From zero to hero? Does Kuwait's accession to the Berne and Paris Conventions make a difference?

Kuwait has long been a target of copyright industry lobby groups seeking improved protection for intellectual IP in the Middle East.

On September 2 2014 Kuwait became the 169th country to accede to the Berne Convention for the Protection of Literary and Artistic Works. Also, on the same day, Kuwait acceded to the Paris Convention of the Protection of Industrial Property. As a result of these accessions, Kuwait will become a member of both the Paris and Berne Conventions on December 2 2014.

A cause for celebration? Will copyright industry lobbyists now be relaxing on the basis that they have completed their goals for Kuwait?

This article considers the likely impact of the Berne and Paris Conventions in Kuwait. Will they turn Kuwait from an IP zero to an IP hero?

The protection of IP rights is nothing new in Kuwait. Kuwait’s laws on patents and designs, on trademarks and on copyright date back to 1962, 1980 and 1999, respectively.

On January 1 1995 Kuwait became a member of the World Trade Organisation (WTO). By virtue of its WTO membership, Kuwait agreed to adhere to implement the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). However, apart from enacting legislation to protect copyright works in 1999 in the form of Law No 64 of 1999 concerning Intellectual Property Rights (the Copyright Law) and making minor amendments to its domestic IP laws in 2001, Kuwait has not taken steps to adhere to the provisions of TRIPs.

Kuwait’s position in relation to copyright has come in for particular criticism from the US government and from copyright industry lobby groups. Specific concerns have been raised that the penalties under the Copyright Law are too light and that enforcement of the Copyright Law is, in practice, too weak.

As a result, Kuwait has become a constant presence on the Watch List contained within the annual Special 301 report prepared by the Office of the US Trade Representative (USTR) on an annual basis. The presence of a country on the Watch List indicates that the USTR considers that country to have particular problems with respect to IP protection, enforcement or market access.

In the most recent Special 301 report published in April 2014, the USTR stated that it would conduct an out-of-cycle review of Kuwait in September 2014 to assess whether it should be moved to the Priority Watch List for “increased bilateral attention”. The USTR specifically identified the introduction of copyright legislation that is “consistent with international standards” and resumption of enforcement against copyright and trademark infringement as key targets to be met by September 2014.

Now, with Kuwait joining both the Berne and Paris Conventions, all six countries which comprise the Cooperation Council for the Arab States of the Gulf (GCC) are members of both treaties.

By virtue of its WTO membership, Kuwait became bound to implement Articles 1 to 21 of the Berne Convention and, in fact, Kuwait almost entirely incorporated these provisions into national law when it enacted the Copyright Law in 1999.

The concerns which have been raised by the USTR and by the copyright industry lobby are outside the scope of the Berne Convention. For example, the International Intellectual Property Alliance (IIPA), which is a private sector coalition representing US copyright-based industries, has issued reports pushing for Kuwait to accede to the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty and to amend its Copyright Law by:

• increasing the fines and prison sentences imposed;
• reducing the moral rights protected afforded to authors;
• implementing protection against the parallel importation of copies of works, phonograms and performances; and
• extending the term of protection from life plus 50 years (as set out in the Berne Convention) to life plus 70 years for works of natural authors, and to 95 years from publication for audio-visual works and sound recordings.

IIPA clearly considers that piracy in Kuwait remains a key concern for its members. However, the changes sought by the IIPA go beyond the requirements set out in Berne.

Further, Kuwait has approved its accession to the Paris Convention by way of Law No 36 and, accordingly, the Paris Convention will become law in Kuwait with effect from December 2 2014. This should have an impact in relation to trademarks, patents and designs as follows:

• Priority claims for trademarks - as of December 2 2014, it should be possible for trademark applicants to claim priority (within the six-month priority period) from corresponding applications filed in any of the other 175 member states of the Paris Convention under Article 4 of the convention. Until now, priority claims have not been available for trademark applications in Kuwait. To date, no guidance has been issued as to what priority documentation will be required by the Kuwait Trademarks Office. Under the Paris Convention, a certified copy of the priority application can be requested (which should not require authentication), and can be filed within three months from the date of filing the application.
• Well-known marks - Article 62(5) of the Kuwait Trade Law No 68 of 1980 (as amended by Law No 1 of 2001) prohibits the registration of trademarks which are identical or confusingly similar to trademarks that are famous in Kuwait. However, there are no provisions in the Kuwait Trademark Law which deal with the infringement of well-known or famous marks. Article 6bis of the Paris Convention provides that member states should prohibit the use of trademarks which constitute a reproduction, imitation or translation of a well-known mark (or a mark which is confusingly similar to a well-known mark). Accordingly, with effect from December 2 2014, it should be possible to take effective action in Kuwait to prevent the unauthorised use of well-known trademarks.
• Unfair competition - under Article 10bis of the Paris Convention, Kuwait is bound to provide effective protection against unfair competition. Under the Paris Convention, any act of competition that is contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. Accordingly, as from December 2 2014, it should be more straightforward to bring actions in Kuwait to restrain acts of unfair competition, for example in relation to the use of indications (such as unregistered trademarks) which are likely to cause confusion.
• Priority claims for patents and designs - unlike the position with regard to trademarks, it is already possible to claim priority for patent and design applications. Article 50 of Law No 4 of 1962 relating to Patents, Designs and Industrial Models, as amended by Law No 3 of 2001 (the Patent Law), provides a right for an applicant in Kuwait to claim priority (during a 12-month priority period) from an application filed in a foreign country that accords Kuwait with reciprocal treatment. However, the right to priority under the Patent Law is dependent on reciprocal treatment being available. This is not the case under the Paris Convention, and any one of the 175 other members of the Paris Convention should now be able to claim priority in Kuwait without any concern that, as a matter of law and practice, their home country offers full reciprocal treatment to Kuwaiti nationals. It is worth noting, however, that the Kuwait Patent Office does not currently examine, publish or grant patents. Accordingly, many patentees seeking protection in Kuwait prefer to apply to the GCC Patent Office (where 12-month priority is also available).

To come back to our initial question, does Kuwait’s accession to the Berne and Paris Conventions take it from IP zero to IP hero? In our view, the answer is no. Kuwait’s IP laws have by and large met the standards of the Berne and Paris Conventions for many years. Accordingly, while the introduction of a six-month priority period for trademark applications in Kuwait is certainly welcome, the accession to the Berne and Paris Conventions will not in itself have a significant impact on the protection and enforcement of IP rights in Kuwait.

However, this development does perhaps provide a signal that Kuwait is responding to concerns raised by the USTR and copyright industry lobby groups, and that there may be further developments in the pipeline.

Rob Deans and David Harper, Clyde & Co, Dubai