Intellectual property (IP) is one of a firm's most valuable assets. But in a world where piracy and the unlawful use of intellectual property are widespread, its registration and protection are strategically important and crucial to the abolition of unfair competition.
GRATA's IP lawyers successfully combine theory and specific cases’ practice that is intended for the protection of our clients’ rights. Our IP lawyers have significant experience in assisting with the local and international registration of trademarks for national and foreign companies; advising on license and franchise agreements, IP rights assignment contracts; industrial property preparing and filing applications for registration of inventions, utility models, industrial designs; patent researches; protection of IP rights; representation of international companies at courts of various levels and state agencies.
- Franchising and Licensing agreements
- Copyright and Neighboring/Related rights
- Due Diligence of Intellectual Property
- Protection of IP Rights
- IP Litigation and Disputes
- Trademarks and Appellations of Origin
- IP & Antitrust
- Parallel import
- Customs measures of IP protection
- Domain names
- Trade secrets & Know How
- Company names
- IP rights assignment agreements
- Searches for industrial property objects
- Data Protection 2016: Kazakhstan;
- The International Comparative Legal Guide series - Franchise 2017: Kazakhstan;
- The Franchise Law Review: Kazakhstan;
- The International Comparative Legal Guide to Copyright 2016, 2nd edition. A practical cross-border insight into copyright law;
- The International Comparative Legal Guide to Franchise 2016, 2nd edition. A practical cross-border insight into franchise law;
- The International Comparative Legal Guide to Trade Marks 2016, 5th edition. A practical cross-border insight into trade mark work;
- The International Comparative Legal Guide Trademarks 2016: Kazakhstan, 2016;
- Parallel import remedies: Russia and Kazakhstan, Corporate Lawyer No.5, 2015;
- Protection of Trademarks in Kazakhstan: Must Know for Businesses (published: in "Forbes Kazakhstan" 29/09/2016);
- The Intellectual Property and Antitrust Review: Kazakhstan, 2017, 2nd edition.
Franchising and Licensing Agreements
- Analysing license and franchise agreements for the transfer of trademark rights of a global car components manufacturer, a cosmetic products and brand clothes manufacturer, as well as a world famous manufacturer of household products;
- Consultation on the legal requirements for drafting a valid assignment contract concerning the use of industrial property objects;
- Franchising consultations, drafting, compilation, analysis and registration of franchising agreements for a world famous hotel chain;
- Drafting, registration and providing further advice on franchising agreements with Kazakhstani franchisees for a U.S. franchisor of frozen yogurt retail stores, a French retail clothing company, and an international design-clothing manufacturer;
- Providing legal opinions regarding the analysis of various documents of title and other disputed matters, as well as Consultations on registration of trademark license agreements for an American energy drinks manufacturer;
- Successful registration of the agreement with respect to trademarks belonging to the international fast food chain in the United States with the competent authority, as well as successful addressing of requests of the state authority that prevent registration of the agreement;
- Advising on and full-range legal support in the registration of the license agreement and franchising agreement for the trademarks with the competent authority of the Republic of Kazakhstan for the company that provides online message boards;
- Development of an additional agreement to the sub-license agreement for the brand of the world’s known coffee houses network, in accordance with Kazakhstani law, and its further registration with the competent authority of the Republic of Kazakhstan;
- Advising a foreign leading company on testing, inspection and certification regarding the registration of an intercorporate complex franchising agreement with the competent authority of the Republic of Kazakhstan, including development of a draft agreement in accordance with Kazakhstani legislation;
- Advising a French retail clothing company on conclusion of the franchise agreement;
- Advising of international mercantile company (franchisor) whose activity consists of the design, creation, production and distribution of wedding dresses, cocktail wear, evening gowns and other accessories on conclusion and registration of the franchise agreement with KZ franchisee;
- Advising a U.S. franchisor on KZ, UZ, KG law requirements to franchising agreements (on franchised outlets under a Brand that deals with restaurants business, specializing in sandwiches);
- Review of the franchise agreement on compliance with Kazakhstan legislation for the international system of fitness clubs;
- Review and amendment of the franchise agreement on compliance with the Kazakh legislation for the large American producer of apparel, accessories, and personal care products for men, women and children;
- Advising and drafting franchising agreement for the international company specializing in full range of goods for mothers and babies;
- Advising famous European brand of jewelers and accessories on the franchise agreement.
- Registration of copyright in computer programs, databases, literature and stage pieces of national authors;
- Registration of copyright of an international investment fund specializing in the development and acquisition of technology used in the exploration and production of oil and gas;
- Advising a foreign company on the possible infringement of copyrights through using images (people faces) from the Shutter Stock website for television advertising;
- Preparation of the legal opinion for an international manufacturer of musical equipment and other household and audiovisual devices on the legality of requirement to pay remuneration for the free reproduction of phonograms and audiovisual works for personal purposes;
- Legal support in the registration of software copyrights for one of the world's largest manufacturers of consumer electronics and household appliances with the competent authority of the Republic of Kazakhstan;
- Successful pre-trial protection of the rights of foreign and national companies to copyright objects.
- Due diligence of the IP rights of a Kazakhstani mobile operator in the context of its placing shares on the London Stock Exchange;
- Due diligence of the IP rights of a leading international logistics company as part of a multijurisdictional M&A transaction for a German company;
- Conducting due diligence of intellectual property and information technology for foreign banks, construction companies, telecommunications holding, international engineering company, international investment company, the world's leading manufacturer of food products and household chemicals, and international construction company;
- Conducting due diligence of trademarks and drugs certificate for an international pharmaceutical company.
- Preparation of warning letters from foreign and domestic companies to violators of their IP rights;
- Advising an international pharmaceutical company on appealing against illegal registration of a trademark of a third party due to confusing similarity;
- Successful appealing against registration of the trademark of the world leading manufacturer of insulation materials in the Appeals Board of the Committee on Intellectual Property Rights;
- Successful pre-trial protection of the exclusive rights of a large manufacturer of chocolate and other confectioneries to the trademarks through sending claim letters to the infringers;
- Participation in the pre-trial recording of violations of the rights to a trademark of a well-known manufacturer of clothing and accessories for men and women as a part of evidence provision by a notary;
- Successful appealing against the decision of the Appeal Board of the Ministry of Justice of the Republic of Kazakhstan on the invalidity of the trademark registration for the benefit of a Ukrainian pharmaceutical company;
- Advising a Swedish engineering company and development of the documents required for the initiation of administrative and criminal investigations in respect of the forgery of the signature and seal of the company, and illegal use of another's trademark;
- Advising the largest biopharmaceutical company on the violation of its patents for inventions by a potential infringer supplying generics to the territory of the Republic of Kazakhstan;
- Consultations on trademark invalidation and further protection of the IP rights of a famous confectionary brand, a pharmaceutical company, and manufacturers of industrial goods, soft drinks and automobiles in the Board of Appeal and the courts.
- Supporting the project for the protection of IP rights for foreign companies producing cosmetic products by identifying and bringing the violators to liability;
- Successful representation of international manufacturers of cosmetic products in the protection of intellectual property rights through detection and making infringers liable;
- Successful protection of trademarks of a large foreign FMCG company in the administrative court with further seizure and destruction of infringing goods;
- Successful protection of the representative office of the world-largest brewer in Kazakhstan in an administrative court with respect to the violation of exclusive rights to the appellation of origin;
- Representing a local manufacturer of locks and locking structures in a dispute against illegal use of the Eurasian patent and invalidation of a Eurasian patent in the territory of the Republic of Kazakhstan;
Trademarks and Appellations of Origin
- Assisting with the registration of trademarks and copyright of an international investment fund specializing in the development and acquisition of technology used in the exploration and production of oil and gas;
- Preparing and submitting objection letters to the Board of Appeal regarding a refusal to register a world famous luxury brand of clothing and accessories;
- Registration of trademarks of national and foreign banks, education institutions and major producers of tea and coffee products, as well as other trade brands in various countries worldwide;
- Advising a domestic producer of aromatic and phyto oils on the refusal to register a trademark due to confusing similarity thereof to the trademarks of a third party;
- Successful overcoming of the refusal to register the international trademark of the railway operator with the Patent Office of the Republic of Kazakhstan;
- The international registration of trademarks for Kazakhstani bank, national net of clothing stores, national mobile operator, Irani paints manufacturer.
- Preparing and filing applications for inventions, industrial designs and utility models patents;
- Advising one of the largest energy corporations on compliance with the patent laws of the Republic of Kazakhstan when dealing with fuel containers;
- Preparing and submitting complaints, objections and requests associated with patent infringement;
- Legal support in a state registration of a pharmaceutical in Kazakhstan (including submitting a patent on the original pharmaceutical to the National Center of Examination of Pharmaceuticals);
- Representation of the interests of a large pharmaceutical company in a court on a dispute related to the refusal to register a pharmaceutical;
- Advising various pharmaceutical companies on the state registration of medicines, medical devices and medical equipment in Kazakhstan;
- Entering the national phase for an international Patent Cooperation Treaty (PCT) application;
- Conducting a patent search for local and foreign industrial company;
- Legal advice on patent infringement for a transnational pharmaceutical company;
- Invention patent registration for Canadian oil company;
- Advising the client on filing a convention application for the grant of a patent for an invention to Kazakh Patent Office in accordance with the Paris Convention for the Protection of Industrial Property;
- Appealing a claim for the unlawful use of a Eurasian patent by a national producer of locking and sealing devices;
- Invalidation of a Eurasian patent in the territory of the Republic of Kazakhstan of a national producer of locking and sealing devices.
- Successful representation of the leading dairy producer in court on the dispute related to copying of the packing exterior;
- Drafting and sending warning letters to potential infringers on the violation of the exclusive rights of a large foreign chocolate producer and other confectionery products to trademarks and packaging of goods within unfair competition. As a result, the infringers made changes in the design of the products being developed.
- Preparing legal opinions for a British oil company regarding parallel import issues;
- Co-operating with the state IP Department and customs authorities of Kazakhstan in destroying counterfeit goods at the border as part of the same project;
- Successful protection of the representative office of the world-famous brand of luxury jewellery in Kazakhstan in the court on the 'grey/parallel import' case;
- Successful protection of the representative office of a foreign confectionery manufacturer on various disputes including the protection of trademark rights, 'grey/parallel import' disputes, and further destruction of the infringing goods;
- Advising the world's largest brewing company on the exhaustion of trademark rights placed on metal KEGs ('parallel/gray imports');
Customs measures of IP Protection
- Drafting applications to the customs authorities of the Republic of Kazakhstan to initiate verification of the legality of the sale of counterfeit confectionery products offered for sale by unidentified persons in the territory of the Republic of Kazakhstan within the framework of post-clearance control and further communication with law enforcement agencies;
- Advising a leading multinational manufacturer of various goods on the protection of IP rights at the border;
- Preparation of memorandums on trademark protection rights at the customs border for a leading beauty products manufacturer;
- Advising an international manufacturer of chocolate and coffee products on legality of prohibition to import goods.
- Successful protection of a company doing hotel business on a dispute relating to illegal use of the trademark and trade name;
- Successful protection of the national consulting company in disputes on the protection of exclusive rights to the trade name.
IP rights assignment agreements
- Registration and maintenance of assignment contracts for a major Kazakhstani telecommunications operator;
- Drafting an agreement for the transfer of rights to a trademark owned by a producer of paint and varnish products, and registration thereof with a competent authority of the Republic of Kazakhstan;
- Development and support of the agreement for the transfer of the full scope of exclusive property and other rights on an online resource (online store) of one of the leading companies in the area of electronic commerce in Kazakhstan.
- Informational search for trademarks for foreign and national companies;
- Preparing recommendations based on the results of informational searches for identical and similar trademarks for a Kazakh private airline.
|Saule Akhmetova||Partner, Branch Director||Almaty||Inquire|
|Atabek Sharipov||Partner, Head of Turkmenistan Practice, Head of Banking & Secured Transactions in Uzbekistan and Turkmenistan||Tashkent, Ashgabat||Inquire|
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In late 2013, lawyers from GRATA's Intellectual Property Team successfully protected the rights of a leading global manufacturer of insulation materials.
GRATA Law Firm presents you an overview of the Law of the RK № 537-IV "On amendments and additions to some legislative acts of the Republic of Kazakhstan on issues of intellectual property" on January 12, 2012.
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