January 2016

During last several years, our Almaty office has grown vast practice its intellectual property practice which includes five lawyers who work with all IP matters, including inventions, industrial designs, copyrights and related rights, trademarks and "well-known" trademarks.

"Our Almaty office is the only international law firm in Kazakhstan that has such broad experience with enforcement of IP rights, and that has assisted in recognition of marks as "well- known", said Partner Yuri Bolotov (International, Almaty).

Trademarks often become widely known among consumers and are often associated with certain quality characteristics of goods. Well-known trademarks in Kazakhstan include those such as Coca-Cola, Fanta and Sprite, belonging to the Coca-Cola Company; and several other brands of non-US companies. A number of trademarks are now awaiting the IP Right Committee Board hearing to be recognized as well-known.

A trademark's recognition as well-known in Kazakhstan grants the following advantages:
  1. A well-known mark has the same level of protection as a regular registered trademark, except for the full range of goods and services, regardless of its initial registration or use.
  2. It is unnecessary to register a trademark before it is recognized as well-known.
  3. You can prevent or terminate registration of a trademark that is identical or confusingly similar to a well-known mark with respect to any goods or services within five years of its registration.
  4. The owner of a well-known mark has the right to take action against infringers, including Internet infringers, with regard to goods and services.
  5. In case of accounting trademarks in the balance sheet or its contribution into the charter capital, a well-known mark has significantly more value, which also allows its higher depreciation rate.
As a rule the procedure of mark's recognition as well-known takes from nine months to a year. In order to recognize a mark as well-known in Kazakhstan it is necessary to file an application with the Intellectual Property Rights Committee.

Actual information confirming the fact that the trademark is well-known must contain consumer poll results, which should be conducted in six Kazakhstan cities and contain responses of not fewer than 3,000 people. Additional information confirming the mark's intense use, volumes of sales of goods bearing the mark and other details may also serve as a confirmation of the fact that the mark is well-known.

Well-known and famous U.S. trademarks are not automatically recognized as such in Kazakhstan and other CIS Republics (an alliance of states that had been Soviet Socialist Republics in the Soviet Union prior to its dissolution in December 1991), and formal recognition as described above is required.

Yuri Bolotov «McGuireWoods Matters», September 2008