Trademarks

Trademarks

A trademark is used to distinguish the goods and services of one legal entity from the goods and services of another legal entity. This means that each trademark must be original, not like other trademarks.

Why should a trademark be registered and what risks may arise for a businessman if he fails to register the trademark?

Example: The Director of Olympus LLP, Ivanov, opens a shop on producing various types of milk products and gives each product an original name. The goods of Olympus LLP gains widespread popularity in the market of Kazakhstan, and Ivanov decides to expand the boundaries of his business and to begin selling the goods outside of the Republic of Kazakhstan, in some CIS countries to start, and later in foreign countries.

Let’s consider an example in two perspectives:

1. Ivanov fails to register the names of all kinds of milk products produced by Olympus LLP as trademarks.

 Consequences: Ivanov may face the following difficulties:

• appearance of competitors producing similar products under similar or identical names;
• the emergence of counterfeiting;
• registration of the names of the products to another person.

Each of the cases will no doubt affect the good name of Olympus LLP, and the latter case will even lead to the prohibition for the trademarks owners to continue production of Olympus LLP. The most disappointing factor is that it will be difficult, and in some cases even impossible, for Olympus LLP to legally justify the fight against unfair competitors.

2. Despite the fact that the registration of a trademark is an optional condition for production, Ivanov nevertheless registers the trademarks not only in Kazakhstan but also in other countries where he plans to expand the business.

 Consequences: Ivanov, having incurred low costs of registering trademarks, quietly does his business not only in Kazakhstan but also in other countries. Indeed, in the case of unfair competition, and counterfeiting, he has legitimate grounds to fight them through the use of both administrative and criminal measures.

We therefore suggest that you protect your trademark as soon as possible. Please note that our firm can assist you with this. Through the extensive partner network, we are able to register a trademark not only in Kazakhstan, but also anywhere in the world.

Our services:

• information search;
• rreparation and filing an application for trademark registration in Kazakhstan;
• preparation and filing an international application for trademark registration under the Madrid system;
• preparation and filing an application for trademark registration in any country of your choice,  not included in the Madrid system;
• obtaining a security document;
• amending and extending the certificate trademark;
• preparation and filing objections to the decision of the expertise;
• representation and advocacy of the interests to the Board of Appeal of the Committee on IP Rights.

Recent Experience:

Information search by trademarks. Information trademark search of a foreign company producing food products, national media companies, a Polish company producing toys, the national association of alcoholic producers, a national mobile operator, foreign pharmaceutical companies, national manufacturers of alcoholic and soft drinks, national toy-stores, a chain of clothing stores, a chain of stores selling office equipment, a Kazakh bank, foreign cosmetic companies, an international hotel chain, a foreign confectionery, Iranian companies producing paints and varnishes, a national company that supplies medical equipment, a foreign chain of groceries of wholesale and retail sales, a national film studio, foreign scientific and industrial firms, foreign firms for the production of sportswear, a national trucking company, a national bookmaker company, a national company for the lottery draw, a national company that produces batteries, a company producing clothing, a foreign bank, and a national food company, national advertising and exhibition company, for veterinary clinics, for a foreign consulting company, for a national real estate agency, national advertising company, a foreign bank.

National registration of trademarks. Rebranding of a Kazakh bank, the registration of trademarks of a Polish toy company, the association of alcoholic beverages producers, a national mobile operator, foreign pharmaceutical companies, national manufacturers of alcoholic and soft drinks, a national toy-store, a national clothing stores chain, a national bank, a chain of stores selling office equipment, an international hotel chain, a foreign confectionery, a foreign tire company, an international trucking company, a foreign cosmetic company, a national oil company, national media companies, companies from Saudi Arabia producing of non-alcoholic drinks, an Iranian company producing paint products, a national provider of medical equipment, a foreign company for the construction of pipelines, a foreign chain of groceries of wholesale and retail sales, a national film studio, foreign scientific and industrial firms, national trucking companies, a national bookmaker company, a national company for the lottery draw, a foreign food company, a national company producing batteries, a foreign bank, and a national food company.

International registration under the Madrid System. International registration of trademarks of a Kazakh bank, a national chain of clothing stores, a national mobile operator, and an Iranian company producing paints and varnishes.

Registration of a trademark abroad. Trademark registration for a Kazakh bank in Japan, for companies from Saudi Arabia producing soft drinks in Turkmenistan, Uzbekistan, Ukraine, Azerbaijan, Belarus, Georgia, Tajikistan, Russia, Kyrgyzstan and Armenia.

Legal Opinions:

• for foreign companies producing alcoholic beverages on the abolition of the illegal registration of trademarks;
• for a media holding on the issue of the abolition of a trademark registration;
• for a foreign food company on the appeal of a bad-faith registration of a trademark;
• for a foreign food company on the bad-faith registration of a trademark;
• for a foreign company-manufacturer of building materials and household products on the violation of trademark rights;
• for a national company-manufacturer of alcoholic products on the use of a trademark which is confusingly similar to the registered trademark.

Pre-trial

Preparation and giving of objections to the Appeal Board of an authorised body on the following grounds:

• illegal registration of a trademark due to a confusing similarity with a trademark of a foreign pharmaceutical company;
• disclaimer of a foreign pharmaceutical company;
• illegal issue of a provisional patent to a national company producing cable boxes;
• refusal in registration of a trademark on the basis of confusing similarity with trademarks of the foreign pharmaceutical companies, the national company producing aroma and phyto-oils, national processing  company, the national company producing foods, the Iranian company producing  paint and varnish products, the foreign company producing storage batteries, the foreign company producing bakery products;
• other reasons.

Publications:

• Trademark Protection in Kazakhstan