眾律國際法律事務所

Introduction:

Language: Kazakh

Capital: Astana

Area: 2,724,900 km2

Population: 18,050,488 hab.

Currency: Tenge (KZT)

Religion: Muslim (70%), Christian (26%), Buddhist (0.1%), Irreligious (3%), Other (0.9%).

Kazakhstan shares borders with Russia, China, Kyrgyzstan, Uzbekistan, and Turkmenistan, and also adjoins a large part of the Caspian Sea.

International treaty membership:

Singapore Treaty on the Law of Trademarks

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

Trademark Law Treaty

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

Madrid Agreement Concerning the International Registration of Marks

Paris Convention for the Protection of Industrial Property

Legislation:

Law of the Republic of Kazakhstan of July 26, 1999 No. 456

Laws of the Republic of Kazakhstan оf 07.04.2015 No. 300-V (amendment)

Code No. 296-IV of June 30, 2010, on Customs Issues in the Republic of Kazakhstan (as amended up to Law of the Republic of Kazakhstan No. 499-V of April 9, 2016)

Notification:

Article 2. 2. Where the international agreement ratified by the Republic of Kazakhstan sets other rules than those laid down by this Law the rules of such international agreement shall be applied.

Government Institutions :

The National Institute of Intellectual Property.

Type of trademark :

Words, designs, symbols, 3D shapes, colors, combinations, collective marks, certification marks, well-known mark, service marks.

Ground for refusal:

- Trademark protected by priority rights.

- Trademark that mislead the consumer.

- No registration shall be allowed for trademarks consisting only of designations that are devoid of distinctive ability or indicate the nature and quality of the goods.

- No registration shall be allowed for marks already protected or recognized as well known in Republic of Tajikistan or by virtue of an international treaty.

- Any designations that use names or symbols related to states or institution. Such element can be incorporated as non protected elements under authorization.

- Symbols and name which are contrary to public interests, principles of humanity and morals.

- Family or given name, or any element attached to a person.

- A title of a work of science, literature or art, known in the country at the date of filing of the application.

Application content:

Have to be done by one person.

For collective marks, needs to have the consentment of other participant in the use of the mark.

-  Application shall relate to one trademark only.

-  Application shall be submitted on the standard form and shall contain:

      1) the request for expertise of designation specifying the applicant as well as his location or residence;

      2) the designation in respect of which the application is filed;

      3) the list of goods and (or) services in accordance with the International Classification of Goods and Services.

-Application shall be accompanied by:

 -proof of payment for services of an expert organization for the expertise. The amount of payment shall be set in accordance with the legislation of the Republic of Kazakhstan;

-power of attorney in case of record-keeping activities through the representative;

-statute of the collective trademark (in case of filing an application for the collective trademark) including the name of organization authorized to register the collective trademark in its name, purpose of the trademark registration, list of the parties that have right to use the trademark, list and sole characteristics or other characteristics of goods and services which will be marked with the collective trademark, terms of use, use control procedure, responsibility violation of statute provisions of the collective trademark.

- The application and the annexed documents shall be submitted in Kazakh or Russian language. If the documents are submitted in other language the applicant shall submit their translation into Kazakh or Russian language within one month period.

- The filing date of an application shall be the date when expert organization received an application that meets requirements of paragraph 2 of this Article; in case that the mentioned documents were not submitted simultaneously the date shall be the date when the last of the submitted documents was received.

- The procedure of compilation, preparation and pendency of application for the trademark shall be established by the authorized body.

- Priority of trademarks: (related to Paris Convention 1883 modified in 1979)

The priority of trademark shall be determined by the filing date of application to the expert organization.

When claiming for the convention priority the applicant shall indicate number, date and country of filing of the first application and attach its certified copy.

The priority of trademark placed on the showpieces displayed at the officially recognized international exhibitions may be determined by the date of the open display of the showpiece at the exhibition (exhibition priority) if filing of the application for trademark to the expert organization is made within six months of the mentioned date.

Application process:

-Preliminary examination within 1 month, from the date the application was submitted in order to verify the application content, the presence of necessary documents, and the conformity of the application with what should be registrable as a trademark.

The applicant will receive the answer about acceptance or not of application and filing’s date of application concerning priority rights, within 10 working days. The applicant has right to submit objections within three months from when he received the answer. A response to the objection shall be sent within three months after the objection was received.

-Full examination within 9 months from the filing application’s date. In order to verify if the trademark doesn’t contradict with the law on what cannot be register as a trademark.

At any stage of the examination the expert organization has right to request the additional materials that shall be submitted within three months of the date of sending the request to the applicant.

In case of failure to submit by the specified time the additional materials or the request to extend the specified time the procedure shall be terminated and the application shall be considered as revoked.

The approval or refusal of application shall be sent to government entity and within 10 days according to the result of full examination.

Government will send the result to the applicant within 15 days after expert’s decision. The applicant will have the possibility to appeal the decision, the Court of Appeal will have to issue a decision within 4 months.

From 6 months after the filing of application to 3 months after the decision, the applicant must pay the fees for the examination of the application. If it fail to do so, the registration shall be revoked.

When the trademark has been registered, it is protected for 10 years from the date of application.

This protection can be extended every time for another 10 years. The extension must be demanded in the last year of protection until 6 months after the expiry of protection.

The trademark that is identical or confusingly similar to the trademark which registration has expired may not be registered in the name of a person other than the previous owner for a period of one year from the date of termination of the trademark registration.

Refusal:

- For preliminary examination:

The applicant will receive the answer about acceptance or not of application and filing’s date of application concerning priority rights, within 10 working days. The applicant has right to submit objections within three months from when he received the answer. A response to the objection shall be sent within three months after the objection was received.

- For full examination:

In case of disagreement with the expertise opinion the applicant may file an objection against the expertise opinion to the authorized body within the period of three months of the date of sending thereof. The objection shall be handled by the Appeal Board within the period of four months of the date of its receipt.

Rights of exploitation and related delay :

- The exclusive right on the trademark in regard to all goods and services specified in the certificate or only part of them may be contractually assigned by the owner to another party. This exclusive right is valid for ten years renewable.

- The owner of trademark is allowed to grant license to another person.

- Demand to stop unlawfully exploitation of his trademark.

- Transfer the ownership of trademark.

Transfer and conditions:

The assignment (or transfer) of trademark is possible for all goods and service or just part of them.

In case of assignment, previous license agreement shall not be cancelled.

-The trademark assignment agreement shall be concluded in writing and registered in the authorized body, failure to do so entail the nullity of agreement.

This application should contain:

-The originals of agreement on the objects of the industrial property of the same kind, in four copies, with the front page. Each copy of the agreement shall be bound, under the paper seal which contains the record about the number of bounded and numbered pages, the stamp and the signature imprint of both parties or of the authorized persons of both parties shall be allocated.

-Power of attorney in case of filing an application through a patent attorney or other representative;

-Proof of payment of the state duty.

-Proof of payment for the services of the expert organization.

The payment shall be made upon filing an application or within one month of the date of application receipt.

For the assignment agreement the national applicants in addition to the above mentioned documents shall submit the decision of the administrative body of the owner of the protection document or the exclusive rights, the general meeting of founders or shareholders on entry into the agreement and authorization for execution of the agreement by the head of the enterprise.

-Preliminary examination:

The expert organization after submitting by the applicant the list of documents for registration carries out the preliminary examination of the submitted documents within fifteen working days of the date of application receipt in order to verify the presence of all necessary documents and the compliance with the established requirements

-Full examination:

Based on the submitted materials of trademark assignment agreement the substantive examination shall be carried out within twenty days.

Within two working days after handing down an opinion the expert organization sends this opinion with reasons of refusal to the authorized body.

When the result of examination is positive the expert organization sends to the authorized body the opinion on absence of grounds preventing registration of trademark assignment agreement or license agreement within five working days.

The decision on registration or refusal of registration of the trademark assignment agreement or the license agreement shall be made by the IP office within five working days of the date of receipt of the expert organization opinion.

-Administrative formalization

Administration will issued and stamp copies of the approval and send it to all interested part.

Certification:

The information concerning the registration of trademark filed in the State Register of Trademarks as well as the further changes concerning the registration shall be published by the expert organization in the bulletin within two months and on its web-site immediately following their entering in the State Register of Trademarks.

The owner has to ask to the State Register of Trademark to have an extract of the registration.

Extract from the State Register of Trademarks confirms the registration of trademark, its priority, exceptional right of owner of the trademark in regard to the goods (services) specified in the State Register of Trademarks.

Withdrawal and cancellation:

- Withdrawal:

The applicant has the right to revoke the application at any stage of examination;

- Cancellation:

Any interested party may file an objection to the authorized body for cancellation of registration of the trademark due to its non-use continuously during three years following the date of registration or three years preceding the date of filing an objection. Objection may concern all or part of the goods specified in the certificate and shall be handled by the Appeal Board within six months of the date of its receipt.

Customs:

In Kazakhstan the definition of counterfeit gather fakes, imitations and originals goods imported without the approval of the right holder.

As a consequence, goods' importation will be suspended and retain from 10 up to 20 days.

During this period the right holder will be able to protect his right by seizure or destruction of these goods. After this period of time, the goods shall be release for free circulation.

Sources :

WIPO.int

http://adilet.zan.kz/eng/docs/Z990000456_ (Kazakh's Ministry of Justice legal information center).

Vincent Lagier