Our client, the well-known Swiss company; NESTLE, instructed us to proceed with filing an opposition against the subject mark based on confusing similarity with Nestle’s famous trademark KitKat.

The Kuwaiti Trademark Office issued its decision to reject the registration of the said trademark based on the fact that trademarks confusingly similar to well-known marks must not be registered since they will mislead the public as to the true origin of the products. The said decision was subject for an appeal within 10 days of its issuance and now it has become final.

It is worth mentioning that the above company is one of the leading companies in food industries in the region. Its products are exported to a number of Arab and Middle East countries.

The said company had previously filed an application for the same mark in Iraq in 23 classes. We opposed the said registrations and the Registrar decided to cancel the application in class 30 only (as Nestle’s trademark KitKat is registered in this class only). However, we filed an appeal with the court and managed to obtain a decision to cancel all the remaining 22 classes based on the fact that trademarks similar to well-known marks should be denied registration in all classes as they might lead to public confusion as to the actual source of the goods.

The defendant neither appealed the decision, nor complied with it or to the subsequent cease & desist letter sent to him.

As infringing “KATAKIT” products continued to flood the market, and we became aware that two shipments arrived at the Customs Duty in Iraq. Fast action had to be taken on our part to seize their release.

Accordingly, we took the necessary steps and filed a criminal case. While one of the shipments was allowed into the country, the other was refused entry.

We followed up further with the authorities and the importer was placed into custody for two days. He was later released after withdrawing all infringing products from the market.