Strengthening protection of trademarks in Kazakhstan

July 2019

A few days ago we received a draft Concept for the draft Law of the Republic of Kazakhstan “On Amendments into some Legislative Acts of the Republic of Kazakhstan related to Intellectual Property Legislation Development” (the “Concept”).

Strengthening protection of trademark rights is one of the important points that we would like to underline in the Concept.

Currently, there is a legal uncertainty in Kazakhstan whether the registration of a domain name that is identical or confusingly similar with a third party’s trademark is already considered as a use of this trademark. It is not determined whether such registration of a trademark to a third party is already an introduction of a trademark into business or rather considered as “withdrawal, removal” from business. Is this an infringement to rights or only a threat of infringement if a trademark with infringement to rights of its owner can only be placed on a future site?

Any entity or individual may register a domain name that imitates or copies a trademark, and if a site is not located on such a domain, then such registration in most cases does not allow right holders to undertake effective measures against the domain name owner. One of the novelties of the Concept is the recognition that a trademark is used if a domain name copying or imitating a trademark is registered. This novelty provides that trademark owners shall be able to undertake measures against “cybersquatting” or in other words registration of a domain name containing a trademark for the purpose of further resale. The Concept, certainly defines only the direction of enhancing legislation and details require deeper research and development.

Bolotov & Partners LLP is ready to assist its clients in the analysis, support and promotion of these amendments, including amendment related to reaching a position where the registration of a domain name occurred prior the registration of a trademark is recognized as an infringement. Such registrations are very often encountered in practice and etc.

Our lawyers are engaged in registration, maintenance, transfer and challenging rights to domain manes and have deep understanding and extensive experience in restoration clients’ rights to domain names and trademarks. We shall be happy to assist in above matters.

Please contact us via telephone or e-mail info@BolotovIP.com