Kuwait – Practice Updates and New Provisions for Trademarks

KUWAIT CITY – Further to our recent communication regarding The Ministerial Decree No. 500 regarding the Implementing Regulations of Law No. 13 of the year 2015 which issued on 27 December 2015, we would like to shed some light on several updates on the trademark registration procedures as well the adoption of new provisions.

Said Decree was issued to harmonize the Trademark Laws and Regulations followed in the GCC countries.

The major changes are summarised below:

• A priority document can be supplied within 3 months from the filing date as priority, which was not recognized earlier by the law;
• Examination after filing the application should be complete within 90 days from the filing date;
• Replying to office actions must be filed within 60 days from the date of issuing the refusal;
• Final refusals by the Registrar can be appealed through Appellant Committee within 60 days of notification. Said decision is subject for appeal before the Court within 60 days from issuance;
• Publication fees must be paid within 30 days from the date of acceptance;
• Opposition period is now 60 days from the publication date. Previously, while accepted trademarks were published in 3 Gazettes with a 7 day period between each publication, the opposition period was 30 days from the date of the last publication;
• Replying to oppositions must be made within 60 days from the date of notifying the applicant about the opposition;
• Registration fees must be paid within 30 days from the date of notification of the final acceptance (after publication);
• It is possible to amend a trademark registration after payment of prescribed fees;
• Renewal applications can be made within 1 year before expiry, with a grace period of 6 months after expiration with extra surcharges;
• Provisions for trademark mortgages;
• Provisions to apply for recordals of trademark license agreements;
• Provisions for the registration of collective marks;
• Provisions for the registration of quality marks;
• Provisions for the registration of sound marks;
• Provisions for the registration of smell marks, and
• New fees for the change of address for service have been produced.

The prior and current law/regulations, however, do not have provisions for use requirements nor cancellation actions.

Said Decree was published in the Official Gazette of Kuwait (Al-Kuwait Al-Youm) issue No.1268 dated 27 December 2015 effective 28 December 2015.

Should you need more clarifications, you can contact kuwait@qumsieh.com.