HIGHLIGHTS
Kuwait Sets Precedent with Filmed Destruction of Counterfeit Character Stationery
Kuwait Customs intercepted a consignment of children’s stationery items imported from China that displayed unauthorised reproductions of famous characters and visual elements.
On inspection, Customs recorded the following:
- No copyright notices: None of the items bore the © symbol or any reference to the underlying copyrights.
- No licensee/distributor identification: Packaging lacked an authorised manufacturer, licence number, company name or verifiable contact details.
- Quality concerns: The items were of very low quality, inconsistent with the standards of genuine licensed merchandise.
Unfortunately, relevant trade marks were not registered locally at the time of seizure, and Customs relied on rights-holder input to establish likelihood of infringement.
The rights holder confirmed the goods were not genuine or licensed. This information was conveyed to Customs and forfeiture was requested.
Legal basis and enforcement rationale
- Copyright as an alternative tool: Character artwork and associated visuals are copyright protected works. In the absence of local trade mark registrations, invoking copyright for border enforcement against unauthorised reproductions may work if presented credibly and if the rights-holder is known for generally resorting to copyright in addition to other IP rights. This may not work across the board, therefore a case by case approach is advisable.
- Reliance on foreign registrations: Registration certificates from major jurisdictions can serve as credible evidence of subsisting rights and ownership, possibly enabling application of border measures.
- Consumer-protection and labeling angles: The lack of compliance markings and traceable supply-chain information may indicate consumer deception risk, supporting forfeiture. That said, it needs to be considered on a case by case basis.
Outcome
On 17 September 2025, the seizure report was issued, and Kuwait Customs conducted a filmed destruction – a first-of-its-kind precedent for this category in Kuwait. The video material has been circulated among enforcement agents and will serve as a benchmark for future actions.
Destruction inventory (as reported by Kuwait Customs)
- Water cups (various character themes): 637 items
- Sketchbooks (various character themes): 240 items
(Specific character themes are withheld for confidentiality; counts reflect the filmed destruction log.)
Why this matters
- Precedent value: The case demonstrates possibility of use of copyright-based border measures, even where local trade mark portfolios are incomplete.
- Deterrence effect: Public-sector sharing of outcomes increases operational awareness and discourages imports of low-quality, unlicensed character merchandise.
- Regional signal: It aligns Kuwait’s practice with international norms on rights-holder verification and border forfeiture across the children’s goods and FMCG sectors.
Practical takeaways for rights holders
- Keep evidence ready: Maintain up-to-date copyright registrations, chain-of-title documents, and specimen artwork.
- Codify authenticity markers: Provide Customs with quick-reference guides on authorised licensee identifiers, packaging tells, and quality benchmarks.
- Use multi-right strategies: Where trade marks are not locally registered (trade mark rights are always the most reliable enforcement basis), copyright, and other protection frameworks may be attempted.
- Invest in partnerships: Training and clear points-of-contact help accelerate authenticity confirmations and forfeiture decisions.
- Document outcomes: Encourage post-action reporting and, where appropriate, filmed destruction to build institutional memory and deterrence.
Conclusion
The August 2025 seizure and subsequent filmed destruction mark a significant progress in IP enforcement in Kuwait. By acting on clear indicia of unauthorised character use and leveraging copyright with rights-holder confirmation, Kuwait Customs delivered a swift, well-documented result that strengthens marketplace integrity – especially in the back-to-school trade.
This article first appeared on the MARQUES Class 46 Blog.
Authors: Sara Omran and Slobodan Petosevic
South African Court Rules against Africo Solar in Design Infringement Case
On 6 August 2025, in Cape Town, the Western Cape Division of the High Court of South Africa heard a dispute concerning alleged infringement of three registered industrial designs for rooftop solar panel mounting brackets. The applicant, Balster Jan Nienhuis, represented by a CWB South Africa patent attorney, claimed that the respondent, Africo Solar (Pty) Ltd, importer and wholesaler of solar products, had distributed products that replicated or closely resembled his protected designs. He sought a court order and further relief to prevent the unauthorised use.
The respondent admitted to distributing identical brackets but argued that selling identical brackets did not automatically constitute infringement because these brackets had other potential uses outside the protected Class 13 (solar panel mounting systems), such as for shelving, geyser, or lighting fixture mounting.
Legal Framework
The Court used a four-part test to assess infringement: whether the respondent’s actions could amount to infringement, whether the product fits the registered class, whether its use matches the design’s scope, and whether a valid legal defence was raised.
The Court emphasised that design protection is determined by the article’s visual features and its predominant purpose, rather than every conceivable use to which it might be put. In terms of section 20(1) of the Designs Act, a registered proprietor has the right to exclude others from making, selling, or commercially exploiting any article that falls within the specified class. The key question is whether the article itself belongs to that class — not whether its method of use falls within that class.
Evidence and Findings
Multiple facts supported the inference that Africo Solar sold its brackets predominantly for solar panel mounting:
- The respondent’s name suggests a focus on solar products;
- The brackets were branded with the trade mark “VOLTA,” owned by Africo Trading Company (Pty) Ltd, and associated with solar energy;
- The “VOLTA” mark is registered in classes that include solar panel brackets;
- The applicant alleged that Africo’s principal business involves solar panel sales and installations — a claim not disputed;
- The brackets were advertised as solar panel mounting systems; and
- The design origin (Nas Moulds) and bracket features matched those used for solar panel mounting.
The respondent failed to provide specific details about how the brackets were sold or used. Instead of denying the solar-related use, the respondent merely asserted that the brackets could also serve other purposes. The Court found this defence insufficient and concluded that the brackets were marketed and sold predominantly for solar panel mounting.
Court’s Interpretation and Ruling
The Court held that if an article is predominantly used within the scope of the registered design, it falls within the protection afforded by section 20(1) of the Designs Act, even if it may also be used in other classes. Expecting the proprietor to foresee every conceivable use would place an unreasonable burden and open the door to circumvention of design protection. This interpretation aligns with the Designs Act’s purpose: to protect innovation and ensure the proprietor enjoys the full benefit of the registration. The Court found that the respondent’s conduct constituted infringement and that the applicant was entitled to relief.
The court ordered the respondent to:
- Cease infringing the applicant’s registered designs (F2022/00395, F2022/01043, F2022/01044);
- Hand over all infringing articles in its possession to the rights owner for destruction;
- Continue with an enquiry into damages; and
- Refer any procedural disputes related to the enquiry to the Court.
The Court also ordered the respondent to pay the applicant’s legal costs on a punitive scale.
Further procedural disputes will be referred to the same court.
By: Pieter Venter
REGIONAL UPDATES
Central Asia
Kazakhstan to Implement New Goods Marking Rules and National Catalog in January 2026
Over the past five years, Kazakhstan has been steadily building its system of mandatory labeling and traceability, first by introducing labeling requirements for high-risk goods such as footwear, tobacco, and pharmaceuticals in 2020 and 2021 to combat counterfeiting, improve tax compliance, and protect consumers. However, until recently, the legal framework lacked a centralised registry to unify and streamline product data.
Following Order No. 232-НK of 31 July 2025, issued by Kazakhstan’s Ministry of Trade and Integration, the National Goods Catalog (NGC) was officially launched on 15 August 2025. The NGC is a centralised digital platform that stores standardised product data in both Kazakh and Russian, including product names, importer or manufacturer details, global and national trade item number codes (GTIN/NTIN), and technical characteristics, which ensures that no goods enter circulation without prior registration.
The legal basis for this initiative is the Law of the Republic of Kazakhstan No. 215-VIII ZRK “On Amendments and Additions to Certain Legislative Acts on Taxation Issues”, published on 19 July 2025, which revises the Tax Code and related legislation to integrate tax control, trade monitoring, and labeling requirements into a unified regulatory framework. It also introduces liability for incomplete or inaccurate registration in the NGC, signaling that the system is mandatory and enforceable. A separate law, expected to be adopted soon, will formally regulate the National Goods Catalog (NGC), requiring all products to be registered and labeled accordingly.
From January 2026, businesses must fully comply with digital registration and labeling, or risk penalties and market exclusion. The NGC is expected to curb counterfeit goods and tax evasion, enhance customer protection, and align Kazakhstan’s trade system with international standards. While companies may incur administrative costs to adapt to changes, the NGC is expected to streamline product turnover, improve market predictability, and curb shadow trade.
Key functions of the NGC:
- Provides a unified reference source for all goods subject to labeling and traceability;
- Ensures consistent classification and prevents duplication or manipulation of product data;
- Serves as a tool for tax authorities and regulators to monitor turnover and fight the shadow economy;
- Increases transparency for consumers, guaranteeing access to accurate product information.
Procedures for Businesses:
- Product Card Creation: Manufacturers or importers submit product data electronically, including names, GTIN/NTIN codes, and technical specifications, to the Department of Digital Transformation and Marking of Goods under Kazakhstan’s Ministry of Trade and Integration. The applications are reviewed within two working days.
Decision: Within one working day, the authority registers the product or issues a refusal, which can be appealed under the Administrative Procedural Code.
Labeling Codes: After the product is registered in the National Goods Catalog, the business must apply for unique labeling codes from the authorised operator, which are then used to mark each item before it enters circulation.
Traceability: The movement of goods is tracked in the information system from registration to final sale, ensuring transparency and accountability throughout the supply chain.
By: Aliya Madiyarova
Eastern Europe
Bulgaria: Blue and Red Zone Marks Lose Their Trade Mark Status
In two recent decisions, the Bulgarian Supreme Administrative Court ruled to invalidate trade mark registrations for СИНЯ ЗОНА (BLUE ZONE) and ЧЕРВЕНА ЗОНА (RED ZONE), citing public policy and deceptiveness.
The Bulgarian Supreme Administrative Court ordered the invalidation of two trade mark registrations, overturning the lower instance decisions which had upheld the trade mark registrations for СИНЯ ЗОНА (BLUE ZONE) and ЧЕРВЕНА ЗОНА (RED ZONE), both stylised and registered by BASSMANIYA-1 EOOD for goods and services including clothing, transport, and hospitality (Nice Classes 25, 39, and 43).
The judgments were in cases No. 853/25 and No. 200/25 and were delivered on July 3, 2025.
The Supreme Court upheld the position of Sofia’s municipal parking authority—Urban Mobility Center—which, joined by other public entities during the administrative phase, argued that the terms are integral to the regulatory framework governing municipal parking and should not be subject to private trade mark monopolisation. The Court based its decision on provisions prohibiting trade marks contrary to public policy and trade marks that are deceptive.
In Bulgaria and other European countries, colour-coded zones denote municipal parking regimes. But does mere overlap with such terms justify barring trade mark registration? While certain regulatory terms should indeed remain free in the public interest, the rationale behind that is far less convincing when parking-related terms are applied to goods and services like clothing and hospitality. It is difficult to see how granting exclusive rights in such unrelated product categories would undermine public order.
The same applies regarding deceptiveness: It is hard to believe that someone buying a jacket labeled RED ZONE or staying in a hotel named BLUE ZONE would think they are engaging with a municipal parking authority.
That said, what makes the unfolding of this series of cases particularly puzzling is that it seems driven by a reasonable concern about monopolising parking-related terms, but then fails to stop there. The earlier finding of descriptiveness and lack of distinctiveness by the Bulgarian Patent Office regarding “rental of parking spaces” in Class 39 had already redressed that concern and struck a balance between private rights and the public domain—although one could reasonably argue that transport-related services in Class 39 should also have fallen under these objections. Resorting to public policy and deceptiveness, therefore, appears so unwarranted here, so excessive, that the cancellation regarding the broader goods and services, like clothing and hospitality, feels more like collateral damage than sound judgment.
As a result, a legal stretch like this may have put an end to trade marks like BLUE and RED ZONEs altogether, but it has also left a whole new gray zone in Bulgarian trade mark case law.
This article first appeared in the INTA Bulletin on 17 September 2025.
By: Kliment Markov
Ukrainian Pharma Company Fined for Unfair Competition
On 4 September 2025, the Antimonopoly Committee of Ukraine (AMCU) ruled that a Kharkiv-based pharmaceutical company Berkana+ LLC engaged in unfair competition practices by using the designation and packaging for their dietary supplements DetraMax which closely resemble the trade mark and packaging of the medicinal product DETRALEX®.
The DETRALEX® trade mark and packaging have long been used by the French pharmaceutical company Biopharma and Servier Ukraine LLC, both part of the Servier Group, one of the world’s leading pharmaceutical companies. The companies filed a complaint with the AMCU, which determined that Berkana+’s unauthorised use of the DetraMax name and packaging could mislead consumers and allow Berkana+ to unfairly benefit from the established reputation of Biopharma and Servier Ukraine.
Specifically, the similarity could cause consumers to confuse DetraMax dietary supplements with DETRALEX® medicines—products that are subject to state registration, clinical trials, and rigorous quality control, and whose therapeutic efficacy is clinically proven. These conclusions were supported by consumer surveys conducted by the AMCU and an expert opinion in the field of intellectual property provided by the applicants.
As a result, the AMCU ruled that Berkana+ had violated Article 4 of Ukraine’s Law “On Protection Against Unfair Competition” and imposed a fine of 150,000 UAH (approximately 3,100 EUR).
The AMCU further noted that Berkana+ acknowledged the violation and took corrective measures by withdrawing the infringing products from the market and arranging for their proper disposal.
Middle East
Bahrain and Japan to Launch PPH
Bahrain and Japan will launch a Patent Prosecution Highway (PPH) programme on 1 January 2026, after signing a Memorandum of Understanding in September 2025.
Bahrain already has active or recently established PPH pilot programs with several IP offices, including China, EPO, Korea and the US. This program leverages the work of previous offices to streamline and expedite the patent examination process, reducing redundancy and processing times for applicants.
By: Sara Omran
Lebanon Simplifies IP Ownership Transfer Recordations
On 25 August 2025, Lebanon’s Ministry of Economy and Trade issued Decision No. 3/1, introducing a streamlined procedure for recording IP transfers, such as for trade marks, patents, industrial designs, and copyrights, including assignments and mergers. An official notice will be published in the upcoming issue of the Official Gazette.
Key changes include:
- Original registration certificate no longer required: Assignment or merger recordals may now be filed without submitting the original IP registration certificate; a scanned copy suffices.
- No reissuance of trade mark certificates: The Trade Mark Office will not issue a new trade mark certificate after recording an assignment. Reverting to the former endorsement-on-original method simplifies the process and reduces administrative burdens.
To record an IP ownership transfer with the Lebanese Intellectual Property Office (IPO), applicants must submit the following documents / take note of the following:
- Power of Attorney (POA): Must be issued in the name of the applicant or assignee. If signed abroad, it must first be notarised by a local notary and then legalised by the Ministry of Foreign Affairs in the country of origin, before being presented for further legalisation at the Lebanese consulate or embassy.
- Assignment Document: May be a Deed of Assignment (DOA), merger agreement, or a specific IP-transfer clause signed by both parties. If signed abroad, it must be notarised and legalised, as the PoA.
- Registration Certificate: A copy of the relevant IP certificate.
- Patent filing formalities: May vary, especially in PoA documentation.
- Post-registration recordals: the Lebanese IPO requires legalised documents if signed abroad.
- Three-month recordal window: Ownership transfers should be recorded within three months of the transfer date, with late-filing surcharges accruing every two months.
- Written proof required for mergers: Even under simplified filing procedures, Lebanese courts require written evidence to prove trade mark transfers, including mergers.
By: Sara Omran
Qatar Strengthens IP Protection Through WIPO Partnership
On 4 September, in Doha, Qatar’s Investment and Trade Court President signed a cooperation agreement with WIPO’s Arbitration and Mediation Center Director, marking a significant milestone in the country’s efforts to enhance intellectual property protection.
This strategic partnership aims to modernise Qatar’s judicial framework, enabling more efficient and effective resolution of commercial and IP-related disputes. As a result, businesses and investors can expect increased legal certainty and stronger safeguards for their IP rights—reinforcing Qatar’s position as a regional hub for innovation and investment.
Under the agreement, the Court will leverage WIPO’s expertise in arbitration, mediation, and dispute resolution to implement contemporary tools and mechanisms for handling complex IP cases. These enhancements are designed to reduce investor risk, and streamline dispute resolution.
By: Sara Omran
