Use of trademarks and some aspects of restrictions of rights to the trademarks

November 2017

The definition of a trademark is given in the Article 1.8 of the Law of the Republic of Kazakhstan On Trademarks, Service Marks and Appellations of Origin of Goods (further - the Law): “a trademark, a service mark (further - a trademark) is a designation, registered in accordance with this Law or protected without registration by virtue of international treaties in which the Republic of Kazakhstan participates, serving to distinguish goods (services) of some legal entities or individuals from similar goods (services) of other legal entities or individuals”.

Article 1025 of the Civil Code of the Republic of Kazakhstan (a right to use a trademark) provides that “an owner of the right to a trademark has an exclusive right to use and dispose of a trademark belonging to him”.

Registration entitles its owner to prohibit third parties from using this designation, which is now a “trademark” or other designations confusingly similar with a trademark. At the same time, the legislation requires that a trademark owner should use a trademark due to the possibility of cancellation of registration at the request of an interested third party, if a trademark is not in use for more than three years, either from the date of registration or before the date of filing the application.

Trademark is both a designation and a complex of property rights associated with it, giving its owner a monopoly to use and the right to prohibit its use by others. However this monopoly is not unconditional - it is limited to a certain list of goods and services, territory, time of its existence, restrictions on use for certain types of goods and etc.

The concept of use of a trademark is given in the legislation of Kazakhstan with two different purposes and in two different contexts - (i) use by any person, including to determine the violation of trademark rights, and (ii) only by a trademark owner to prove use of trademark.

In this article, we will take a closer look at some aspects of the restriction of trademark rights in Kazakhstan. Read the article