A trademark is a distinctive sign used by a merchant to distinguish their goods or services from those of others. Kuwait Law No. 68 of 1980 (as amended) governs the registration and protection of trademarks.
Importance of registration: registration grants the trademark owner absolute legal protection and creates a presumption of ownership.
Contents
1) Definition of a Trademark
- Definition: any visually perceptible distinctive sign used to distinguish goods or services.
- Forms: may be a word, drawing, symbol, letters, numbers, colours, or a combination thereof.
- Function: identifying the commercial source — building trust — protecting consumers from confusion.
- Distinctiveness: the essential requirement — the mark must be distinctive and not descriptive of the goods' nature.
2) Types of Marks
By use
- Trademark: distinguishes manufactured or traded goods.
- Service mark: distinguishes services offered.
- Collective mark: used by a group of producers.
- Trade name: the name distinguishing a commercial establishment.
By form
- Word marks (names and slogans).
- Figurative marks (drawings and shapes).
- Composite marks (word + image).
- Three-dimensional marks (product shape).
3) Registration Procedures
- Filing: the application is filed with the Trademark Office at the Ministry of Commerce and Industry.
- Examination: the office examines the mark for compliance and similarity with registered marks.
- Publication: the mark is published in the Official Gazette for opposition.
- Opposition period: 30 days from publication — any interested party may oppose.
- Registration: after the period expires without opposition (or rejection of the opposition), the mark is registered.
- Duration: registration is valid for ten years, renewable for equal periods.
4) Acceptance Criteria
- Distinctiveness: the mark must be distinctive — neither descriptive nor generic.
- Lawfulness: must not contravene public order or morality.
- Non-deceptive: must not mislead the public as to the nature or origin of the goods.
- Non-similarity: must not be confusingly similar to a previously registered mark.
Refused marks: marks identical to state emblems, international organisations' logos, religious symbols, or famous names without permission are not accepted.
5) Owner's Rights
- Exclusive use: the right to use the mark exclusively on their goods or services.
- Prevention: the right to prevent others from using an identical or similar mark on similar goods or services.
- Licensing: the right to license others to use the mark for consideration.
- Assignment: the right to assign or transfer ownership of the mark — with registration of the assignment.
- Customs protection: requesting customs to stop the import of goods bearing a counterfeit mark.
Well-known marks: enjoy special protection even if not registered in Kuwait — under the Paris Convention to which Kuwait is a party. See intellectual property and patent rights.
6) Trademark Infringement
Forms of infringement
- Counterfeiting or using a similar mark.
- Affixing a counterfeit mark on similar goods.
- Selling or offering goods bearing a counterfeit mark.
- Using the mark in a way suggesting a non-existent association.
Available actions
- Action for injunction and damages.
- Unfair-competition action.
- Criminal complaint (counterfeiting is a crime).
- Application for urgent interim measures.
Criminal penalty: imprisonment and a fine for anyone who counterfeits a registered trademark or knowingly uses a counterfeit mark.
7) International Protection
- Paris Convention: Kuwait is a member — granting priority rights and protection for well-known marks.
- TRIPS Agreement: commitment to WTO trademark-protection standards.
- Regional registration: registration is available through the GCC Trademark Office.
- Madrid Protocol: Kuwait is not yet a member — separate registration in each country is required.
8) Practical Guidance
Protecting your mark
- Register your mark as soon as you choose it — before product launch.
- Search for similar marks before filing.
- Renew registration before the ten-year expiry.
- Monitor the market and oppose any imitation.
In case of infringement
- Document the infringement with evidence (photos, invoices, samples).
- Send a formal cease-and-desist notice.
- File a complaint with the Ministry of Commerce and Customs.
- Sue for damages and an injunction before the court.
Need to register a trademark or protect your rights from counterfeiting? Contact Attorney Meshari Obaid Al-Enezi — Yumnaak Law Firm.
