Our lawyers successfully represented several large companies in the Department of Intellectual Property Rights of the Ministry of Justice of the Republic of Kazakhstan on the issue of recognition of some trademarks as well-known.
As a result of coordinated work of our lawyers 13 trademarks of large companies were recognized as well-known. These companies belong to such sectors as car manufacturing, confectionery and general consumer goods sector in Kazakhstan and Central Asia.
The advantages of recognition of marks as well-known in Kazakhstan are as follows:
1. a well-known mark or trademark has the same level of protection as a regular registered trademark, but irrespective of goods and services of its initial registration or use;
2. before recognition of a mark as well-known, it is not necessary to register it as a trademark;
3. it is possible to prevent or terminate registration of a trademark that is identical or confusingly similar to a well-known trademark in respect to any goods or services;
4. the owner of a well-known mark has the right to take actions against infringers of his rights to the well-known trademark with regard to any goods and services, including the ones in the Internet;
5. a trademark recognized as well-known has bigger value for its accounting purposes and, if necessary, as an input into the charter capital;
6. in case of non-use of trademark registered for a number of classes, it can be partially deregistered for some goods and services. It is impossible in case of the well-known mark, which remains protected regardless of use of the marks in all classes of goods and services.
It is possible that there are several registrations of one designation (or confusingly similar designations) in different classes and in the names of different trademark holders. In such a case, once a trademark is recognized as well-known, its owner can apply to the IP Rights Committee and request that the other trademarks are limited in use and the IP Rights Committee shall establish the maximal term of their use which cannot exceed seven years.