Intellectual Property

An area of practice that has become critically important, the firm is proud to have a team led by a legal specialist, with extensive continuing education and experience in intellectual property and technology law.   That is the reason the firm has been retained by a leading information technology training and development firm to protect the company's products in Kuwait and other GCC states.

An area of practice that has become critically important, the firm is proud to have a team led by a legal specialist, with extensive continuing education and experience in intellectual property and technology law.   That is the reason the firm has been retained by a leading information technology training and development firm to protect the company's products in Kuwait and other GCC states.

The team has experience in litigation and prosecution in all areas of intellectual property and technology law, which inter alia includes patents, trademarks, copyrights and industrial designs. Team lawyers draft and process registration applications for clients and assist clients in the enforcement of their rights through litigation, if necessary.  The firm has also been involved in negotiating and drafting licensing and franchising agreements and providing specialized advice on disputes arising from violations of existing agreements.

 

Copyright

Kuwait is a member of the World Trade Organization and a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights.   Kuwait is also a member of the World Intellectual Property Organization. In 1999 to comply with Kuwait's obligations under World Trade Organization agreements a comprehensive legislation to protect intellectual property was promulgated by Amiri Decree under article 71 of the constitution. These laws were approved by the National Assembly on 23rd December 1999 as law number 64/1999 governing Intellectual Property rights.

Law No. 64 of 1999 governs copyrights and provides copyright protection and penalties for copyright infringement. With respect to non-Kuwaitis, the law applies to 1) works of foreign nationals that are published for the first time in Kuwait; 2) works of Arab authors who are nationals of member countries of the Arab Agreement for the Protection of Author's Rights and published in any of those countries; and 3) works of authors who are nationals of member states of the World Intellectual Property Organization that are published for the first time in one of those states (Article 43 of Law No. 64 of 1999). 

 Under the Law No. 64 of 1999 protection is to be given to all literary works (written and oral), theatrical shows, musical works (with or without lyrics), choreographic works, motion pictures, audio, video and radio works, artistic works (painting, sculpture, carving, architecture and decoration), photographs, applied art (craft or industrial designs), illustrations, maps, designs and models, computer works (software and databases), and translated works.

The scope of protection under this law covers but not limited to written works, works delivered orally( such as lectures, speech, religious sermons and the like) theatrical works and musical plays, musical works with or without songs, works performed by means of movements or steps and mainly prepared for direction, movie works, audio, video and radio works, photographic works, works of applied art, including Craft or industrial designs
Illustrations, geographic maps, designs, plans and models related to geography, topography, architecture and science, computer Works including Software, Databases and the like, derived and translated works

Trade mark Registration

The international classification of goods and services is followed in Kuwait but it has not yet adopted the 8th Edition of Classification of goods and services. In accordance with Islamic mores the Trademark Law of Kuwait has no provision for the protection of trademarks covering alcoholic drinks and pork meat. 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 banners 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 prone to create confusion to the origin of the goods or services thereof are not protected.

Separate application should be filed distinguishing each class of goods and services. Registration can be obtained only strictly according to the general wording on the basic registration and class headings will b based on the Basic Registration. Colour marks and distribution of colours must be specified in the same manner as it is specified in the basic registration. List of goods to register should be in accordance with the basic registration, no deviation is acceptable.

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.

 Requirements of Trademark Applications

  • Application form & a power of attorney legalized up to the Consulate of Kuwait is to be submitted. Application form is to be in Arabic and should be prepared by a local attorney, 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. Power of attorney must be legalized by a Kuwaiti consul in the applicant country.
  • A certified copy of the home registration certificate of the trademark stipulating clearly the validity term of the registration and the goods and/or services desired to be registered. (Documents other than in English or Arabic should be accompanied with a sworn English translation.)
  • 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.

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

Protection
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.

Required Time

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
After examination, the office may request a disclaimer, if the conditions are acceptable 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.

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.

Renewal of trademark

The Trademark Law provides for a six-month grace period for late renewal of a trademark registration subject to payment of a lateness fine. A trademark, which lapses, may be re-registered in the name of a third party at any time.

Additional Information

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.

 

Patent

Law No. 4 of 1962 deals with the registration of patents and industrial models in Kuwait. The Patent Office in Kuwait was opened in 1995, in response to a resolution by the Gulf Cooperation Council (GCC) states for a unified patent registration system for the member countries. The regional office for the Gulf Cooperation Council comprises of the States of United Arab Emirates, State of Bahrain, Kingdom of Saudi Arabia, Sultanate of Oman, State of Qatar, and State of Kuwait and certificates of Patents granted by the GCC Patent Office secure legal protection of the inventor's rights in all Member States.

The Kuwaiti government is presently actively involved in preparing a draft law for the protection of patents to replace the existing law. In order to comply with the terms of Annex 1C of the WTO Treaty (the "TRIPPS Agreement") the law was amended per law No 3 of 2001.

As per the recent amendments responsibility for patents is with the Under Secretary for Trade and Industry and the term of patents has been extended to twenty years from filing, with renewal fees being due every four years. For patents registered in foreign countries the validity period for such patent in Kuwait shall be the remaining unexplored period in the country of registration. Furthermore, new penalties for patent infringement have been adopted by the government including the possibility of imprisonment for up to two years. The new law also extends the period of protection of 'designs' for an initial period of ten years with the option of renewal for a further period of five years and  promote protection of 'utility models' for a period of seven years from filing and also provides for the protection of integrated circuits as a type of design. No examination is conducted in Kuwait for a patent application.

Filing requirements:

  • Power of Attorney legalized upto the Kuwaiti Consulate.
  • Two copies of the specifications in English with Arabic translation.
  • Two sets of formal drawings plus two sets without any Latin numerals or words.
  • Certificate of Incorporation legalized upto the Kuwaiti Consulate.
  • Assignment from the inventor(s) legalized upto the Kuwaiti Consulate.
  • Priority document, if priority is claimed legalized upto the Kuwaiti Consulate.

Assignment Requirements

Power of Attorney that has been signed by the assignee and legalized upto the Kuwaiti Consulate.

  • Deed of Assignment, signed by both parties and legalized upto the Kuwaiti Consulate.

Contact Us

Find out more about how you can transform your business with our consultation services. Call our local office in Kuwait for legal assistance.

Abdulrazzaq Abdullah & Partners Law Firm
P.O.Box 22880, Safat 13089
Dasman Complex, Block 1, Floor 3
Kuwait City, Sharque
Kuwait
Tel: +965-22449909
Fax: +965-22469357
Email : info@arazzaqlaw.com
Website: www.arazzaqlaw.com

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