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Kuwait Trademarks - JAH CO.IP
Kuwait Trademarks

 

Trade/ Service Mark Requirements:

A power of attorney (form is enclosed) legalized up to the Kuwaiti Consulate.

A simple copy of the home registration certificate or any foreign registration certificate (can be submitted Later) if available*.

A certified copy of priority document legalized up to a Kuwait consulate abroad in case of claiming priority.

 

Note: powers of attorney legalized at the Kuwaiti Consulates abroad must be super legalized at the Kuwaiti Ministry of Foreign Affairs. The cost of this super legalization is US$ 65.

According to the present practice of the trademarks office it is not necessary to submit all relevant documents at the time of filing which can be submitted within three months from the date of filing which is non-extendable officially; however the trademarks authorities are not strict in applying the practice of three months of within which the supporting documents should be lodged, but the trademark application will not be processed into final registration unless it the complete documents are submitted.  If you would like us to file the application now without complete documents kindly send us your instructions and a softcopy of the home registration or application of the mark by email or fax.

 

*Please be advised that as per the relevant provisions of the Implementing regulations of the Kuwaiti Trademarks Law a simple copy of home registration certificate of the mark is one of the must requirements; however, it is now since three years the Kuwaiti Trademarks Registrar is not strict in applying such a requirements and we are registering trademarks in Kuwait without the submission of the aforesaid documents.   Accordingly, we can file the required trademark applications without simple copies of the home respiration certificates of the marks which, if requested, can be filed lately at any time stipulated as such by the Kuwaiti Trademarks Registrar.

 

Time from filing to registration in a normal course of action: 12 to 14 months.

 

Convention priority is applicable under Paris Convention as of 2 December 2014 consequent to Kuwait acceding the Paris Convention for the Protection of Intellectual Property on September 2, 2014.  Priority claims is now available for trademarks starting 1 January 2015 and any applicant can claim priority within the six months priority period.  A certified copy of the priority document will be required for claiming priority.

 

Time frame from filing a trademark application up to registration, on average, in the normal course of action; i.e.  in case that no office action is raised by the trademark registrar or oppositions are lodged by third parties:

 

Filing up to Examination : 2-3 months

Examination up to Publication : 2-3 months

Opposition Period : 30 days from the third publication in the Official Gazette.

End of Opposition Period up to Issuance of Registration Certificate : 2-4 months

Total Estimated Time Frame :7-11 months

 

Renewal of Trademark/Service Mark Registrations:
A Power of Attorney notarized and legalized up to the Kuwaiti Consulate.
The original Kuwaiti registration certificate of the trademark for endorsement purposes.

 

Assignment Applications:

A Power of Attorney executed by the assignee legalized up to the Kuwaiti Consulate.
A deed of assignment proving the assignment signed by both parties and legalized up to the

Kuwaiti Consulate.
The original Kuwaiti certificate of registration of the trademark for endorsement purposes.

 

Change of Name/Address Applications:

A Power of Attorney executed in the new name and/or address legalized up to the  Kuwaiti Consulate.

An official certificate proving the change of name and/or address legalized up to the Kuwaiti consulate.

The original Kuwaiti certificate of registration of the trademark for endorsement purposes.

 

Merger Applications:

A Power of Attorney duly legalized up to the Kuwaiti Consulate.

A merger document legalized up to the Kuwaiti Consulate.

 

Time frame for all of the above actions is 1 month.

 

Opposition procedures:

When the Registrar accepts a trademark, he shall, before registration, publish it in three consecutive issues of the Official Gazette.  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.  The Registrar shall, before deciding on the opposition, hear both parties or the party requesting such hearing.   The Registrar shall issue a decision accepting or refusing the registration. In case of acceptance, the Registrar shall determine whatever limitations he considers necessary.  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.  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.

 

Time frame for preparing and filing an opposition or counterstatement with the Trademarks Office and follow up its proceedings till final settlement 1 to 1.5 years.

 

Use Requirements:
If the trademark has not been used within 5 years from the registration, it may be subject to cancellation.<

 

Trademark Licence Agreement
There are no specific statutory provisions regulating trademark licensing in Kuwait. Trademark licence agreements are generally viewed by the courts as agency or exclusive distributor agreements. An agency contract has to be in writing. An agency agreement may be recorded for all or some of the goods or services in respect of which the trademark is registered. There are no specific statutory provisions in the Kuwaiti Commercial Law stipulating the terms or conditions of agency contracts.Recordal of License Agreement:

The recordal of licensees or registered users is not possible in Kuwait. Instead, the trademark owner may record a so-called agency agreement with the Commercial Agencies Register at the Ministry of Commerce and Industry (MCI). The recordal is voluntary, but the agency agreement is not enforceable unless it has been registered. The application for a recordal must be made within two months after the contract has been concluded. There is no specific form or content for an agency agreement but it should specify the duties of the parties, define the territory covered by the licence, its duration, cancellation provisions and any other relevant principles. The application for recordal can be made only by a Kuwaiti agent.The following documents are required for a recordal:
Two original copies of the official MCI form must be accompanied by:

An original copy of the agency agreement
A translation of the agreement into Arabic
A copy of the agent’s commercial licences
A copy of the agent’s nationality document or its registration in the Commercial Registry
A certificate of registration from the Kuwait Chamber of Commerce and Industry

If the agency agreement is executed in a foreign country, the original agreement must be attested at the principal’s place of business by an official authority and a Kuwaiti Consulate, or notarised by a Kuwaiti notary public.

 

Effectiveness
Once the agency agreement is recorded it will be effective and enforceable vis-à-vis third parties as of the date of the agreement. The agency agreement is not required to be published.

 

Infringement Proceedings
There is an evidentiary presumption that use of a recorded agent is permitted use. The agent may not join the proprietor in infringement proceedings. An infringement or cancellation action can only be defended by the legitimate owner of the mark. A registered agent may call upon the trademark owner to institute infringement proceedings, but he may not institute any proceedings in his own name if the proprietor refuses or neglects to institute proceedings, unless the owner may permit him to do so.

 

ADDITIONAL TIME FRAMES:

 

Time frame required for preparing and filing a lawsuit of any type such as infringement or cancellation action and follow up its proceedings till final settlement:

2 – 5 years

Time frame required for filing an appeal with the trademarks registrar or court as applicable regarding an opposition action, counterstatement or rejection:

2 – 5 years