Trademark and Patent Searches

In order to identify priority rights to a designation to be filed in Kazakhstan and estimate chances of its registration as a trademark, we recommend conducting a trademark search, which can either be an identical search or full availability search. The first one will only show whether an identical trademark has been registered or filed but not yet registered and the full availability search will allow consideration of identical and confusingly similar trademarks.

In case if similar marks with an earlier priority ate found, on the basis of search results, before filing an application it is possible to develop a strategy for successful registration of the trademark and decide whether it is also necessary to file the mark in Cyrillic or new Kazakh alphabet.

The trademark database of the Patent Office is now open but unfortunately is available only in Russian and Kazakh and is not easy for conducting such searches. The patent attorneys of Kazakhstan who work in this field for now already more than 25 years have their own friendly and easy-to-operate databases of registered and published trademarks and thus are able to conduct the searches for at least word marks in sometimes even couple of hours. However these databases do not contain trademark applications which are still considered by the Patent Office as confidential and registered but not yet published trademarks.

In order to cover all trademarks and applications it is necessary to apply for a so called “official trademark search” which is conducted by the Patent office. Normally it takes about a month but on payment of the corresponding official fee can be expedited and done in two weeks.

The Patent Office does not comment on the trademark search results and decision as to similarity of trademarks is either done by trademark attorneys or by the applicant.

Besides regular trademark searches it is possible to conduct a trademark search by company name which reveals all trademarks registered in the name of certain legal entity or industry searches for all trademarks applied for certain goods or services.

Due to the fact that all trademark database entries are now done in Cyrillic and through the years of existence of the Patent Office trademarks were filed by different trademark attorneys, the Cyrillic spelling of foreign companies is sometimes different and in course of company name (trade name) searches it is necessary to try several versions of spelling of the searched name.

Kazakhstan is the member of the Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989), so the searches in the Kazakhstan National trademark database are insufficient and it is necessary to search the above international databases too.

Also by the trademark searches, it is possible to obtain additional information on the market, the players in your industry and identify or learn plans of your potential or existing competitors.

When deciding on necessity of registration of a trademark in Kazakhstan and choosing the way of its registration, we recommend to carry out:

  • comprehensive trademark search for identity and similarity of the designation, which will help to reduce the risk of refusal of trademark registration to a minimum;
  • check for possibility of registration of the claimed designation as a trademark from the point of view of its good sounding and possible bad meaning in the local languages (at least Kazakh and Russian);
  • evaluate the benefits of filing an application in Latin, Kazakh and Russian alphabets; and
  • check the market for use of unregistered but similar marks and trade names and take measures to protect the rights to the trademark and suppress violations of the rights on the trademark.
We also provide services in respect of any kind of patent searches in the databases of the Committee for Intellectual Property Rights, Republican Scientific-Technical Library (RSTL), both independently and through engaged outside specialists.

Based on search results, we prepare reports and recommendations; issue opinions on protectability of inventions, industrial designs and utility models which often serve as the basis for preparing application papers and documents required as part of applications for registration. We prepare reports on patent clearance of objects.

Patent searches are made depending on the goals set:

  • to determine the patentability of industrial property (novelty, inventive step, originality);
  • to determine the purity of the object of the patent;
  • to determine the state of the art. We carry out the following types of searches:

  • theme (subject) search;
  • the name (corporate) search;
  • number search (by number of patent documents);
  • search of Kazakh patents equivalents (patents-analogues) and Eurasian patents- equivalents for patents in other countries.
In addition, our patent attorneys and specialists:

  • select patents that might be found related to objects under search (in Kazakh databases of titles of protection and in databases of other countries through our correspondents);
  • provide copies of patent materials indicated by a client;
  • prepare analysis of search results.
On request of our clients, state authorities and organizations we conduct trainings and seminars on various IP issues.