KUWAIT Law and Practice Contributed by: Sam Habbas, Luis Cunha, Hisham Al-Quraan and Mustafa Sayed, ASAR – Al Ruwayeh & Partners
At present, the Patent and Trademark Office (PTO) processes applications for industrial designs, while other patent applications are directed to the GCC Pat - ent Office in Riyadh, Saudi Arabia. When approved, a registration in the GCC Patent Office in Riyadh may be enforced in Kuwait. An owner or rights holder of a patent, a drawing, a design or a utility model may file a complaint under the Patent Law to protect their rights. During a civil or criminal lawsuit, a rights or title holder may ask the court to issue an order to take precautionary meas - ures, which may include the seizure of the contraven - ing goods and the equipment and machines used for committing the offence. Where necessary, the order issued for taking such measures may require the appointment of an expert and other court officers to assist in its execution. Unlike under Law No 13 of 2015 (the “TM Law” – see 7.2 Trade Marks ) and Law No 75 of 2019 (the “Copy - right Law” – see 7.4 Copyright ), which specifically allow a rights or title holder to seek an order from a Kuwait court for the enforcement of precautionary measures prior to the filing of a substantive infringe - ment action (and on an ex parte basis when neces - sary) to prevent patent infringements and violations, the Patent Law grants such a right only after the sub - stantive claim for patent infringement or violation of the Patent Law has been filed. The 1970 Patent Cooperation Treaty (as amended) (PCT), an international patent law treaty, is also of significance, and was ratified by the State of Kuwait on 9 September 2016. The PCT makes it possible to seek patent protection for an invention simultaneously in a number of countries by filing an “international” patent application; such an application may be filed by anyone who is a national or resident of a contracting state with the national patent office of the contracting state or, at the applicant’s option, with the Interna - tional Bureau of WIPO in Geneva. However, it should be noted that the PCT application does not itself result in the automatic granting of a patent, and the grant - ing of a patent is at the discretion of each national or regional authority. In other words, a PCT application establishes a filing date in all contracting states but must be followed up on by entering into national (or
regional) efforts to obtain one or more patent registra - tions. 7.2 Trade Marks Trade mark protection is regulated under the TM Law, which is largely based on a treaty between the various GCC states. The TM Law defines “trade marks” as “anything which takes a distinct form or style in the form of names, words, signatures, letters, symbols, numbers, titles, stamps, drawings, graphs, inscrip - tion or combination of same, or any signs or group of signs if used or intended to be used to distinguish such products or services of an organisation or entity relevant to such products or services from products or services of other entities or to indicate the perfor - mance of a service or to control or check such prod - ucts or services” (informal translation). Trade marks, service marks, logos and trade names may be registered in Kuwait under the TM Law in accordance with international classification stand - ards, except those relating to certain prohibited items (ie, alcohol and pork products) and certain restricted activities (such as gambling). These registrations are valid for up to ten years from submission of the appli - cation for registration, and may be renewed for similar periods. When foreign marks are to be used in Kuwait, the owner thereof is typically recommended to con - sider registering them locally in accordance with the TM Law as this affords the mark owner more protec - tion than when the marks have not been registered. In the case of an infringement of a registered trade mark, the remedies available to the trade mark owner under the TM Law include: • filing a criminal action (see Articles 2, 3 and 4 of the TM Law); • seeking injunctive relief, which may take the form of confiscating infringing items, impounding the tools used in infringing the mark and/or the destruction of unlawful marks and property (see Article 40 of the TM Law); • if the infringing party manages to register the infringing mark, filing a case to de-register the trade mark of the infringing party (see Articles 22 to 24 of the TM Law);
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