Registration of trademarks in Republic of Kazakhstan, grounds for refusal of registration and international registration of trademarks.

Registration of trademarks in Republic of Kazakhstan, grounds for refusal of registration and international registration of trademarks.

             The main legal act regulating the activities of businesses and non-profit entities in terms of intellectual property rights, namely the trademark is the Law of the Republic of Kazakhstan dated July 26, 1999 № 456-i «On Trademarks, Service Marks and Appellations of Origin». In addition, Civil Code of the Republic of Kazakhstan, Code on Administrative Offences, in terms of article 158 "Illegal use of a trademark", as well as the Criminal Code, article 222 "Illegal use of a trademark" provide sanctions for violations of the trademark usage. All the above regulations govern the activities related to trademarks, service marks and appellations of origin, which shows the significance and the importance of trademarks as the intellectual property of an entrepreneur.

            Registration of a trademark is a necessary step for effective legal protection of designations individualizing market goods, works or services in Kazakhstan. It is crucial to think about registration of the designation in the state body at the stage of creation of the company's business plan. Even though, registration process is not significantly difficult, but it requires painstaking efforts on the part of the applicant in order to prevent the refusal of registration of a trademark.

Procedure of a trademark registration

          Procedure of registration of a trademark can range from 12 months to 2 years. While, the term of a trademark validity is ten years, with a possibility of extension for the same period. To register a trademark it is necessary to pass a certain procedure in accordance with the civil legislation.

          First of all, it is necessary to apply to the specialized state body. The content of the application shall include:

• a request for examination notation indicating the applicant's data, as well as his place of residence;

• the designation;

• a list of goods and/or services.

         In addition, the above documents must be accompanied with a document confirming the payment of services of the expert organization, the power of attorney in the case of office work through a representative, and the charter of the collective trademark (in the case of an application for a collective trade mark). The application and accompanying documents may be in Kazakh or in Russian.

         Admission applications, examination, the introduction of public registers and the publication of information on trademarks are carried by the National Institute of Intellectual Property on Intellectual Property Rights Committee of the Ministry of Justice of Republic of Kazakhstan (NIIP). Then, there are the following three steps: preliminary examination, full examination and registration of the trademark itself.

          However, despite the seeming simplicity of the procedure, applicants are often faced with the denial of registration of a trademark. Therefore, for the success of the project of trademark registration it is very important to know grounds on which registration may be denied. The legislator distinguishes two groups of grounds for refusal in full examination stage - absolute grounds and relative grounds:

I. Absolute grounds - triggered when the sign has no distinctive character. For example, when

Ø  it consists of advertising words;

Ø  it is common symbols and terms;

Ø  it comes into common use to designate goods;

Ø  it indicates the kind, quality, quantity, properties, purpose, value of products, as well as the place and time of their manufacture or sale;

Ø  it is the international nonproprietary names of drugs;

Ø  it has a direct narrative connection with the goods or services to indicate that they are being used;

Ø  it reproduces state emblems, flags and abbreviated or full names of international organizations and their coats of arms, flags and symbols, stamps, Olympic symbols, awards and distinctions and designations similar to them to the point of confusion;

Ø  it uses the translation or the designation is accompanied by expressions such as "kind", "type" or something like that;

Ø  it is false or capable to mislead as to the product or its manufacturer;

Ø  it contradicts to the public interest, principles of humanity and morality.

II. Relative grounds - triggered when registration impede the rights of third parties.

Ø  Also, could not be registered as trademarks designations similar to the point of confusion with the trademarks, registered in the Republic of Kazakhstan and protected by virtue of international agreements.

Ø  could not be registered as trademarks designations that reproduce:

a.       industrial designs;

b.      the names of famous works of literature, science and art;

c.       surnames, names, pseudonyms and portraits, in violation of the moral, personal non-property rights of these persons, their heirs or successors;

d.      wealth of history and culture of the Republic of Kazakhstan.

        In a more detailed view, the absolute and relative grounds are listed in Article 6 and 7 of the Law of the Republic of Kazakhstan dated July 26, 1999 № 456-i «On Trademarks, Service Marks and Appellations of Origin».

        If a trademark registration was rejected, the decision can be appealed to the Appeals Board under the Intellectual Property Rights Committee.

        The final step in the registration of a trademark in the Republic of Kazakhstan is the issuance of a certificate for a trademark by Intellectual Property Rights Committee of the Ministry of Justice, which confirms the registration of the trademark and from this period it is considered legal and shall be protected by law.

International registration of a trademark

         Taking into consideration the recent trend of globalization, the spread of joint ventures and integration between enterprises of the Customs Union and the countries as a whole, there is a need to increase protection of intellectual property rights not only at home country, but also globally through international registration of trademarks. Holders of a trademark can provide protection for their marks applicable to goods or services, by filing with the International Bureau of Intellectual Property. The headquarters of the International Bureau is located in Geneva, Switzerland. International trademark registration procedure is regulated by the Madrid Agreement Concerning the International Registration of Marks (Madrid, April 14, 1891). This agreement applies to the Republic of Kazakhstan from February 16, 1993 in accordance with a special declaration of the Prime Minister of the Republic of Kazakhstan, aimed at WIPO (World Intellectual Property Organization).

The content of the application for international registration:

1. the application on a form in accordance with instructions;

2. confirmation of the application by the country of origin according to the information office of the national registry;

3. the definition of goods or services by the applicant for which protection of the mark is sought.

        The date of registration shall bear the date of filing of the application for international registration in the country of origin, provided that the International Bureau received the application within two months after the date of this filing. It is noteworthy that the validity of the international trademark is 20 years, with the possibility of extension for the same period.

        Taking into account the importance and significance of the trademark registration, it is necessary to be sure of the correctness of the content of the application and designation. Moreover, it is important to get acquainted with the grounds of trademark registration refusal in detail, in order not to be rejected by the form of a reasoned letter and without loss of time to register a trademark in a specialized state body. Furthermore, the protection of intellectual rights in the international arena by registration of a trademark at the International Bureau of Intellectual Property is extremely important in order to engage in business with other countries without any problems.

Junior Attorney “ZAN Company”,

Dias Sabdenaliyev.