Protection of Well-Known Trademarks in the Republic of Kazakhstan

In the context of a globalized market, trademarks play one of the key roles in ensuring brand recognition and reputation. A special category within the trademark system consists of well-known trademarks — designations that possess a high degree of recognition among consumers, even without formal registration. Their protection is of particular importance to prevent unfair competition and use of the reputation of famous brands.

The Concept of a Well-Known Trademark

According to Article 6bis of the Paris Convention for the Protection of Industrial Property, a well-known trademark is a sign that is widely known to the relevant sectors of the public, irrespective of its registration in a specific jurisdiction.

In the national legislation of Kazakhstan, the concept of a well-known trademark is provided in:

• The Civil Code of the Republic of Kazakhstan (Special Part);
• The Law of the Republic of Kazakhstan “On Trademarks, Service Marks, and Appellations of Origin of Goods” dated July 26, 1999.

A well-known trademark in Kazakhstan can be recognized as such by a decision of the Commission of the Intellectual Property Committee (the Committee) or by a judicial body in the course of reviewing a specific case.

Conditions for Recognizing a Trademark as Well-Known

To recognize a sign as well-known, it is necessary to confirm:

1. Mandatory condition – a high degree of recognition among consumers in a specific field of goods or services, based on consumer survey results;
2. Optional, but highly desirable:
   • The long period and extent of the sign’s use;
   • Its wide geographical scope of use;
   • Advertising activity and marketing investments;
   • Evidence of reputation, including mentions in the media, awards, certificates and etc.;
   • The absence of conflicts with previously registered rights of third parties.

Procedure for Recognizing a Trademark as Well-Known

1. Filing an application with the Committee, accompanied by a body of evidence (consumer survey results, other documents, marketing reports, financial statements, media reports, etc.);
2. Examination and publication of the applied-for trademark to allow for the filing of oppositions by the third parties;
3. Holding a meeting of the Commission for the Recognition of Well-Known Trademarks and making a decision on recognizing a trademark as well-known;
4. Entry into the State Register of Well-Known Trademarks of the Republic of Kazakhstan.

Specifics of Legal Protection

A well-known trademark enjoys expanded legal protection compared to ordinary registered trademarks:

• Protection is granted irrespective of its registration as a trademark;
• The protection is valid for 10 years and can be renewed for subsequent ten-year periods an unlimited number of times;
• The use of identical or confusingly similar designations is prohibited not only for identical or similar goods and services but also for dissimilar ones.

Enforcement Mechanisms

If the rights to a well-known trademark are infringed, the rights holder can apply for the following protection methods:

1. Pre-trial actions – sending cease-and-desist letters to infringers;
2. Court protection (lawsuits to prohibit use, recovery of damages, compensation);
3. Administrative measures (complaints to the Departments and the Ministry of Justice of the Republic of Kazakhstan, to antimonopoly authorities, etc.);
4. Customs control measures (inclusion in the Customs Register of Intellectual Property Objects);

Examples of Well-Known Trademarks

The National Register of Well-Known Trademarks of Kazakhstan includes 78 trademarks, among them are Coca-Cola, Marlboro, IKEA, Toffifee, Doshirak and others.

Challenges and Prospects

Key challenges:

• Insufficient legal awareness among businesses;
• The relatively high cost of gathering evidence to recognize a trademark as well-known.

Prospects for the development of the well-known trademark recognition procedure:

• Digitalization of the application and examination process;
• Deepening international cooperation on the mutual recognition of trademarks;
• Enhancing the level of enforcement practice and protection at the customs and judicial levels.

In conclusion, the protection of well-known trademarks in Kazakhstan is an important element of the intellectual property protection system. Such protection not only ensures the legal security of a brand but also strengthens business reputation, stimulates investment, and helps fight unfair competition. The improvement of legislation and enforcement practice in this area will contribute to the further development of the national economy and the integration of Kazakhstan into the global system of intellectual property protection.

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