitted to the Registrar within the prescribed term of 30 days, as of the date of the last (third) publication of the relevant notice in the Official Gazette.
An opposition statement requires a counter statement to be filed within 30 days by the applicant in order to maintain the trademark application in force. All opposed trademark applications remain pending with the Registrar until he takes a decision or a court decision is issued in favor of either party or an amicable settlement is reached by the parties concerned. In the absence of opposition, the relative certificate of registration will be issued.
A trademark registration is valid for 10 years as of the date of filing the application, renewable for similar periods of 10 years each upon submitting an application for renewal during the last year of the protection period of the trademark.
The trademark law provides for a 6-month grace period for late renewal of a trademark registration subject to the payment of a lateness fine. A trademark, which lapses, may be re-registered in the name of a third party at any time.
The assignment of a trademark can be recorded once the trademark is registered. In fact, unless an assignment has been entered against the trademark in the register, the assignment shall not be effective vis-à-vis third parties. Recordal particulars are endorsed on the certificate without publishing it in the Official Gazette. It is possible to assign a trademark with or without the goodwill of the concerned business. Changes in the name or address of a registrant, amendment of a trademark and limitation of goods covered by a registration can be recorded as well. However, recording of licenses or registered users is not applicable in Kuwait.
Use of trademarks in Kuwait is not a prerequisite for filing applications for registration or for maintaining trademark registrations in force. However, a trademark registration is vulnerable to cancellation by any party who can convince the court that the trademark has not actually been used in a serious manner for 5 consecutive years, or that there was no bona fide of using the trademark on the goods in respect of which the trademark was registered.
Unauthorized use of a trademark registered under the law or an imitation of such a trademark applied on goods of the same class, or sale, storing for the purpose of sale, or exhibiting for sale of goods, bearing a counterfeit mark by another person to serve the purpose of unauthorized promotion of goods of the same class are offenses punishable under the law in Kuwait.
US $
Trademarks in Kuwait
335.00
Filing a mark application in one class up to Registration
325.00
Filing a simultaneous mark application in one class up to Registration
20.00
Translation of the list of goods from English to Arabic (over the first 100 words) per page
190.00
Amendment the list of goods
55.00
Filing a response in respect to the conditions put forth by the Registrar
210.00
Opposition Action before the registrar including one hearing
65.00
Further hearing on opposition to the registration of a mark
180.00
Counter-opposition action before the registrar.
95.00
Attending a hearing with the Registrar
75.00
Search for a mark in one class
70.00
Renewal of a mark during the last year of the protection period
75.00
Renewing a mark registration within 6 months of the expiry date
190.00
Recording an assignment of a mark registration
180.00
Recording an assignment of each additional mark
190.00
Recording a merger of a registered mark
180.00
Recording a merger of each additional mark
190.00
Recording a change of the owner's name against a registered mark
180.00
Recording a change of owner's name for each additional mark in the same document
190.00
Recording a change of owner's address against a registered mark
180.00
Recording a change of applicant's address for each additional mark
70.00
Recording an association of one mark
75.00
Inspection of registers or documents at the Registrar's Office (per 30 minutes)
150.00
Obtaining a certified copy of registration certificate
90.00
Local legalization & translation of the home registration certificate of a mark from English into Arabic (per page)
30.00
Each additional page of the certificate
85.00
Withdrawal of a mark application by the applicant
90.00
Local translation and legalization of the power of attorney
55.00
Local legalization of an Arabic document (1st page)
Kindly note that the charges quoted herein are all inclusive, and there will be no other charges in the normal cases. However, our charges do not include expenses that may subsequently be charged for the legalization of supporting documents, reporting and responding to official actions, extra publication required by the concerned authority, or any other incidental charges that may be incurred during the registration procedure, and may be subject to increases due to changes in the official fees or exchange rates.
Requirements for Kuwait
Filing Requirements
Trademark/Service Mark Applications
1. A Power of Attorney legalized up to the Consulate of Kuwait.
2. A legalized copy of the home registration certificate of the trademark showing clearly the validity term of the registration and the goods and/or services desired to be registered. In the absence of a home registration, a legalized copy of any foreign registration of the trademark can be used along with a certificate proving that the trademark is not registered in the home country. The latter document, which should also be legalized up to the Kuwaiti Consulate, can be in any one of the following forms, (documents which are not in English or Arabic should be accompanied with a sworn English translation):
a. A certified copy of the trademark application in the home country.
b. An official search report showing that the trademark is not registered in the home country. A letter from the Registrar of Trademarks in the home country addressed to the Registrar of Trademarks in Kuwait to this effect will serve the purpose.
c. A declaration executed by an officer of the applicant company, sworn before a Notary Public, and stating that the applicant company has no registration of the trademark in the home country.
3. Twelve prints of the trademark for each class (preferably not exceeding 5x5 centimeters each). Additional publication charges are to be paid for a large size print. The prints can be prepared locally upon request. The prints should be in exact conformity with the form of the mark shown on the basic certificate of registration.
Note: According to the present practice of the Kuwaiti Trademarks Office, it is not necessary to submit all relevant documents at the time of filing. The documents can be filed at a later stage.
Renewal of Trademark/Service Mark Registrations 1. A Power of Attorney notarized and legalized up to the Kuwaiti Consulate.
2. The original Kuwaiti registration certificate of the trademark for endorsement purposes.
Assignment Applications 1. A Power of Attorney executed by the assignee legalized up to the Kuwaiti Consulate.
2. A deed of assignment proving the assignment signed by both parties and legalized up to the Kuwaiti Consulate.
3. The original Kuwaiti certificate of registration of the trademark for endorsement purposes.
Change of Name/Address Applications 1. A Power of Attorney executed in the new name and/or address legalized up to the Kuwaiti Consulate.
2. An official certificate proving the change of name and/or address legalized up to the Kuwaiti consulate. 3. The original Kuwaiti certificate of registration of the trademark for endorsement purposes.
Merger Applications 1. A Power of Attorney duly legalized up to the Kuwaiti Consulate.
2. A merger document legalized up to the Kuwaiti Consulate.
Laws for Kuwaiti
Pursuant to Trade Law No. 68/1980 , the Kuwaiti legislator regulates the protection of trademarks in Articles 61-95.
Trademarks Law and Trade Indications
Section One
Trademarks and their Registration Procedures Article 61 (Amended by Law No. 1/2001 (OG 498)
The trademark is anything which takes a distinctive form such as words, signatures, letters, figures, devices, brands, headings, seals, drawings, engravings, pictorial elements, color combinations, any sign that is perceivable by sight, audio signs and signs related to the sense of smell or any other mark or combination of marks, when used or intended to be used to distinguish goods or products, to indicate that they belong to the owner of the mark, by reason of manufacturer, selection, trading in or offering for sale such goods or products.
Article 62 (Amended by Law No. 1/2001 (OG 498) As amended by the law No. 1/2001 For Amending Some Provisions of the Commercial Law issued by the Decree Law No. 68/1980.
Article 61 before amendment: "A trademark is anything which takes a distinctive form whether in words, signatures, letters, figures, drawings, symbols, titles, seals, representations, engravings or any other mark or a combination thereof when used or is intended to be used in distinguishing goods or products for the purpose of indication that they are of the owner of such mark by virtue of manufacture, selection, trading or offering for sale." Article 62 before amendment: The following may not be a trademark and may not be registered as such:
1. Marks devoid of any distinctive character, marks consisting of indications that are the mere denominations in practice of the goods or products, or customary drawings and ordinary pictures of the goods and products.
2. Any expression, drawing or mark against public morals or public order.
3. Public emblems, flags and other symbols pertaining to the state, United Nations or any body thereof or any state having reciprocity of treatment with Kuwait or any imitation of such emblems.
4. Symbols of the Red Crescent or the Red Cross and other similar symbols as well as marks which are imitations thereof.
5. Marks identical with or resembling symbols of a purely religious nature.
6. Geographical names where the use thereof may cause confusion as to the origin or source of goods.
7. The name, surname, photograph or emblem of a third party, unless his prior approval to use such mark has been obtained.
8. Statements pertaining to titles of honor which the applicant cannot prove that he is lawfully entitled to.
9. Marks which may mislead the public or which contain false indications as to the origin or other characteristics of the products as well as marks embodying an imaginary imitated or forged trade name.
10. Marks which the Boycott of Israel Office decides that it is identical or similar to an Israeli mark, symbol or emblem.
The following may not be trademarks nor may they be registered as such,
1- Marks which are not capable to distinguish products or services of a project from the same of other projects.
2- The mark is in violation to the public order or morals.
3- The mark is likely to mislead the public or commercial centers, especially, as regards the geographical origin of the pertinent goods or services or as regards its nature or characteristics.
4- The trademark is identical to an honorary emblem, flag or other ensigns, name, abbreviated name, initials, pictorial mark or a certified stamp of any state, governmental international organization or any organization which was established by virtue of an international invention or if income tax is an imitation thereof or if income tax includes the same as one of its elements unless it is so permitted by the competent authorities of such state or organization.
5- The trademark identical or similar to an extent raising a confusion towards famous trademark or trade name in the State of Kuwait or constitutes a translation for it regarding the identical or similar goods or services of other project. The trademark may not be registered if it is connected with non-identical or different goods or services whenever its use may create the impression that there is a connection between them and the reputable trademark or trade name in a way that is detrimental to the owner of the mark.
6- The trademark identical to the trade mark of other respective owner which is already registered or to an application prior to the application of registering the concerned trademark as regards the date of filing or priority date in relation to the same goods or services or goods or services closely connected therewith or if they are similar to a degree that causes confusion or misleads.
7- The trademarks which Israel Boycott Office decides that they are identical or similar to an Israeli trademark, emblem or logo.
Article 63
There shall be prepared a register in the concerned ministry, called The Register of Trademarks", wherein shall be entered all marks with names and addresses of their proprietors and the descriptions of their goods as well as transmissions, transfers or assignments. The public have the right of access to this Register, and certified copies of any entry may be obtained upon payment of the prescribed fees.
Article 64
Any person desiring to use a mark in order to distinguish his goods of his own production, manufacture or selection or which he trades in or offers for sale, or intends to trade in or offer for sale, may apply for its registration in accordance with the provisions of this Law.
Article 65
1. Any person who registers a trademark shall be deemed the exclusive owner thereof.
2. The ownership of a trademark may not be contested if it is used continuously by the person who registered it for at least five years from the date of registration unless a case is filed as to its validity.
Article 66
A trademark application shall be submitted to the Department of Trademarks Register under the conditions and terms provided for in the implementing regulations of such register.
Article 67
A trademark may be registered only in respect of one or more of the classes of products specified in the implementing regulations.
Article 68
Where two or more persons apply simultaneously for the registration of the same trademark or closely similar or identical marks, in respect of the same class of products, the registrar shall suspend all such applications until an assignment approved by all the parties concerned in favor of one of the disputing parties is produced or until a final judgment is rendered in favor of one of them.
Article 69
The Registrar may impose whatsoever restrictions and modifications he may consider necessary for defining and clarifying the trademark in a manner as to prevent confusion with another mark already registered, or for any other reason which he may deem valid.
Article 70
Where for any reason the Registrar refuses to register a trademark or suspends registration pending the fulfillment of certain restrictions and modification, he shall inform the applicant in writing of the grounds for such decision.
Article 71
1. Any decision issued by the Registrar whereby he refuses registration or suspends it, pending the fulfillment of a condition, may be appealed by the applicant to the Court of First Instance within thirty days as from the date of serving such decision upon him. The court may confirm, quash or amend the decision.
2. Where the applicant does not appeal against the decision within the prescribed term and does not act according to the conditions of the register within such term, he shall be considered to have abandoned his application. Article 72
1. When the Registrar accepts a trademark, he shall, before registration, publish it in three consecutive issues of the Official Gazette.
2. Any person interested shall be entitled, within thirty days as from the date of the last publication, submit to the registrar a written notice of his opposition to registration. The Registrar shall then serve a copy of such notice of opposition upon the applicant for registration. The latter shall submit a written counter statement of the opposition to the Registrar within thirty days. If the counter-statement is not received within the prescribed term, the applicant shall be deemed to have abandoned his application.
Article 73
1. The Registrar shall, before deciding on the opposition, hear both parties or the party requesting such hearing.
2. The Registrar shall issue a decision accepting or refusing the registration. In case of acceptance, the Registrar shall determine whatever limitations he considers necessary.
3. Any interested party may, within ten days from being notified of the Registrar's decision, appeal against the decision to the court who may confirm, repeal or amend such decision.
Article 74
If the Registrar finds that the opposition to the registration of the mark is not serious and decides to register it, he shall, notwithstanding any objection to his decision, issue a grounded decision to proceed with the registration formalities.
Article 75
1. The mark when registered shall be validly registered as of the date of submission of the application,
2. and the proprietor of the mark shall, on completion of the registration, be furnished with a certificate containing the following particulars:
a. Serial number of the mark.
b. Date of application and date of registration.
c. Name, surname, domicile and nationality of the proprietor of the mark.
d. A true representation of the mark.
e. Statement of the goods or products for which the mark is registered.
Article 76
The registered proprietor of a mark may at any time, apply to the Registrar to omit, to add to, or amend such trademark in any manner not substantially affecting the identity of the same and the Registrar shall issue a decision thereon in accordance with the conditions laid down for the original applications for registration and such decision shall be subjected to appeal as aforesaid.
Article 77 (Article 77.2 was amended by Law No. 1/2001 (OG 498)
1. The protection period which the registration of a trademark entails, shall be ten years. The owner shall secure renewal of the protection for further terms if he submits an application for renewal during the last year in conformity with the terms and conditions provided for in Article 66.
2. During the month subsequent to the expiry of protection, the registrar shall notify the trademark respective owner in writing of the expiry of its protection and send him such notification on the addressed recorded in the register. If six months following the expiry of protection period without submission of a renewal by the concerned party, the registrar himself shall automatically delete the trademark from register.
Article 78
1. Without prejudice to Article 65, the Registrar or any person interested may apply for a judgment to strike from the register any unlawfully registered mark. The Registrar shall strike off the registration when a final judgement is produced to him.
2. The court shall, on the strength of a request by the Registrar or any person interested, order the addition to the register of any particulars the recording of which had been omitted or the striking off or the amendment of any particulars appearing in the register that have been unlawfully entered or are inconsistent with the fact.
3. The Registrar shall decide on the cancellation of those marks which the Boycott of Israel Office in Kuwait decides are identical or similar to an Israeli mark, symbol or emblem, and the non-registration of the same if it was not registered.
Article 79 Article 77.2 before amendment. : The Registrar shall, during the month following the expiration of the protection period, notify the owner of the trademark in writing, at the address appearing in the register, of the expiration of the validity thereof. If the owner of the mark fails to apply for renewal within three months following the expiration of the protection period, the Registrar shall of his own accord strike the mark from the register.
Except when the proprietor of a mark produces justification for the non-use of his mark, the court shall upon application made by any interested person order the cancellation of the registration if it is established that the mark had not been effectively used for five consecutive years. Article 80
Cancellation or renewal of a registration should be published in the Official Gazette.
Article 81((Deleted by Law No. 1/2001 (OG 498))
Article 82 (Amended by Law No. 1/2001 (OG 498)
The trademark respective owner shall have the right to assign his trademark with or without the commercial shop or exploited item for which the trademark is used to distinguish its products.
Article 83
1. Unless otherwise agreed, the assignment of the firm or enterprise shall include the marks, which are considered as closely related thereto, that are registered in the name of the assigner.
2. Except where otherwise agreed, when the firm or enterprise is assigned without the mark, the assigner shall have the right to continue to use, manufacture or trade in the same products for which the mark had been registered.
Article 84
The assignment or mortgage of a mark shall not be deemed proof against third parties unless entered in the register and advertised in the Official Gazette.
Article 85
The competent ministry shall issue implementing regulations for the register of trademarks in which it points out the detailed provisions concerning the following:
1. Organizing the trademark registration and keeping of registers.
2. Positions, conditions and appointments concerning the registration procedures.
3. Dividing all the products, for registration purposes, into classes according to their type or origin.
4. Prescribed fees for delivering extracts and certificates and all different works and preconditions provided for in this Law. Section Two
Trade Indications
Article 86
Each clarification related directly or indirectly to the following shall be considered as a trade indication:
Before deletion this article 81 was read: where the registration of a mark is cancelled, it shall not be registered again for the same products in favor of a third party except after three years have elapsed as from the date of cancellation. Before amendment Article 82 read as: Assignment, mortgage or attachment of a mark shall only be made together with the firm or enterprise using the mark for distinguishing the products thereof.
a. The number, quantity, dimension, volume, weight or capacity of the goods.
b. The place or country where the goods were manufactured or produced.
c. The method of manufacture or production of the goods.
d. The elements incorporated in the goods.
e. The name and particulars of the producer or manufacturer.
f. The existence of patents or any other industrial property rights or any privileges, prizes or commercial or industrial characteristics.
g. The name or form by which the goods are known or valued.
Article 87
The trade indication should be true in all respects, whether it is laid down on the products or on shops, stores, or in their addresses or on envelopes, invoices or letter paper, means of advertisement or any other means used in the exposition of the goods to the public.
Article 88
1. It shall not be permissible to put the merchant's name or his address on the products if they have come from countries other than those where the sale takes place, unless the name is accompanied by an exact statement, in clear letters, showing the place or country of manufacture or production.
2. Persons residing in a locality with a reputation for in producing or manufacturing certain products, who trade in similar products from other areas, shall not put their marks on these products if they could mislead the public as to the source of these products even if the marks do not include the persons' names or addresses unless the necessary measures will be taken to prevent ambiguity.
Article 89
The manufacturer shall not attach the name of the locality at which his principal factory is situated to the products made to his account in another locality, unless this name is accompanied by a statement of the latter locality in a manner that precludes any doubt.
Article 90
1. Mention shall not be made of prizes, medals, diplomas, or honorary degrees of any kind except in the case where the products conform exactly to these grants and to the persons and their acquired commercial name or those who have acquired the rights thereof, and then it will be necessary to include an authentic statement as regards dates, exhibitions or contests where the grant has been made.
2. Whoever has been a partner in the exhibition of products shall not make use for his own special products of those characteristics that have been awarded to the co-partners unless he shows clearly the source and nature of these characteristics.
Article 91
1. If the quantity, dimensions, volume, capacity, weight, source or constituent elements are among the factors that are important in the evaluation of the products, a Ministerial Decree shall be issued precluding the importation, sale or exposing for sale of the product, unless it bears a statement or more of the above-mentioned items.
2. The competent minister's decree shall define the manner of putting these statements on the products and the steps that must be taken on failing to do this; all such statements are to be written in the Arabic language. Section Three
Penalties
Article 92(Amended by Law No 10 / 1987 (Official Gazette No. 1716)
Any person who commits any of the following acts shall be punished by a term of imprisonment and by a fine not exceeding KD 600 or by both penalties:
1. Counterfeits a mark lawfully registered or imitates it in such a manner as to deceive the public, or mala fide uses a counterfeit or an imitated mark.
2. Mala fide puts on his product a mark owned by another.
3. Sells or exposes for sale or circulation or possesses for the purpose of sale any products bearing any counterfeit or imitated mark.
4. Violates of the provisions of Articles 87 and 91 concerning trade indications.
Article 93
1. The proprietor of a trademark may, at any time, even before instituting any action, make a petition supported by an official certificate testifying the registration of the mark to the competent Judge for an injunction allowing the taking of the necessary precautionary measures and in particular the attachment of equipment or tools which are being or have been used in the commission of the offence as well as the attachment of any products, goods, signboards, envelopes, paper, etc. on which the mark, the subject of the offence, may have been put.
2. Such attachment may be ordered when importing the products from abroad.
3. The injunction of the Judge may include the delegation of one or more experts to assist the bailiff in this duty and to oblige the applicant to submit a warranty.
Article 94
The attachment procedures mentioned in the aforementioned Article shall be deemed null and void if they are not followed - within eight days as from effecting the attachment - by a suit against whom these procedures were taken.
Article 95
1. In any action, the Court shall be entitled to order the confiscation of the attached items or which may be attached later either for the deduction of their price from the damages or fines, or for the disposal thereof in any other manner which the Court deems fit.
2. It may also order the destruction of the unlawful marks or where necessary order the destruction of the products, envelopes, packing material, signboards, catalogues and any other items which bear those marks or illegal statements and the instruments and materials used in the particular act of counterfeiting. The Court may issue an order with respect to all the above matters even in the case of acquittal.3. The Court may also order the publication of the judgement in the Official Gazette at the cost of the party against whom judgement has been rendered.
FAQ for Kuwait
T1: How long will it take to conduct a trademark search?
- 7 Working days.
T2: Does your country use the international classification?
- Kuwait follows the 7th Edition of the International Classification (Nice Classification).
T3: Are there any goods or services for which the mark can not be registered?
- Beer, ale and porter in class 32, alcoholic goods in class 33 and pork meat in class 29 are not registrable.
T4: Does the specification of goods in any class limit the protection to the specified goods, or does it give additional protection to all the goods in the class?
- Gives protection to all goods in the class, but only the goods covered by the basic registration shall be specified in the Kuwaiti registration.
T5: Can a trademark be registered in the name of more than one applicant (i.e. joint application)? If so, what are its requirements? - Can be registered in joint names, but require a certified and legalized copy of a basic registration in the name of joint names.
T6: Can an application be filed without its complete documents? If yes, what is the deadline for filing the documents?
- Application can be filed with complete documents. Late filing of documents is not allowed.
T7: Can one application cover more than one class of goods/services?
- One application cannot cover more than one class of goods/services. A separate application is needed for each class.
T8: May priority be claimed under the Paris Convention?
- Priority claim is not applicable as Kuwait is not a member of Paris Convention.
T9: What is the term of protection of a trademark? From what date is it calculated?
- Protection period is 10 years. Calculated from the filing date.
T10: Is marking compulsory and, if so, how should marking be made?
- There is no specific requirement regarding marking in the Kuwaiti trademark law. When a registered mark is in use, it is advisable to mark encircled R to indicate that it is registered.
T11: If the trademark was filed incorrectly originally, what documentation would be required to amend the official register to show the correct details?
- A certified and legalized copy of the amended home or foreign registration. An amendment application is to be filed to correct the details.
T12: Is use required before registration or for maintaining the registration in force?
- Use is not required before registration, but should be used 5 consecutive years after filing the application to avoid cancellation on nonuse. Use requirement is not needed for renewal.
T13: Is use of the trademark on one item sufficient to maintain the protection for all the goods covered by the registration?
- Use of one item is sufficient to protect all goods in the same class.
T14: What are the types of use required?
- Use should be by means of sale of the products in the territory.
T15: Can the assignment of an application be recorded?
- Assignment or any recordal is not possible for any pending application. Need to wait until it registered.
T16: Is recording a license agreement compulsory? What are the consequences of non-recordal?
- Recordation of license or registered user is not permissible in the Kuwaiti Trademarks Registry.
T17: Can recordals such as change of name, address, merger, assignment, license, etc. be made against pending applications?
- No recordals are made against pending applications.
T18: Can an assignment be made with or without the goodwill? What monetary consideration is to be mentioned as the value of the assignment? Is there any tax based on the value mentioned?
- The trademark respective owner shall have the right to assign his trademark with or without the goodwill. A nominal amount is sufficient (Eg. US $1).
T19: Can the trademark application be opposed and what is the opposition period?
- Trademark application can be opposed within 30 days from the date of 3rd publication.
