Ministerial Resolution No. 500 of 2015 on Approving the Executive Regulations of Law No. 13 of 2015 Approving the Trademark Law (Regulation) of the GCC States

Ministerial Resolution No. 500 of 2015
on Approving the Executive Regulations of Law No. 13 of 2015 Approving the Trademark Law (Regulation) of the Cooperation Council for the Arab States of the Gulf

Article One

The provisions of the Executive Regulations of Law No. (13) of 2015 Approving the Trademark Law (Regulation) of the Cooperation Council for the Arab States of the Gulf, the texts of which are attached to this Resolution, shall be applied.

Article Two

The fees to be collected for the procedures carried out under the Law (Regulation) shall be applied in accordance with the categories set out in the schedule attached to this Resolution.

Article Three

Everything that conflicts with the provisions of this Resolution is hereby repealed.

Article Four

This Resolution shall be published in the Official Gazette and shall come into force from the day following the date of its publication.

Executive Regulations of the Trademark Law (Regulation) of the Cooperation Council for the Arab States of the Gulf

Chapter One – Definitions

Article 1

The words and expressions used in these Regulations shall have the meanings set out in the Trademark Law (Regulation) of the Cooperation Council for the Arab States of the Gulf, and the following words and expressions shall have the meaning assigned to each of them, unless the context of the text requires otherwise:
Competent Department: The department concerned with the registration of trademarks in each of the GCC States
The Law (Regulation): The Trademark Law (Regulation) of the Cooperation Council for the Arab States of the Gulf.
Grievance Committee: A committee formed by a resolution of the Competent Minister to consider grievances.
Priority: Reliance on an earlier application filed in one of the States.

Chapter Two – Procedures for the Registration of Trademarks

Article 2

An application for the registration of trademarks shall be submitted on the form prepared for that purpose to the Competent Department by the person concerned, if he has a domicile in the State, or by an accredited agent who has a domicile in the State and is entered in the register of trademark registration agents determined by the Competent Authority. The application shall be limited to the registration of one mark in one class; the classes of products or services for which registration of the mark is requested may be multiple in a single application with the approval of the Competent Department, in accordance with the International Classification of Goods and Services (Nice Classification) and its amendments, in a manner that does not conflict with public order in each State.

Article 3

An application for the registration of a trademark shall contain the following particulars:
1- A representation of the trademark for which registration is requested.
2- The name, address and nationality of the applicant for registration; if the applicant for registration is a legal person, its name and address shall be stated.
3- An accurate description of the trademark for which registration is requested.
4- The products or services for which registration of the mark is requested, and their class.
5- The priority date and number and the State in which it was filed (if any).
6- The signature of the applicant for registration or his accredited agent; if the application is submitted by a legal person, the papers shall be signed by the person entitled to sign on its behalf, and if the application is submitted by an agent, his name and address shall be stated.

Article 4

The following shall be attached to an application for the registration of a trademark:
1- Four representations of the trademark matching the specimen of the mark in the application for registration.
2- If the application is submitted by an agent, a copy of the power of attorney shall be attached together with the original for verification, and the original copy shall be notarised, authenticated in accordance with the established procedures and translated into Arabic.
3- Proof of the practice of the profession or activity.
4- Proof of payment of the application fee.
5- If the mark for which registration is requested contains one or more words written in a foreign language, the applicant for registration shall submit a certified translation thereof into Arabic, with a statement of how it is pronounced.
6- Sound marks shall be submitted in musical notation or as a written description.
7- Scent marks shall be submitted as a written description.

Article 5

a- If an applicant for the registration of a trademark, or his successor, wishes to enjoy the right of priority on the basis of an earlier application filed in a State that is a member of a multilateral international agreement to which the GCC State is a party, he shall attach to his application a declaration stating the date and number of the earlier application and the State in which it was filed. The applicant shall also file a certificate showing the filing date, issued by the authority with which the application was filed, together with a copy of the earlier application and a translation into Arabic, within six months from the date of submission of the earlier application for registration for which the right of priority is claimed; otherwise, his right to claim it shall lapse.
b- The original priority documents may be attached within three months from the date of submission of the application for registration.

Article 6

The Competent Department shall examine the application for the registration of a trademark and decide on it within ninety days from the date of its submission, either by accepting it if it fulfils the conditions and procedures set out in the Law (Regulation) and the Executive Regulations, or by rejecting it. The Competent Department shall notify the applicant for registration of its decision in writing or electronically at the address specified by the applicant.
The Competent Department may request that the conditions or documents be completed, or that the necessary amendments be made to amend the application for registration, within ninety days from the date of notifying the applicant thereof; otherwise, the applicant shall be deemed to have abandoned his application.

Article 7

If the Competent Department issues a decision rejecting the registration of the trademark or making it subject to a condition, the applicant for registration or whomever he designates shall have the right to file a grievance against it before the Grievance Committee within sixty days from the date of being notified thereof.

Article 8

The Competent Minister in each of the GCC States shall form a committee to consider grievances, and the resolution shall determine the number of members of the committee, the term of membership, its rules of procedure and the remuneration of its members.

Article 9

The grievant shall be notified of the decision of the Grievance Committee in writing or electronically within thirty days from the date of its issuance, and he shall have the right to challenge it before the competent court within sixty days from the date of being notified thereof.

Article 10

a- If the application is accepted, the applicant for registration or his agent shall pay the publication costs within thirty days from the date of being notified of the decision; otherwise, the application shall be deemed abandoned.
b- The publication notice shall contain the following particulars:
1- The application number and date of submission.
2- The name, address and nationality of the applicant for registration.
3- A representation of the trademark.
4- The name and address of the agent.
5- The products or services for which registration of the mark is requested, and their class.
6- Restrictions and conditions.
7- The priority date and number and the State in which it was filed (if any).

Article 11

The Competent Authority shall issue or designate a bulletin dedicated to trademarks, in which everything required to be published under the Trademark Law (Regulation) and its Executive Regulations shall be published.

Article 12

1- Any person concerned may file a reasoned opposition before the Competent Department against the registration of the trademark within sixty days from the date of its publication in the bulletin issued or designated by the Competent Authority, after paying the prescribed opposition fee and in accordance with the form prepared for that purpose.
2- The Competent Department shall notify the applicant for registration by sending him a copy of the opposition within thirty days from the date of its submission.
3- The applicant for registration shall submit to the Competent Department a written reply to the opposition within sixty days from the date of being notified thereof; otherwise, he shall be deemed to have abandoned his application.

Article 13

1- The Competent Department may set a date for a hearing to hear the statements of the applicant for registration and the opposer, or either of them, at his request, and for the submission of supporting documents, and shall give notice thereof after payment of the prescribed fee.
2- The Competent Department shall notify both parties of the decision it issues, which shall be reasoned and shall contain such restrictions and conditions as it deems necessary, within ninety days from the hearing.

Article 14

The decision accepting registration shall be deemed final upon the lapse of sixty days from the publication of the notice of the mark in the bulletin issued or designated by the Competent Authority without an opposition to its registration having been filed, or upon the issuance of a final judgment in this regard by the competent court.
The applicant for registration shall pay the mark registration fee within thirty days from the date of issuance of the final decision accepting the registration of the mark; otherwise, he shall be deemed to have abandoned his application.

Article 15

The Competent Department shall register the mark in the Trademark Register, and its owner shall be given a registration certificate containing the following particulars:
1- The trademark number and date of registration.
2- The date on which protection of the trademark begins and the date on which it ends.
3- The priority date and number and the State in which it was filed (if any).
4- The name, address and nationality of the owner of the trademark and his trade name (if any).
5- A representation of the trademark.
6- The products or services for which the trademark is registered, and their class.
7- Restrictions and conditions (if any).
The registration of the trademark shall take effect from the date of submission of the application for registration as recorded in the Trademark Register.

Article 16

The owner of a registered trademark may request the amendment of the following particulars in the Trademark Register, in accordance with the form prepared for that purpose and after paying the prescribed fees, namely:
1- The name, address, profession or nationality of the owner of the trademark; in the case of a legal person, every change to its name and address shall be recorded.
2- The deletion of some of the goods and services for which the mark is registered.
3- A change of the name or address of the agent, or both.
The Competent Department shall prepare a notice containing the amendment requested under Clauses (1) and (2) of this Article and shall publish it in the bulletin issued or designated by the Competent Authority after the publication costs have been paid; the Trademark Register shall be annotated accordingly, and the applicant shall be provided with proof thereof.

Chapter Three – Term of Protection of the Trademark

Article 17

The owner of a mark who wishes its protection to continue shall submit an application on the form prepared for that purpose to the Competent Department, after paying the prescribed fees, during the last year of its protection period or within the six months following the expiry of protection.

Article 18

Applications for the renewal of the protection period that are formally accepted shall be approved, after payment of the fees due, without any new examination, and the Competent Department shall prepare a renewal notice containing the following particulars:
1- The number and class of the mark.
2- The name, address and nationality of the owner of the mark.
The Competent Department shall publish the notice in the bulletin issued or designated by the Competent Authority after the publication costs have been paid, and the Trademark Register shall be annotated accordingly.

Chapter Four – Temporary Protection of Marks Used at Exhibitions

Article 19

If the owner of a mark wishes to obtain temporary protection for his mark relating to products or services displayed at a national or international exhibition held in a GCC State, he shall notify the Competent Department for the registration of marks in that State of his wish to exhibit at least one month before the opening of the exhibition. The notification shall be made on the form prepared for that purpose, accompanied by four representations of the mark and proof of payment of the prescribed fee, provided that the mark satisfies the registration conditions set out in the Law (Regulation) and its Executive Regulations.

Article 20

Applications for the temporary protection of marks used at exhibitions shall be entered in a special register called the Temporary Protection Register, which shall contain the following particulars:
1- The temporary protection number
2- The date of submission of the application
3- The name of the exhibitor
4- The name of the exhibition and the date of its official opening
5- The products or services for which protection of the mark is requested, and their class.

Article 21

The Competent Department shall issue a certificate of temporary protection for the mark used at exhibitions for a period not exceeding six months from the date of the opening of the exhibition.

Article 22

The certificate of temporary protection provided for in the preceding Article may not be granted except in respect of exhibitions designated by an official decision.

Chapter Five – Cancellation of the Registration of a Trademark

Article 23

The registration of a trademark shall be cancelled in accordance with the provisions of the Law (Regulation). The Competent Department shall annotate the cancellation of the registration in the Trademark Register, and this shall be announced in the bulletin issued or designated by the Competent Authority, provided that the notice contains the following particulars:
1- A representation of the trademark.
2- The number of the registered trademark.
3- The name and nationality of the owner of the trademark.
4- The reason for and the date of the cancellation of the registration.
If the cancellation is at the request of the owner of the trademark, the request shall be submitted on the form prepared for this purpose after payment of the application fee and the publication costs, provided that the mark is registered and its protection is in force.

Chapter Six – Transfer of Ownership, Pledge and Attachment of a Trademark

Article 24

Ownership of a trademark shall be transferred on the basis of an application submitted to the Competent Department by the person to whom ownership has passed, or by his accredited agent, after payment of the prescribed fee, on the form prepared for that purpose, which shall contain the following particulars:
1- The number and class of the registered trademark.
2- The name and address of the previous owner of the mark.
3- The name of the person to whom ownership of the mark has passed, his trade name (if any), address and nationality.
4- The date of the transfer of ownership and the disposition or event by virtue of which ownership was transferred.
5- If the application is submitted through an agent, his name and address shall be stated.
The following documents, notarised, authenticated in accordance with the established procedures and translated into Arabic, shall be attached to the application:
1- Evidence of the transfer of ownership.
2- Proof of his practice of the activity.
3- The original power of attorney, if the application is submitted by an agent.

Article 25

Without prejudice to the provisions of Article (5) of the Law (Regulation), the natural heirs of the owner of the trademark shall have the right to transfer ownership into their names jointly, or to any of them by virtue of a deed of assignment signed by those who have a right in the trademark.

Article 26

The Competent Department shall prepare a notice of the transfer of ownership of the trademark containing the following particulars:
1- The number and class of the registered trademark.
2- The name of the previous owner of the trademark.
3- The name, address and nationality of the person to whom ownership has passed.
The Competent Department shall publish the notice in the bulletin issued or designated by the Competent Authority after the publication costs have been paid, and shall annotate the transfer of ownership of the trademark in the register

Article 27

The pledge of a mark shall be annotated in the register in accordance with the same procedures and conditions applicable to the transfer of ownership of the mark, and the publication of the pledge shall contain the same particulars as provided for in Article (25) of these Regulations, after payment of the prescribed fees.

Article 28

The pledge of a trademark shall be released on the basis of an application submitted to the Competent Department by the owner of the mark, accompanied by the supporting documents, notarised, authenticated in accordance with the established procedures and translated into Arabic, after payment of the prescribed fees.
The Competent Department shall publish the release of the pledge in the bulletin issued or designated by the Competent Authority after the publication costs have been paid; the register shall be annotated accordingly, and the applicant shall be provided with proof thereof.

Article 29

The attachment of a registered trademark shall be annotated in the register on the basis of a judicial order, and the attachment shall not be lifted except on the basis of a final court judgment.

Chapter Seven – Licence Contracts

Article 30

If the owner of a registered trademark licenses a natural or legal person to use the mark for all or some of the products or services for which it is registered, the licence contract shall be in writing, notarised, authenticated in accordance with the established procedures and translated if the original is drawn up in a language other than Arabic. In all cases, the term of the licence may not exceed the protection period prescribed for the trademark.

Article 31

An application for the registration of a licence shall be submitted to the Competent Department by the owner of the mark, his accredited agent or the licensee, in accordance with the form prepared for that purpose, after payment of the prescribed fee, and shall contain the following:
1- The number of the registered trademark.
2- The name and nationality of the owner of the trademark.
3- The name, address, place of residence, address and nationality of the licensee.
4- The products and services for which the licence is granted.
5- The date on which the licence begins and ends.
6- The geographical scope of the licence (if any).
The following documents, notarised, authenticated in accordance with the established procedures and translated into Arabic, shall be attached to the application:
1- The licence contract.
2- The original power of attorney.

Article 32

The Competent Department shall annotate in the register the licence to use the mark and shall provide the applicant with proof thereof at his request. The Competent Department shall publish the notice in the bulletin issued or designated by the Competent Authority after the publication costs have been paid, provided that the publication notice contains the following particulars:
1- A representation of the trademark
2- The number of the registered trademark and the date of its registration
3- The name, address and nationality of the owner of the trademark
4- The name, address and nationality of the licensee
5- The products or services licensed for use, and their class
6- The date, commencement and end of the licence
7- The geographical scope of the licence (if any)

Article 33

The registration of a licence shall be cancelled on the basis of an application submitted to the Competent Department by the owner of the mark, his accredited agent or the licensee, accompanied by proof of the expiry or rescission of the licence, after payment of the prescribed fee.
The Competent Department shall notify the other party in writing of the application for cancellation of the registration, and that party may in this case object thereto by filing a challenge before the competent court within thirty days from the date of being notified of the application for cancellation, and shall file with the Competent Department a copy of the objection and proof of its submission. The cancellation shall be suspended until the two parties agree or a final judgment is issued by the court deciding on the objection.

Article 34

If no objection is made to the cancellation of the licence, or if a final judgment on the objection is issued by the court, the Competent Department shall publish the cancellation in the bulletin issued or designated by the Competent Authority after the publication costs have been paid; the cancellation of the licence shall be annotated in the register, and the applicant shall be provided with proof thereof.

Chapter Eight – Collective Marks, Control Marks, and Marks of Public Benefit Bodies and Professional Institutions

Article 35

In addition to what is provided for in Articles (2) and (3) of these Regulations, the following requirements shall be attached to an application for the registration of a collective mark:
1- An indication in the application for registration that it is a collective mark.
2- A true copy of the statute of the federation, organisation or public institution applying for registration, together with any amendments that may have been made to it, which shall include the following:
a- A statement of the category of persons entitled to use the mark and their relationship with the applicant.
b- A copy of the conditions for the use of the collective mark for goods and services.
c- A declaration that the applicant exercises or will exercise strict control over the use of the collective mark by the members affiliated with it.
d- How members qualify for membership of that body.
3- All documents shall be notarised, authenticated in accordance with the established procedures and translated into Arabic.
Publication and registration shall be carried out in accordance with the same procedures set out in Chapter Two of these Regulations.

Article 36

In addition to what is provided for in Articles (2) and (3) of these Regulations, the following requirements shall be attached to an application for the registration of a control or inspection mark:
1- An indication in the application for registration that it is a control or inspection mark
2- A true copy of the statute of the federation, organisation or public institution applying for registration, together with any amendments that may have been made to it, which shall include:
a- A declaration that the control or inspection mark will be used by persons other than the applicant, and that the applicant will not engage in the marketing or production of any goods or services on which this mark is used.
And that it will not engage in discriminatory policies that would prevent the use of the mark by third parties that meet the specifications set by the owner.
b- A declaration that the control or inspection mark certifies the quality, types or characteristics of the goods or services and that it does not indicate the origin of the goods or services.
c- Documents specifying the specifications and standards applied by the applicant body for the purpose of controlling the use of the mark, and proving that the applicant body operates an accredited quality assessment programme.
d- A certificate showing the characteristics of the goods or services that are certified or for which certification is requested.
3- All documents shall be notarised, authenticated in accordance with the established procedures and translated into Arabic.
Publication and registration shall be carried out in accordance with the same procedures set out in Chapter Two of these Regulations.

Article 37

Where registration of marks is requested for non-commercial purposes, this shall be indicated in the application for registration, and the statute of the public benefit body or professional institution submitting the application shall be attached; the mark shall be published and registered in accordance with the same procedures set out in Chapter Two of these Regulations.

Chapter Nine – General Provisions

Article 38

The Competent Authority shall prepare a notice of the content of the judgment issued against the offender in the case of recidivism in accordance with Article (43) of the Law (Regulation), which shall be published at the offender’s expense in a prominent place in two widely circulated daily newspapers, one of which is issued in the region in which the offender’s head office is located, if such a newspaper exists.

Article 39

The Competent Authority may establish an electronic system and an electronic database for the submission of applications for the registration of trademarks and the renewal of their protection period and for following up their procedures, and the particulars set out in Article (3) of these Regulations shall be observed therein.

Article 40

The fees due shall be determined in accordance with the schedule annexed to these Regulations, and each Member State may impose fees other than these in accordance with its own procedures.

Trademark Fees

First: Trademarks and service marks, for one mark in one class.	Fees in Kuwaiti Dinars
Application for registration of a trademark	45
Publication of a trademark (if the bulletin is issued by the Competent Authority)	25
Registration of a trademark and issuance of a certificate	240
Second: Collective marks, control and inspection marks, and marks of public benefit bodies and professional institutions.	Fees in Kuwaiti Dinars
Application for registration of a collective [mark]* and control marks or marks of public benefit bodies or professional institutions	95
Publication of a mark (if the bulletin is issued by the Competent Authority)	45
Application to amend the rules of use of a registered mark designated to indicate control or inspection, or of a collective mark	25
Registration of a mark and issuance of a certificate	240
Third: Grievance and opposition, for one mark in one class.	Fees in Kuwaiti Dinars
Grievance against a decision rejecting the registration of a mark or making it subject to a condition	45
Application for opposition to the acceptance of registration of a mark	95
Application for setting a hearing date	45
Fourth: Renewal, for one mark in one class.	Fees in Kuwaiti Dinars
Application for renewal of a mark during the last year of its protection period	265
Application for renewal of a mark within six months from the date of expiry of protection	310
Publication of the renewal (if the bulletin is issued by the Competent Authority)	45
Fifth: Transfer of ownership, for one mark in one class.	Fees in Kuwaiti Dinars
Application for annotation of the transfer of ownership of the mark	45
Publication of the transfer of ownership (if the bulletin is issued by the Competent Authority)	25
Sixth: Licence to use one mark in one class.	Fees in Kuwaiti Dinars
Application for annotation of a licence to use a mark	95
Publication of the licence (if the bulletin is issued by the Competent Authority)	45
Application for cancellation of the licence	45
Publication of the cancellation of the licence	45
Seventh: Pledge, for one mark in one class.	Fees in Kuwaiti Dinars
Application for annotation of the pledge of a mark	45
Publication of the pledge (if the bulletin is issued by the Competent Authority)	25
Application for release of the pledge	25
Publication of the release of the pledge (if the bulletin is issued by the Competent Authority)	25
Eighth: Amendment of particulars after registration, for one mark in one class.	Fees in Kuwaiti Dinars
Application for annotation of a change in the name of the owner of the mark	45
Application for annotation of a change in the address of the owner of the mark	45
Application for annotation of a change in the name and address of the owner of the mark or the agent	25
Application for annotation of a change in the name of the registration agent	10
Publication of an amendment of the name or address of the owner of the mark or the agent (if the bulletin is issued by the Competent Authority)	25
Ninth: Amendment of the form of one mark in one class.	Fees in Kuwaiti Dinars
Application for amendment of the form of the mark	45
Publication of the amendment of the form of the mark (if the bulletin is issued by the Competent Authority)	25
Grievance against a decision rejecting the amendment of a registered mark	25
Tenth: Cancellation of one mark in one class.	Fees in Kuwaiti Dinars
Application by the owner for cancellation of the registration of a mark	10
Application for deletion of part of the goods or services	10
Publication of the application (if the bulletin is issued by the Competent Authority)	10
Eleventh: Other fees.	Fees in Kuwaiti Dinars
Application for temporary protection of a trademark (for one mark in one class)	45
Application for a preliminary search on a trademark (for one mark in one class)	45
Application for a certified true copy or a replacement of a lost registration certificate (for one mark in one class)	45
Application for a certificate of filing of a mark (for one mark in one class)	25
Application for a certified true copy of any application or document submitted to or issued by the Competent Department (for one mark in one class)	10
Entry of a trademark registration agent in the register of agents	140
Renewal of the entry in the register of agents (annually)	140
Fees for the publication medium per issue (if the bulletin is issued by the Competent Authority)	5

* Completed from the context.

Issued on 20 December 2015 and published in the Official Gazette Kuwait Al-Youm on 27 December 2015.