Trade marks are considered to be one of the most important constituents of commerce and its success.  For this reason they enjoy substantial support and effort by entrepreneurs in order to distinguish themselves in both local and international markets, and thereby to contribute to the reputation of their owners and their companies. This requires the law to respect this effort by providing legal procedures and protection to their owners. Because the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) accord protection to well-known, the State of Kuwait as a signatory to these agreements consider the protection of well-known foreign trade marks as priority and includes specific provisions in Law No. 13 of 2015, entitled the Trade Marks Law of the Gulf Cooperation Council States. The question posed here is this: whether the owner of a well-known foreign trade mark have the right to object to the registration of a mark that is identical or similar to it in the State of Kuwait or to initiate legal action to cancel that trademark registration.

 

Article 4 defines the meaning of a well-known foreign trade mark as being a mark, that has reputation of which extends beyond the borders of the country in which it is registered to other countries, in respect of goods or services that are identical or similar.  The Article adds that well-known trade marks may not be registered to distinguish goods or services that are not identical or similar to those distinguished by these marks.

 

From reading the law, we find that its provisions enable the owner of a well-known trade mark to follow two courses of action, the first being to object to the application for registration of the mark, and the second the ability to submit a request for its cancellation if it has been registered.

 

With regard to the first course of action, Article 3 enumerates the marks that it is prohibited to register in Kuwait, and in particular, clauses 13 and 14 specify well-known trade marks, stating as follows: “None of the following shall be considered a trade mark or part thereof, nor shall it be permissible to register its description:…13. Marks that constitute a reproduction, imitation or translation of a well-known trade mark or part thereof owned by a third party, for use to distinguish goods or services that are similar or identical to those for which the well-known trade mark is used.  14. Marks that constitute a reproduction, imitation or translation of a well-known trade mark owned by a third party, or an essential part thereof, for use in connection with goods or services that are neither identical nor similar to those distinguished by the well-known trade mark, if their use is intended to indicate a connection between the goods or services and the well-known trade mark, and where it is likely that it will damage the interests of the owner of the well-known trade mark”.

 

It may be noted that the two clauses prohibit the registration of:

 

• A trade mark that is identical to a well-known trade mark, indicated by the legislators’ use of the word “reproduction”.
• A trade mark that is similar to a well-known trade mark, indicated by the use of the word “imitation”; in this case this imitation does not reach the level of being identical, but is a real simulation thereof.
• A mark which is a translation of a well-known trade mark.

 

The reason for this is that a mark that is to be registered in Kuwait must be distinct; namely, it must have its own identity that distinguishes it from other marks. The fulfilment of this condition gives it legal protection, and in its absence the protection is negated. The competent authority may then reject the application for registration of a trade mark submitted by a third party if it finds therein evidence that the condition of distinction is absent.

 

It is worth noting that in order for what appears in clause 13 to take effect, it must be confirmed that the purpose of registration of a mark that is considered to be a reproduction, imitation or translation is for its use on products or services that are similar or identical to the products or services that bear the well-known trade mark, and for what appears in clause 14 to take effect, it must be confirmed that the purpose of registration of the mark is for its use on products or services that are not identical to products or services that bear the trade mark, but the use may cause damage to the interests of the owner of the well-known mark, and that its use indicates the existence of a connection between them.

 

Also, if the application by a third party for registration of a mark is accepted then the competent authority should publish the acceptance in the Official Gazette, then any interested party, including its owner, may submit a written objection to that registration to the competent authority within 60 days of the date of publication.

 

Article 4, clause 2, indicates the criteria to determine whether or not the mark is well-known in its wording: “In order to determine whether a mark is well-known, the extent to which it is known amongst the intended public should be taken into account, as a result of its promotion, the length of time for which it has been registered or used, or the number of countries in which it is registered or well-known, or the value of the mark and the extent of its effect on the promotion of the goods or services that the mark is used to distinguish”.

 

As for the second course of action, this comprises the case of the completion of the registration phase for a mark submitted by a third party, that is, their success in registering it, and at that point it is the right of the owner of the well-known mark to initiate court proceedings to cancel (revoke) the registration a mark that is identical to their mark (reproduction) or similar to it (imitation), or which is a translation thereof on products or services that are identical or similar, or neither identical nor similar, on the basis of contravention of Article 3, clauses 13 and 14, and Article 4.

 

Here there are two provisions, application of which will differ according to the facts. The application for cancellation of a mark that has been registered in Kuwait with regard to a well-known trade mark shall be subject to Article 7:  “A person who registers a trade mark in good faith shall be deemed to be the owner thereof, and no dispute of ownership of the mark shall be permitted where the registration is combined with it having been used for a period of at least five years with no judicial dispute arising”. If it is registered and that is combined with use for a period of five years with no dispute arising within this period, its registration is protected against any claim of its cancellation. This time limit shall not apply, however, and the registration shall not be protected if the well-known trade mark is registered by a third party in bad faith, as Article 22 stipulates the following: “The competent authority and any concerned party shall be entitled to have recourse to the competent court to request a ruling for cancellation of a trade mark that has been registered illegitimately, and the competent body shall cancel the registration when it is presented with a final judgment”.  It follows from the implementation of that Article that the owner of the well-known trade mark may request the cancellation of the registration of their mark by a third party in bad faith at any time and without the five year restriction imposed by Article 7.

 

In one of the cases examined by the Kuwaiti Court of Cassation in 2017, it issued a ruling to cancel the registration of a trade mark registered in Kuwait that was identical to a well-known foreign trade mark, registration of which had previously been accepted by the department within the category of the catering and restaurants sector.  The Court ruled that the holder of a trade mark registered in a foreign country, that is, in countries that are signatory to international agreements to which the State of Kuwait is a signatory, has the right “to exclusive possession of its use, and a third party shall have no right to share in this use within any of the member states without its consent.  Its owner shall have the right to register that mark within any of the member countries, and it shall have the right to object to registration of this mark by a third party and to request the cancellation of this registration if this leads to confusion whereby the consuming public may be misled or deceived, with no requirement that they be resident in this state”.  The Court stated that the mark was a well-known foreign trade mark outside and within the State of Kuwait and was registered in numerous countries that were signed-up to the World Trade Agreement, which has become applicable legislation in those countries, including Kuwait, meaning that it is prohibited for third parties to use it or any mark combined with it in such a manner that the public using those goods or services may become confused. The fact that the foreign company had already registered it in the State of Kuwait before its registration by a third party meant that the foreign company has priority in its ownership. The action by a third party, who subsequently registered a mark after making changes to the word NANDO’S by changing its letters to small letters [lower case] and adding an image of a leaf to both sides of the word and underlining it, does not cause it to constitute a new mark and indeed the audio-quality of it remains the same.

 

This judgment confirms that the well-known foreign trade mark enjoys protection in the State of Kuwait, even in the case of an imitation of it with changes to the lettering and the addition of images to it.