By TBY | Kazakhstan | Apr 17, 2017
Each and every business, whether a start-up or an established corporation, has or will have its own trademark or service mark, which distinguishes or will distinguish its product or service […]
Each and every business, whether a start-up or an established corporation, has or will have its own trademark or service mark, which distinguishes or will distinguish its product or service from similar products or services of other businesses in the market.
Kazakhstan applies the “first-to-file“ principle and does not recognize the prior use of trademarks/service mark. Therefore, the priority for each business wishing to operate securely in Kazakhstan is to make sure that its trademark or service mark is properly registered in the country, either locally through the Kazakh Expert Organisation, or internationally through the World Intellectual Property Organisation, designating Kazakhstan as one of the countries where the trademark or service mark is to have protection.
The regular local procedure for the registration of a trademark or service mark takes from nine to 12 months and may cover all 45 classes of goods and services of the NICE Classification, 10th edition.
Since it is understood that the procedure is lengthy and somewhat complicated, the ongoing consideration in the Kazakh Parliament of changes and amendments to the IP-related legal acts are aimed at simplifying and clarifying the registration procedure by making it a one-stage process—only the Expert Organization will approve its decisions on registration of trademarks and service marks—and by locating information on all filed applications in an online database.
Even though the number of filed trademark and service mark applications was 10,164 in 2015, and 10,499 in 2016, it is assumed that the changes to the legislation will improve the situation and allow start-ups and other market participants to make trademark/service mark registrations a priority.
Only after the registration and publication of information on registration of a trademark/service mark will the owner have a right to prohibit or prevent others from the use of or filing of an application for registration of its trademark/service mark or other marks that are similar or confusingly similar to those registered.
Entering the WTO requires Kazakhstan to strengthen not only its intellectual property legislation, but also its enforcement in practice. The entire state administrative system of Kazakhstan is now improving and much work is being done to enhance the protection of the rights of legitimate brand owners by conducting regular checks upon the requests from a brand owner, and by organizing educational seminars and roundtables for business people, together with providing consultations and publishing articles in newspapers.
One of the most effective legal mechanisms currently available in Kazakhstan for brand owners to protect their intellectual property rights and to fight against counterfeiters is the registration of their trademarks/service marks with the Customs Register of the Republic of Kazakhstan. Once a brand owner obtains the registration of its trademark/service mark in Kazakhstan, either locally or internationally, and provided it already has an active business in the country, it may file the trademarks/service marks for registration with the Customs Register.
According to the publicly available Customs Register, as of February 9, 2017, almost 800 registrations had been recorded with the register, and the customs authorities use the data available on a daily basis to try to check and stop any suspicious goods at the border.
The procedure for registering a trademark/service mark is explained in Chapter 53 of the Code of the Republic of Kazakhstan “On Customs Affairs“ No 296-IV of June 30, 2010 (“the Code“). Pursuant to the Code, during customs clearance of imported goods the Customs authorities first of all check if the goods are included in the Customs Register. If the trademark/service mark is registered with the Customs Register the customs authorities have a right to hold the goods at the border for 10 days and are required to send a notice to the holder of the trademark/service mark or its representative in that respect. If the goods have been imported by an unauthorized company, there could be a dispute between the holder and the trademark/service mark infringer. In that situation the customs authorities must suspend the customs clearance before the entry into force of the relevant court decision. As a result, goods with a trademark/service mark will be held during customs clearance and the costs for their temporary storage and damages incurred by the importer will be payable depending on the court’s decision.
The procedure for entering a trademark/service mark into the Customs Register is clear, with no official fees, and it takes approximately a month. Entry of a trademark/service mark into the Customs Register requires an insurance agreement, which ensures the responsibility of the brand owner for the expenses of the customs authorities and for any damages to third parties when suspected counterfeited goods are stopped at the border. The trademark/service mark can be entered into the Register for a period of one or two years, with the possibility of renewal.
Registering in the Customs Register allows Kazakhstani consumers to purchase original products without the risk of suffering injury and the damage that would arise through the purchase of poor-quality counterfeit versions of pharmaceuticals, cosmetics, food, and other products. It also allows for brand owners to earn more money, and for the state to receive more taxes.
Michael Wilson & Partners, Ltd. (MWP) is a full-service law practice and business consultancy with offices in both Baku and Almaty covering Azerbaijan, Kazakhstan, the Central Asian region, and the Caucasus. MWP’s Intellectual Property Department has been active since 1998 and provides clients with a full range of IP services.