International Trademarks Registration

Registration of a trademark in Kazakhstan does not grant its owner any rights in the territory of another state. When entering the international market, it should be remembered that if the trademark was not registered in the country to which the goods bearing this trademark are being exported, then a trademark can be used freely and without any limits by anyone who carries out activities in the said market. It is necessary to register a trademark in a due time in the country in question, namely in the relevant foreign countries, since currently borders of many countries are free to move goods in and out.

There are two ways to register a trademark abroad:

1) filing of an application under the Madrid System for the International Registration of Marks

Since 1993, Kazakhstan has been a party to a number of international treaties in the field of trademark protection, including the Madrid Agreement Concerning the International Registration of Marks dated April 14, 1891 (the Madrid Agreement).

Since 2010 Kazakhstan is a party to the Protocol Relating to the Madrid Agreement as well.

Thus, the Madrid system includes the possibility of filing of an international application under the Madrid Agreement or the Protocol thereto.

The main purpose of the Madrid Agreement and its Protocol is to simplify the system of obtaining of a legal protection for a trademark simultaneously in several countries by submitting one application to the International Bureau of WIPO. Moreover, such trademark is provided with the same protection in these countries as if it was declared in each country directly.

Currently 55 countries are the members of the Madrid Agreement and 100 countries are the members of Protocol.

It should be underlined that between 1993 and 2017, about 73,000 trademarks were registered in the name of foreign applications through the Madrid Agreement and its Protocol in Kazakhstan.

The share of Kazakhstani applicants who applied for international registration of trademarks is still insignificant, only 642 registered international trademarks. The first Kazakhstani applicants for the international registration of a trademark were such enterprises as the State Holding Company Ulba, Khimprom Joint Stock Company, Balkhashmed Production Association, Kazzinc Open Joint Stock Company, Kazakhoil National Oil and Gas Company and others.

The advantages of the international registration of a trademark within the framework of the Madrid Agreement and the Protocol are:

  • Requesting of protection of a trademark in several countries at the time of filing of only one application. In case of necessity increasing number of countries (in case of export expansion), in which the trademark should be protected, the trademark owner can make a statement on “territorial expansion” (without re-applying);
  • Registration fee for a trademark registration under the Madrid Agreement is less (depending on the countries and their number in which protection is sought) than if the application were filed directly in each of these countries.

For example, if an applicant wants to register a trademark in only one country - in Russia or in two - in Russia and Kyrgyzstan, it shall be more financially attractive for him to file applications directly with the patent offices of these countries, as the national fees in these countries (currently) for the Kazakhstani applicant are reasonable. In case if the applicant intends to register a trademark in three or more countries and far-abroad countries, the advantage of filing an application under the Madrid Agreement is grounded;

  • Relatively short period of consideration of the application for trademark registration (12-18 months) simultaneously in several countries.

It is worth noting that in some countries, according to national legislation, the trademark examination is carried out for more than 18 months (sometimes by years), so the deadline set by the Madrid Agreement and the Protocol is a justified advantage;

  • After expiration of a period of five years from the date of international registration, such registration of a trademark in each country becomes independent from the national trademark, previously registered in its country of origin.

Applying for international registration

An application for registration of an international trademark can be filed with WIPO only through the patent office of the country of origin of the mark.

The country of origin is the country, party of the Madrid Agreement, the Protocol where:

1) applicant has a real and effective industrial or commercial establishment ; or

2) applicant has his domicile; or

3) applicant has citizenship, i.e. is a citizen of a country, party of the Madrid Agreement.

The application for the international trademark registration under the Madrid Agreement is based on the national registration of a trademark that means that before applying for registration to WIPO, it is necessary to register this trademark in the national patent office. International application is filed on the grounds of national registration. According to the Protocol, an international application can be filed at the stage of the national application.

When deciding under which agreement it is better to submit an international application and preparing the materials of the international application it is preferable to apply to specialists in the field of trademark protection and patent attorneys.

Trademark registration is valid for a period of 20 years under the Madrid Agreement and 10 years under the Protocol with the option of extension of term for the next 20/10 years by paying the renewal fee.

2) filing of an application under the national procedure

It allows to file a national application directly to the patent office of a particular country.

It is possible to file an application for trademark registration in all countries (approx.80) or only in particular countries – members of Madrid Agreements and Protocol to the Agreement.

Trademark application in the country-member of Madrid System is filed based upon national registration or in case of availability of national trademark registration application in Kazakhstan.

National trademark registration owner may be granted legal protection in all or several countries by filing one application in one language with only one office.

International trademark registration with the WIPO is valid for 10 or 20 years with the option to extend the protection term for another 10 years.

We offer following services related to international registration of a trademark:

  • Evaluating benefits related to filing of application under international and national procedures;
  • Drafting, filing and maintenance of trademark applications until granting title documents;
  • Providing assistance in filing trademark application in other countries in accordance with national and international procedures;
  • Drafting, filing and maintenance of applications to recognize trademarks as well-known;
  • Making amendments in applications, titles of protection and prolongation of term of validity of trademark registrations;
  • Legal support in relation to the assignment of rights to trademarks;
  • Drafting and registration of license, assignment and pledge agreements;
  • Early termination of trademark registration;
  • Enforcement and prevention of violation of trademark rights;
  • Issue of legal opinions in relation to trademark rights;
  • Representing clients in the state authorities, in courts and other organizations in relation to trademark rights protection;
  • Conducting comparative analysis related to similarity of designations;
  • Checking the market and undertaking measures to protect trademark rights violation and prevention of trademark rights violation; and
  • Other services.

Saule Kulzhambekova

Trademarks and Copyrights

Requests relating to section Trademarks - International Trademarks Registration can be forwarded to e-mail address: marked for Saule Kulzhambekova.

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