On client-oriented trends, IP surveys and changes we are facing

October 2016

What do you see as the main points that differentiate Bolotov & Partners from your competitors?

We are a law firm that is solely focused on providing comprehensive legal intellectual property services and we do not offer any other legal advice or assistance.

Contrary to our competitors who are either trade mark firms and patent agents or general law firms with IP departments, we can provide both services, agents or attorneys, not only in Kazakhstan but also in other Central Asian Republics of the CIS, either directly or through a well-established network of our correspondents.

The scope of services includes trade mark and patent searches, filings and prosecutions, appeals and oppositions, assignments and licenses, franchising, enforcement actions, etc.

Our clients are both large local firms and banks and international corporations from many countries around the world. Our firm has 24 years' experience and was the first to start using customs/border measures against the parallel import and import of fakes. We assisted in the recognition of 28 out of 32 well-known marks in Kazakhstan and have always been proactive and used all available instruments to protect trade marks, patents and other intellectual property assets of our clients.

We are the only firm in Kazakhstan with experience of resolving such a substantial amount of administrative, criminal and civil cases related to various IP objects (for example, in 2015 we arranged and conducted 139 raids with state enforcement agencies and were involved in about 100 administrative, 6 criminal and 2 civil cases). Our vast experience, combined with an excellent team of IP experts, gives us advantage over the competition in our ability to solve clients' issues related to multiple infringements.

We are an IP boutique that provides all sorts of IP related services, including registration, prosecution and enforcement of all types of IP: copyright and related rights, trade marks and service marks, appellations of origin, inventions, industrial designs, utility models, selective breeding rights, domain names, and others.One of the fundamental principles of our firm, which was founded in 1994 shortly after the disintegration of the Soviet Union, is 'Timeliness and Perfection'.

Our philosophy hasn't changed since then and we systematically educate and train our personnel to support this principle. We have six registered trade mark and patent attorneys and our staff are fluent in English, Kazakh and Russian.

We are trained in FCPA and strictly abide to all correspondent rules and policies. Bolotov & Partners' lawyers are trusted, accessible, deadline driven and are able to provide solid and practical advice regardless of the client's size. Finally, we closely cooperate with state authorities and regularly contribute to the improvement of Kazakhstan IP legislation.

In addition, we participate in and arrange various conferences, seminars and trainings on IP topics. Raising public awareness about IP is one of our priorities.

Which practices do you see growing in the next 12 months? What are the drivers behind that?

Our expectations for the next 12 months are based on and are in line with the developments of IP protection in Kazakhstan and we expect that our work will be in line with the following tendencies. The independent IP protection system in Kazakhstan was created in 1992 and now is only about 24 years old. Just imagine that only some 20 years ago no trade mark was registered or reasonably protected in the country!

Thus, the most important task of the IP system at the time of creation was providing favorable conditions for trade marks and patents registration with the PTO, which has been successfully achieved. Certainly, at that time there were also important disputes on the registrations and rejections and it was necessary to conduct trade mark searches, and other related matters.

Today, Kazakhstan has solid registered trade mark and patent portfolios, and use of these objects and disputes is one of the priority fields of our practice. Nowadays, the trade mark and patent searches, searches for infringements and infringers and trade mark and patent litigations have a prevailing share in our practice.

These searches are conducted mainly in such industries as pharmaceuticals, food, automotive business, including spare parts, tobacco, different types of education services, and some others.

New technology development leads to the increase in Internet piracy levels and other sophisticated infringements.After 20 years of existence of IP laws in Kazakhstan, it is time for IP audits and review of trade mark and patent portfolios of companies and corporations, verification of filings and records made for the same company sometimes by the different trade mark and patent attorneys.

Furthermore, registration of patent rights in the register of pharmaceuticals and the inclusion of trade marks and copyrights in the customs registers of Kazakhstan and other CIS countries is now required.We expect that despite current challenging economic conditions around the world, investment in joint ventures in Kazakhstan in the next 12 months will increase, which will lead to an increase in the commercial use of IP assets, their licensing and franchising. We are well prepared to assist our clients in these new ventures.

What's the main change you've made in the firm that will benefit clients?

As described above, IP infringements and our anti-counterfeiting actions became more important and therefore in high demand. It became clear that a more efficient approach to discovering infringements and collecting proper information on infringers was required. Therefore we established a daughter firm, BMF Research with its project kontrafakt.kz, with the general ability to support our legal actions, ranging from market monitoring to the destruction of counterfeits.They provide unique professional IP surveys both online and on the-ground in Kazakhstan. This helps us to find potential and existing IP infringements, information about infringers, make test purchases, checks and verifications, destruct of counterfeits, and sometimes inform our clients before the problem becomes indeed serious or even global.Additionally, we expanded our team by hiring a general law attorney who supports our IP professionals in such IP related matters as IPRs protection in employment contracts, sale and purchase agreements, and such other matters.

Is technology changing the way you interact with your clients, and the services you can provide them?

Yes, definitely. Due to the development of new technologies we have better access to online databases of registered trade marks and patents which allows us to conduct extremely urgent trade mark and patent searches and file trade mark and patent applications online.We have developed and maintained our own trade mark electronic database. We have used remote access to our files and servers, which allows us to be more flexible, responsive and cost-efficient and have the immediate support of other members of our team for a significant amount time.

It is even more important for our foreign clients who are located in different countries around the world and different time zones.An increase in internet piracy levels requires us to use more powerful computers and more complicated software to monitor, search and analyze gathered information on infringements and infringers.

Such need for new technologies is also growing with the growth of the capabilities of state authorities which make their databases publicly available, for example, customs, trade mark and patent registers have been made public and we expect that the Trademark Applications Register will also become public in the near future.

Can you give us a practical example of how you have helped a client to add value to their business?

We conducted IP due diligences for several clients which enabled them to determine the status of registered IP items, find unregistered IP, define and ensure due protection to unpatentable IP items. Furthermore IP due diligence allowed us to detect infringements of the company’s rights to IP by third parties, prevent infringing of third parties rights by our clients.

We now manage some trade mark and patent portfolios of the inspected companies, which allows for better use of IP rights and reduce the costs of their protection.Apart from numerous trade mark and patent searches and registrations and the routine enforcement work, we act against the importation of fakes and parallel import (125 customs detentions in 2015).

Over the last few years, these measures were probably the most cost-efficient and allowed some of our clients to have more than doubled the income of their local subsidiaries.We have not only reviewed and drafted a number of franchise agreements but also assisted in and elaborated strategies of their introduction into market.

This allowed our clients to effectively expand their business and gain maximum benefit from such expansions.We believe that besides the benefits to our clients, our efforts bring good to the public as we reduce the amount of fakes in the market, assist in bringing new goods and services, and generally make our lives better and more interesting.

Are clients looking for stability and strategic direction from their law firms - where do you see the firm in three years’ time?

We are a local firm and know the local laws, practices and market. When we are approached by potential or existing clients we understand the need to firstly advise and guide the clients when necessary, and only then precisely follow their instructions.We try to be both legal and strategic advisers when appropriate. Working over the best protection and enforcement strategies is a way of winning, and the goal of Bolotov & Partners is to increase the strategic planning to the level where every step leads to business improvement, technology progress and budget savings.

We firmly believe that every client wants to be sure that they will get practical business solutions from their lawyers who must be viable, innovative when required, and always cost-effective. We try to keep close relationships with our clients and continue providing our services on the proper level.

Only this approach allows us to have many years cooperation and bring new clients to the firm. We always look for talented people, allow summer work and temporary employment for trainees and carefully select our new team members. We hope that our team will constantly grow however it will depend on the needs of our clients.

Therefore I believe that in three years’ time, we will be where we are now yet we will be stronger, more efficient and have the same or bigger clientele.We love what we do and sincerely believe that, as Henry Ford said, 'A business that makes nothing but money is a poor business'.

It is not about us – we have built one of the best firms in our region and we will continue to keep the standard and grow for the comprehensive development and protection of IP.