Registration of Trademarks in Kazakhstan – Now It Is Possible to Accelerate Examination Procedure
On 8 February 2024, the Order of the Minister of Justice amended the Rules for Examination of Applications for Trademarks, Service Marks, Geographical Indications and Appellations of Goods Origin .
The Order shall be effective from 23 February 2024, however shall apply to relations established from 15 January 2024.
It is now possible to request an accelerated examination of trademark applications.
If accelerated, the preliminary trademark examination shall take five business days from the date of filing the application (instead of one month in normal way), and full examination shall take three months instead of seven as established for the regular registration procedure.
A request for acceleration of examination procedure shall be filed together with filing of the trademark application. The Order does not provide for possibility of filing the above acceleration request after the filing of trademark application. Payment for acceleration shall also be done at the time of filing the trademark registration application and if payment is not made at the time of filing, the request shall be considered as not filed. At the same time, the order coming in force on 23 February applies to relations, which arose from 15 January, and reasons for establishing of such a retrospective effect are not yet clear.
It should be noted that according to the Trademark Law, it is not allowed to register designations which are identical or confusingly similar with designations applied for registration with an earlier, for example conventional priority.
The introduced amendments to the Rules do not take into account possible existence of convention priority under the Paris Convention for the Protection of Industrial Property, where priority is established by the date of filing of the first application in a country-member to the Paris Convention and the applicant claiming convention priority has the right to file an application in Kazakhstan within six months.
According to the Trademark Law, a decision to register a trademark prior to its inclusion in the State Register may be reviewed due to availability of an earlier application or application with an earlier priority; however the Rules do not provide for procedure of review of registered trademarks if an earlier priority is discovered after a trademark has been registered.
In other words we believe that if after registration of a trademark through an accelerated examination it is discovered that there is an earlier priority application, the owner of the earlier priority application shall challenge the registration of the later trademark, although, in fact, it is the responsibility of the examining authority to ensure compliance with international rules, including Article 4 of the Paris Convention on Conventional Priority. In our view additional clarifications of Kazpatent will soon be needed.
Attachment to the Order contains a form of request for accelerated examination, in which the applicant confirms that “the applicant is aware of the possible cancellation of a trademark registration, in the case of an application under convention, exhibition and (or) other priority” and it is not expected that the applicant will challenge the subsequent cancellation of a registered trademark, however it is not yet clear and again additional clarifications are required.
Also, there is no information related to registration fees through an accelerated procedure, presumably they will be high. We hope this will be known in the very near future and we will make them available to you on request. Please do not hesitate to contact us, we will keep you updated.
