Under the Kazakhstan legislation, a trade name (“TN”) falls under the objects of intellectual property, specifically means of individualization of participants in commerce. In line with the Paris Convention for the Protection of Industrial Property of March 29, 1883, in Kazakhstan, a TN is protected without the obligation of registration, whether or not it forms part of a trademark.
There is no specific obligation of registration of a TN in Kazakhstan. Once a legal entity is registered with the Ministry of Justice of the Republic of Kazakhstan, the name of a legal entity becomes its TN and it must be indicated in its foundation documents. The TN permits to distinguish such legal entity from any other legal entity. A TN has a distinctive part and reference to the corporate form of a legal entity in the Kazakh and Russian languages, and if need be, in any other languages in full or, if its shareholders or participants wish, in abbreviated form.
A legal entity under a certain TN is entered in the state register of legal entities. In the case of a bank, its TN must incorporate the word “bank” or its derivative. In the case of a special financial company, its TN must incorporate the words “special financial company,” etc.
The TN of a state-owned company must contain a reference to the property owner, the form of state ownership (central government or municipal property) and its departmental affiliation.
The TN of a public enterprise operating on the basis of operational management must incorporate a reference that the enterprise is public.
A state-owned company has a seal depicting the State coat of arms of the Republic of Kazakhstan and company’s TN.
Enterprises that are not state agencies may not use any indication of official names of the state agencies of the Republic of Kazakhstan established by laws or acts of the President and Government of Kazakhstan. Also names of legal entities may not include names which contradict the requirements of legislation or public moral standards, or proper names, unless these are the names of participants/shareholder or the participants/shareholders have obtained consent from the relevant people (or their heirs) to use their names.
A legal entity enjoys an exclusive right to use its TN. Anyone illegally using someone else’s TN must cease using it at the request of the TN owner and compensate any damages suffered by the latter.
A legal entity has the exclusive right to use its TN on its letterhead, printed matter, advertisements, signboards, prospectuses, invoices, internet resources, on the goods and packaging, and as otherwise may be required for the purpose of individualizing the legal entity. A TN cannot be used if it is confusingly similar to the TN of an existing registered legal entity that its use could lead to the legal entities being misidentified and mislead the public as to the origin of their goods or services.
The right to the TN ceases to be valid upon the liquidation of a legal entity or change of its trade name.
The TN of a legal entity may not be sold or assigned except when the legal entity is reorganized or disposed of in its entirety. The TN owner may permit (grant a license) a third party to use its TN in a manner stated in the relevant agreement.
Under a franchise license, a licensor agrees to grant to a licensee for a consideration a set of exclusive rights, including the right to use the licensor’s TN in the licensee’s business. Unless otherwise provided by the franchise license, the licensee must inform its customers (clients) in a most evident manner that it uses TN on the basis of a franchise license.
Under paragraph 3 of Article 1020 of the Civil Code of the Republic of Kazakhstan cannot be used if it is confusingly similar to the TN of an existing registered legal entity that its use could lead to the legal entities being misidentified and mislead the public as to the origin of their goods or services.
Pursuant to Article 120.4 of the Civil Code of the Republic of Kazakhstan, if a trade name of a legal entity is identical or confusingly similar to a trademark (service mark) of another legal entity or individual engaged in business activity, and in the result of such similarity or identity may mislead consumers, the advantage shall be a way of individualization (trade name, trademark, service mark), the exclusive right to which was established earlier. The owner of such way of individualization in accordance with the legislation of the Republic of Kazakhstan has the right to demand the cancellation of legal protection of a trademark (service mark) on similar goods or services, or the ban on the use of a trade name.
We offer the following services in the area of the protection of trade names:
- Trade name search;
- Advice in relation to the protection of trade names;
- Legal opinions in respect of the rights to trade names;
- Representing clients in connection with the protection of trade names.
- Consulting and assistance in disputes related to trademarks and trade names.