Development of market relations in Kazakhstan increased various and sophisticated cases of infringement to trademark rights.
The largest number of counterfeit goods with violation of trademark rights can be seen on the Kazakhstan market among consumer goods such as: alcoholic and non-alcoholic beverages, medicines, clothing, footwear, household items, detergents, cosmetics and other products.
Pre-court dispute resolution procedures
In some cases, a dispute related to the infringement to trademark rights can be settled peacefully (without court proceedings) by forwarding warning and stop and cease letters and further negotiations with infringers.
Preparation of warning letters requires special knowledge and experience in the field of intellectual property rights protection. It is more efficient and time and money saving to commission professionals in this field. Practice shows that warning letters prepared by lawyers who do not specialize in the field of intellectual property protection often contain an inappropriate statements and interpretation of the provisions of the relevant legal acts. Such inappropriate statements can have a negative effect on the court proceedings, if pre-court dispute resolution procedure becomes impossible.
Administrative and legal protection
Pursuant to the provisions of the Administrative Code, the unlawful use of the third parties’ trademark or similar designations for similar goods or services, if these actions did not cause major damage, entail penalties in the form of a fine with confiscation of goods containing illegal image of a trademark.
As a rule, the fact of infringement to trademark rights is determined on the basis of information provided by trademark owner, the results of the inspection, examination of the identity and similarity of a trademark, and other information obtained in a legal manner.
In cases where a trademark imitation takes place and there is a possibility of misleading consumers, trademark rights can be protected by filing a statement related to violation of antimonopoly legislation with the antimonopoly body in connection with infringer’s actions directed at unfair competition.
In the framework of civil law the main requirements related to trademark rights infringement are the following:
- termination of infringement to trademark rights;
- reimbursement of losses incurred by trademark owner;
- destruction of the goods, packaging of the goods bearing unlawfully used trademark, appellation of origin or confusingly similar designation, except for original goods with a trademark applied by a trademark owner. In cases where the introduction of such goods into circulation is necessary in the public interest, destruction of unlawfully used image of a trademark, appellation of origin or confusingly similar designation;
- elimination of a trademark or a confusingly similar designation from the materials that are used for performance of operations, including documentation, advertising and billboards. In addition, Article 970.1 of the Civil Code of the Republic of Kazakhstan provides that protection of rights may also be carried out by:
- removal of material objects where exclusive rights are infringed, and the material objects, created as a result of such infringement;
- the mandatory publication of committed infringement, including information about the owner of the infringed right;
- other means provided by legislative acts.
Criminal legal protection
Criminal remedies include recourse to government revenue agencies. According to Article 222 of the Criminal Code of the Republic of Kazakhstan, the illicit use of another’s trademark or similar designations for homogenous goods or services, if this act caused major damage, such act is punishable by fines, correctional labor, community service up to 90 hours, and seizure for up to 45 days.
The following grounds are necessary to initiate a criminal case: illicit use of a trademark or a similar designation and the major damage caused to trademark owner in the result of its illicit use.
Currently, in Kazakhstan major damage is approximately USD 6,600.
Our company provides the following types of services to challenge trademark infringements:
- inclusion of trademarks and items of copyright and related rights in the Customs Registry of Intellectual Property Items;
- preparation of claim letters to infringers;
- management of cases related to the suspension of the release of goods, with the extension of the deadlines for inclusion in the customs register, with the protection of rights through the courts, law enforcement and administrative bodies;
- representation of interests in judicial bodies;
- conducting seminars and trainings.
Enforcement and Customs
Requests relating to section Trademarks – Protection from infringement to trademark rights can be forwarded to e-mail address: info@bolotovIP.com for Zhanat Nurmagambetov.