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. Trademark search may be an identical search or full availability search. The first one shall only show whether an identical trademark has been registered or filed but not yet registered and full availability search shall allow reviewing identical and confusingly similar trademarks.
In case if similar trademarks with an earlier priority are 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 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. In practice it takes about a month and by paying established official fee such search 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 depending on company name (trade name) searches it is necessary to try several versions of spelling of the trade name in question.
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. It is appropriate to search in the above international databases.
It is possible to obtain additional information on the market, the market players in certain industry and identify or learn plans of your potential or existing competitors by conducting trademark searches.
When deciding on necessity of registration of a trademark in Kazakhstan and choosing the way of its registration, we recommend carrying out:
- comprehensive trademark search for identity and similarity of the designation, which shall 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 (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 a trademark and stop infringements to trademark rights.
Our company offers wide range of services for all types of database searches, both independently and with commissioning of relevant specialists in the field:
- Official search (carried out on the grounds of information published and presented in official sources of information - the State Register of the Republic of Kazakhstan on Trademarks and Trademarks protected in Kazakhstan under international registration system);
- Searches by word designation in Latin or Cyrillic (we conduct our own search on the grounds of information contained in various information sources available to our company, in which the updated data are presented in full both on applications for registration and on trademarks registrations);
- Search by trademark owner (it allows identifying all applications and registrations in the name of a particular company);
- Search by image elements;
- Search by firm names.