The information provided on this website is provided exclusively for informational purposes and may not be considered as official legal advice. It may not be used as a basis for obtaining any decision on any issue without prior consultation with Bolotov & Partners.
TRADEMARKS
1. What kind of designations can be registered as trademarks?
Pursuant to the legislation of the Republic of Kazakhstan, figurative, verbal, alphabetic, digital, three-dimensional and other designations or their combinations can be registered as a trademark. A trademark is a designation used to distinguish goods (services) of certain legal entities or individuals from similar goods or services of other legal entities or individuals. A trademark may be registered in any color or color combination. The Law of the Republic of Kazakhstan On Trademarks, Service Marks and Appellations of Origin provides for a list of grounds excluding trademark registration and grounds for refusing to register a trademark.
2. How to register a trademark in Kazakhstan?
- In order to register a trademark, it is necessary to file an application with the National Institute of Intellectual Property of the Republic of Kazakhstan (NIIP) and to submit a document evidencing payment of stipulated fee for filing an application.
- The application should contain a request for registration of a designation as a trademark, indicating an applicant and his location or place of residence, the claimed designation, a list of goods for which trademark registration is requested and which are classified by classes of the International Classification of Goods and Services for the Registration of Marks.
How long does it take to register a trademark?
Registration of a trademark is carried out within 9 to 10 months from the date of filing an application. The trademark registration procedure consists of preliminary examination, full examination and registration with the State Register of Trademarks.
What is the validity term of the exclusive right to a trademark?
Trademark registration is valid for 10 years from the filing date of an application. The trademark registration is renewed every 10 years upon trademark owner’s request filed within the last year of its validity.
5. Is it necessary to register a trademark if it has been used for many years?
It is necessary to register a trademark so that no one else in any situation uses this trademark, that means to obtain an exclusive right to own it. Registration is important primarily for those entities who produce goods or provide services under a particular trademark. Exclusive rights to a trademark emerge from the date of its registration with the State Register of Trademarks.
6. Is it possible to shorten the registration period of a trademark?
No, presently there is no such possibility.
7. How to register a trademark in another country, where to apply?
Legal protection of a trademark in other countries can be obtained: 1) by filing an application directly with the patent office of that country (usually via patent attorneys of that country), or 2) by filing an application under the Madrid system for the international registration of trademarks, if that other country is a member of the Madrid Agreement or Protocol. An application to the WIPO International Bureau is filed through the National Institute of Intellectual Property. The registration of international application takes from 12 to 18 months.
8. Can a foreign entity apply to register a trademark directly to the Patent Office in Kazakhstan?
No, if an applicant is a foreign entity (non-resident of Kazakhstan), then an application To register a trademark and all correspondence with the NIIP is conducted through a patent attorney of the Republic of Kazakhstan.
WELL-KNOWN TRADEMARKS
1. Why it is recommended to recognize a trademark as well-known?
In order to protect your trademark from any unfair use in relation to any goods and services; In Kazakhstan, when a trademark is recognized as well-known, such a trademark is protected in relation to any goods and services. That means pursuant to the law any illegal use of a trademark on goods, even those in respect to which it was not recognized as well-known, shall be considered as an infringement to a well-known trademark owner’s rights.
How many trademarks are recognized as well-known in Kazakhstan?
Presently in Kazakhstan, 40 trademarks are recognized as well-known, among them such trademarks as COCA-COLA, FANTA, MARLBORO, TOYOTA, TOFFIFEE, RAKHAT, ASTANA-MOTORS, DOSHIRAK and MAGNUM.
3. What is the procedure for recognizing a trademark as well-known? Who is authorized to recognize a trademark as well-known?
In order to recognize a trademark as well-known, an application should be filed with the Ministry of Justice of the Republic of Kazakhstan, documents and materials confirming trademark’s wide popularity in Kazakhstan should be attached to an application. A special commission of the Ministry of Justice of the Republic of Kazakhstan is authorized to recognize a trademark as well-known. Information related to a well-known trademark is entered with a relevant state register.
4. If a trademark is not registered in Kazakhstan, it is possible to recognize it as well-known?
Yes, it is possible, since both a trademark registered in Kazakhstan and a designation used as a trademark without registration, which had become widely known in Kazakhstan can be recognized as a well-known trademark.
5. How long does it take to recognize a trademark as well-known?
About 6 months.
6. What is the term of protection of a well-known trademark?
The validity of registration of a well-known trademark is 10 years from the date of filing. This term may be extended for another 10 years upon well-known trademark owner’s request, provided that information confirming the popularity of a trademark is submitted as well.
GENERAL PRACTICE
Does your company provide services in addition to services related to intellectual property services?
Yes. Despite the fact that we specialize in intellectual property services, we are often addressed to advise on general legal issues. These are issues are related to corporate, labor, contract and other types of law, for example, registration of a branch, representative office or company in the Republic of Kazakhstan, adaptation/development of various agreements and internal documents, preparation of legal opinions on various legal issues and etc.
ASSIGNMENT AGREEMENT
1. Is it necessary to register a trademark assignment agreement in Kazakhstan
Yes, registration is a compulsory condition for a creation of a right. Failure to comply with the requirements related to registration of an assignment agreement results in nullity of an agreement.
2. Where a trademark assignment agreement should be registered?
Registration of assignment agreements is carried out by the National Institute of Intellectual Property (NIIP).
3. How long does it take to register an assignment agreement?
Registration of an assignment agreement takes 10 business days from the date of application.
4. Is it possible to assign trademark rights in relation to a part of goods?
Yes, the exclusive right to a trademark in respect of all goods (services) or a part thereof may be assigned under an assignment agreement.
5. Is it possible to receive refusal to register an assignment agreement, and if so, for what are the grounds?
Yes, registration of an assignment agreement may be refused if an assignment of the exclusive right to a trademark may mislead a consumer in relation to a product or its manufacturer.
LICENSE AGREEMENTS
1. Is it necessary to register a trademark license in Kazakhstan
Yes, registration is a compulsory condition for a creation of a right. Failure to comply with the requirements related to registration of a license agreement results in nullity of an agreement.
2.Where a trademark use license agreement should be registered?
Registration of license agreements is carried out by the National Institute of Intellectual Property (NIIP).
3. How long does it take to register a license agreement?
Registration of a license agreement takes 10 business days from the date of application.
4. What are the compulsory provisions for a trademark use license agreement?
A trademark use license agreement should contain a provision that the quality of the goods of a licensee shall not be lower than the quality of the goods of a licensor and that a licensor is entitled to monitor execution of the above provision.
5. Is it necessary to register additional agreements and enter other amendments to the license agreement?
Yes, all amendments to a license agreement, Including termination of an agreement should be registered with NIIP.
INVENTIONS
1. How long does it take to obtain a patent for an invention?
The term for obtaining an invention patent in the Republic of Kazakhstan is approximately 18-19 months from the filing date.
2. Is it possible to speed up review of an application for an invention?
An accelerated examination of an invention is provided only for certain objects of the invention for which favorable patenting conditions are provided, in particular:
- inventions in the field of renewable energy sources (solar energy, wind energy, hydrodynamic energy of water, geothermal energy: heat of soil, groundwater, rivers, reservoirs, and anthropogenic sources of primary energy resources: biomass, biogas and other fuels from organic waste), aimed at reducing emissions of pollutions into the environment and used to produce electric and (or) thermal energy;
- inventions in the field of information and communication technologies.
3. What documents are required in order to apply for an invention patent?
1) application for a patent indicating the authors of an invention and the persons in whose name the patent is requested, and their place of residence or location; 2) description of an invention; 3) claims, 4) drawings and other materials, if they are necessary for understanding the essence of an invention; 5) abstract; 6) power of attorney, if an application is filed by a representative, for example, a patent attorney. The application should be accompanied by a document confirming payment for filing an application and conducting a formal examination.
4. Who is granted a patent for an invention?
- the author (s) of an invention;
- to the employer in cases where the invention is official and developed at work;
- assignee (assignees), including an entity (s) who received relevant right by virtue of an assignment;
- jointly to the persons indicated above, subject to consent among them.
5. Who can apply for an invention patent?
Residents of the Republic of Kazakhstan (individuals and legal entities) – independently or via their representatives, including patent attorneys. Non-residents (individuals and legal entities) – only via patent attorneys of the Republic of Kazakhstan.UTILITY MODELS
1. Terms of legal protection of utility model.
A technical solution that is new and industrially applicable is a utility model that is granted legal protection.
2. What objects are referred to utility models?
A utility model includes technical solutions in any field related to a product (device, substance, microorganism strain, plant or animal cell culture), method (the process of performing actions over a material object using material means), as well as the application of a known product or method according to a new purpose or a new product for a specific purpose, with the exception of diagnostic, therapeutic and surgical methods of treating people or animals.
3. Validity term of a utility model.
A utility model patent is valid for five years from the filing date. Validity term can be extended at the request of a patent holder, however, for not more than three years.
4. What are the terms for obtaining a patent for a utility model?
The term for obtaining a patent for a utility Model in the Republic of Kazakhstan is approximately 9-10 months from the date of filing of the application.
5. What documents are required to apply for a utility model?
- application for a utility model patent indicating the authors of utility model and the persons in whose name the patent is requested, and their place of residence or location;
- description of a utility model;
- формула полезной модели;
- claims,
- drawings;
- abstract;
- power of attorney, if an application is filed by a representative, for example, a patent attorney.
- a document confirming appropriate payment for filing an application.
6. Is it possible to obtain a patent for an invention or utility model for a computer program or algorithm?
Computer programs or algorithms are not protected as inventions or utility models.
INDUSTRIAL DESIGNS
1. Is it possible to speed up examination of an industrial design?
Examination of an application for a patent for an industrial design in an accelerated manner is not provided for by current applicable patent law.
2. How long does it take to obtain a patent for an industrial design?
It takes about 12–13 months to obtain an industrial design patent. The procedure for granting a patent for an industrial design includes conducting a formal examination, substantive examination (establishing the possibility of classifying the claimed proposal as objects protected as an industrial design, conducting an information search in relation to the claimed industrial design in order to determine level of design solution, checking the conformity of the claimed solution with the patentability conditions such as world novelty and originality, registration with State Registry of Industrial Designs, publication in the official bulletin and issuance of patent certificates for industrial designs.
3. Is it possible to obtain a patent for packaging of goods?
Yes, it is possible to obtain a patent for an industrial design for packaging if this packing meets patentability conditions such as: world novelty and originality.
4. What is the validity term of an industrial design patent?
According to the current legislation, an industrial design patent is valid for 15 years from the filing date. Validity term can be extended at the request of a patent holder, however for not more than 5 years. The patent is maintained annually by payment on the date corresponding to the filing date.
5. What documents are required to apply for an industrial design patent?
- application for an industrial design patent indicating the authors of industrial design and the persons in whose name the patent is requested, and their place of residence or location;
- a set of images than can be copied and reflecting external appearance of a product, that provide full and detailed understanding in relation to substantial features of an industrial design;
- description of an industrial design;
- power of attorney, if an application is filed by a representative
6. What sections included in a description of an industrial design?
- purpose and application field of an industrial design;
- analogues of an industrial design;
- the essence of an industrial design.
PROTECTION OF RIGHTS
1. Our goods bearing registered trademark are being counterfeited. What can be done?
Civil, administrative and criminal liability is provided for the use of a trademark without the consent of a trademark owner, including production of goods using the third party’s trademark, as well as for the import, storage and distribution of such goods. So, in order to protect a trademark rights it is possible to address justice authorities to draw up a protocol on an administrative offense, the economic investigation authorities to initiate a criminal case, and to the court to review a statement of claim related to the protection of trademark rights in civil procedure. The Article 158 of the Code of the Republic of Kazakhstan on Administrative Offenses provides for administrative liability for infringement to trademark rights. The Article 222 of the Criminal Code of the Republic of Kazakhstan provides criminal procedure for a similar infringement, if it caused major damage to a trademark owner (2000 monthly calculation ratio). The Articles 970 and 1032 of the Civil Code of the Republic of Kazakhstan provide civil liability for similar infringements. In addition, the illegal use of the third party’s trademark is an act of unfair competition, Article 163 of the Code of the Republic of Kazakhstan On Administrative Offenses provides administrative responsibility for such illegal use of a trademark. Antimonopoly committee is entitled to conduct administrative proceedings pursuant to the above article.
2. Is parallel import prohibited in Kazakhstan?
In accordance with Article 43-1 of the Law of the Republic of Kazakhstan On Trademarks, Service Marks and Appellations of Origin, the use of a trademark in relation to goods (bearing a trademark) that was lawfully introduced into circulation on the territory of the Eurasian Economic Union upon trademark owner’s consent is not an infringement to trademark rights. In other words, if a trademark owner or, for example, his distributor officially sold a product with a trademark in any country of the Eurasian Economic Union (Kazakhstan, Russia, Belarus, Kyrgyzstan and Armenia), then further re-sale (or other actions with this product, if this does not lead to substantial changes to the goods) of such goods in Kazakhstan is not an infringement. In addition, the above article also provides that if a product bearing a trademark was not officially introduced into circulation in the territory of the Eurasian Economic Union by a trademark owner, and, for example, was imported from a country outside the Eurasian Economic Union in parallel with the goods of an official distributor, then such import and distribution of such goods is an infringement to trademark rights. Accordingly, parallel import from the countries of the Eurasian Economic Union if the goods were officially sold there is not prohibited; parallel import from outside the countries of the Eurasian Economic Union or from the countries of the Eurasian Economic Union however if the goods were not officially sold there is prohibited.
TRANSLATIONS
1. Is it necessary to translate a list of goods and services into the Russian or Kazakh languages?
According to the legislation of the Republic of Kazakhstan, a list of goods and services can be provided in any foreign language, however then it is necessary to provide translation into Russian or Kazakh languages. Our translation department actively cooperates with foreign companies and translates lists of goods and services from any major world languages, including the Chinese language.
2. Is it necessary to provide translations of the description and claims of the invention, industrial design or utility model?
In Kazakhstan, it is mandatory to submit translations of the description and claims of an invention, industrial design and utility model into Russian or Kazakh languages at the same time when applying for a patent for an invention, industrial design or utility model.