According to the On Trademarks, Service marks and Names of Origin of Goods Act of Kazakhstan 26 July 1999, No.456-I (hereinafter — On Trademarks Act), the trademark serves to differentiate goods and services of legal entities. Thus, according to Article 4 of this Act, legal protection is granted to a trademark on the basis of its registration with the authorized body or by virtue of international agreements with the participation of the Republic of Kazakhstan.
It would seem that having registered a trademark and being a monopolist as to the goods and services with a protected trademark, its owner would not have to worry about anything.
However:
I. Chapter 5 of the On Trademarks Act establishes liability of the owner of a trademark as to the use of such a trademark. According to Article 19, registration of a trademark is not enough for its complete protection — the owner of a trademark is also supposed to use it.
According to Article 1 of the On Trademarks Act, “trademark use” means indication of the trademark on respective goods, and (or) packing, in manufacture, application, import, storage, marketing, sale of the goods with indication of a trademark, in signboards, advertising, printed materials or other business documentation, transfer of the right to a trademark, as well as other ways of civil use.
According to the most recent changes introduced to the On Trademarks Act by the On Changes and Supplements to Some Acts of the Republic of Kazakhstan concerning Intellectual Property Act of 2 March 2007, No.237-III, any person can submit his/her objections to the authorized authority against registration of a trademark if it is not used within 3 years, with the term starting from the date of trademark registration, or within 3 years before the date of such objection. The previous provision indicated a 5-year term for such objection. The change of term is believed to be fair, since the unjustified 5-year monopoly restricts the chance of other persons to acquire the right to a given trademark.
The list of actions above that are treated as “trademark use” was supplemented by Article 19 of the On Trademarks Act, where the evidence of a trademark’s use can include its application in advertising, printed publications, in official forms, signboards, or in presentation of goods at exhibitions held in the Republic of Kazakhstan. In this regard, practice demonstrates delusions concerning some actions that can be recognized as use of trademarks.
If you have any questions or if you need any additional information on this subject, please, do not hesitate to contact Aizhan Yessergepova, Senior Lawyer, Intellectual Property Department, GRATA Law Firm
