Recognition of a trademark as a well-known is one of the effective tools to protect a trademark in Kazakhstan.
The trademark may be recognized as well-known trademark in Kazakhstan, if it has become widely known among consumers of a relevant product in the result of its long-term widespread use.
The benefits of recognizing a trademark as a well-known in Kazakhstan:
- Strengthens protection;
1. Option to protect against all and any goods and services, regardless in relation to what goods and/or services it was recognized as a well-known;
2. Option to prevent or to cancel registration of a similar trademark in relation to any goods and services within five (5) years from the date of registration of a similar or identical trademark;
3. Option to cancel registration of identical or confusingly similar trademark after the expiry of five (5) year period from the date of registration, provided that such a trademark may be misleading in relation to the goods or its producer;
4. The right to take action against infringers, including infringers in the Internet in relation to any goods and services.
- Increases the value;
When a trademark is placed on the balance sheet, it is taken into account during valuation of company’s intangible assets and depreciation charges.
- No need in pre-registration.
It is not required to preliminarily register trademark for its further as a well-known trademark.
In Kazakhstan, in order to recognize a trademark as a well-known, it is necessary to file an application with the authorized body (Ministry of Justice of the Republic of Kazakhstan). The application should comprise results of a consumer survey, which should cover at least eight (8) cities of Kazakhstan (a capital, cities with republican significance and five (5) cities of regional significance).
When determining the well-known trademark in Kazakhstan, following factors are taken into account: degree of popularity or recognition of a trademark in the relevant sector, duration, intensity and region of use of a trademark, as well as a number of other factors.
The application for the recognition of a trademark as a well-known is considered by the Commission for the Recognition of a Trademark as a Well-known, which, after consideration issues a decision on recognition or on refusal to recognize. The proper decision is entered into the State Register of Well-Known Trademarks and is valid for ten (10) years from the date of recognition of a trademark as a well-known.
The procedure for prolongation of validity term of a well-known trademark is not stipulated and the prolongation procedure is the same as the procedure for recognition a trademark as well-known. The trademark owner submits prove of popularity of trademark and only one difference there in no need to wait for the decision of the Commission.
Trademarks recognized as well-known in other countries are subject to recognition in Kazakhstan and other CIS republics; it is required to undergo the complete procedure for recognizing a trademark as well-known by filing an application with all evidences that a trademark is popular among consumers of Kazakhstan.
Currently 34 trademarks are recognized as well-known in Kazakhstan, among them Coca-Cola, Fanta, Sprite, Toyota and many others.
We offer the following services for the recognition of a trademark as a well-known:
- Comprehensive preliminary search for identity and similarity among registered trademarks with issuance a search report. Such search may reduce the risk of failure to a minimum;
- Drafting, filing and maintenance of the application until obtaining a decision on recognizing a trademark as a well-known.
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