A recent INTA roundtable shed light on the impact on brand owners of a temporary moratorium on administrative raid actions against small businesses in Kazakhstan and the limited remaining tools available to effectively help enforce intellectual property (IP) rights in this environment. The moratorium took effect January 1, 2020, and will last until January 1, 2023.
Hosted by Bolotov & Partners LLP (Kazakhstan) and held virtually on October 29, the event marked the first Association roundtable organized in this Central Asian country.
Speakers noted that previously, inspections of IP infringements were the main instrument used in Kazakhstan. Since the moratorium on administrative inspections of small businesses took effect, the level of trademark protection has decreased by about 90 percent in the country.
Brand owners now have to rely on criminal raids and civil proceedings to enforce their rights, although these tools do not result in the same level of effectiveness as administrative raids, they said.
Zhanat Nurmagambetov (Bolotov & Partners LLP) provided examples of criminal enforcement measures, including citing the biggest raid in Kazakhstan—and Central Asia—against wholesalers of counterfeit spare parts which resulted in the seizure of more than 100,000 parts. However, Mr. Nurmagambetov stressed that although this criminal case was a rather significant one, cases like this are rare in Kazakhstan. They require a lot of resources (monetary, human, and time), including from the brand owners, and the overall level of trademark rights enforcement remains low.
Nurgul Abdreyeva (Baker McKenzie, Kazakhstan) shared how attempts to enforce trademark rights through the Antimonopoly Agency of Kazakhstan failed due to the moratorium. In a case related to the unfair use of a trademark that is confusingly similar to a well-known brand, the agency refused to take action. This shows that even unfair competition laws (in the form of illegal trademark use) may not be effectively enforced due to the ongoing moratorium, she said.
The two dozen roundtable participants discussed other challenges, including that civil proceedings and customs protection do not result in an adequate level of enforcement.
The final speaker, Jenny Huang (NTD Patent & Trademark Agency Ltd, China) talked about obtaining customs protection in China, highlighted the challenges during this process, and touched on how to overcome them. The foremost advice to overcome the challenges encountered during this process is to provide as much information as possible about potential counterfeit goods.
This was an interesting topic for the roundtable participants given the significant amount of trade between China and Kazakhstan.