Products

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.

International Registration of a Trademark

The effect of law protection of a trademark is limited by the territory where the trademark has been registered. Thus, if your trademark was registered in the Republic of Kazakhstan, then no one can prohibit registering the same mark in other CIS of other countries. Therefore, if your commercial interests cover more than the territory of Kazakhstan, you need to register your trademark in all countries concerned.

You may apply for the trademark registration directly with a Patent Office of each county, this, however, will take substantial material costs since such an application will require the translation thereof and payment for the services of patent attorneys registered in those countries. Moreover, such registration may take quite long time, for instance the registration of your trademark in Germany may take about three years.

You may significantly facilitate the process of the international registration of a trademark by applying the Madrid System of Trademark Registration.

The Madrid System of Trademark Registration allows obtaining the international registration of a trademark simultaneously in several countries that are parties to the Madrid Agreement and Madrid Protocol thereto. A trademark will be registered through the World Intellectual Property Organisation (WIPO). If the country, where you are intending to register you trademark, is not a party to the Madrid Agreement or Protocol, then the trademark will be registered directly with the Patent Office of that country.

The Republic of Kazakhstan is a party to the Madrid Agreement ad Protocol.

Procedure of the International Trademark Registration

• an application for the international registration of a trademark is filed with an authorised agency of Kazakhstan, which forward the application to the WIPO International Bureau. An application for the international registration of a trademark shall contain the information of a basic application or basic registration. The list of countries, where registration is requested, as well as goods and services that require the registration (the list of goods and/or services indicated in the international application shall match the same indicated in the basic certificate of the Republic of Kazakhstan);
• upon the receipt of the application, the WIPO International Bureau arranges an expert examination for the regularity of the application for the international registration of a trademark and compliance of the list of goods and services with the International (Nice) classification. Then it registers the trademark and forwards to the trademark owner a certificate containing the information entered into the International Register while registering;
• after the regular expert examination, the WIPO International Bureau sends the application to national offices of the countries where the registration is requested;
• National Office of those countries arrange a substantive expert examination of the applied trademark in accordance with the trademarks protection laws effective in those countries;
• after the said examination, a National Office of each country informs the WIPO International Bureau the decision regarding the trademark protection possibility in the territory of its country:
• the International Bureau sends the trademark owner the notice on the entries made to the International Register regarding the preliminary and final refusals to provide trademark protection, final decision following the refusal, as well as the notice on the entries made to the International Register regarding the invalidation of the registration and a copy of amendments entries made to the International Register;
• international registration of a trademark with the International Bureau is made for the period of ten year with a renewal option.

Comparative Table for the International Registration under the Madrid Agreement and Protocol

Our services:

• informational search;
• preparation and filing of an application for the registration of a trademark in Kazakhstan;
• preparation and filing of an application for the international registration of a trademark under the Madrid System;
• preparation and filing of an application for the registration of a trademark in any country of your concern that is not a party to the Madrid System;
• obtaining of the title of protection;
• amending and renewal of the trademark certificate;
• drafting and filing of objections to the expert committee decisions;
• representation and protection of interests in the Board of Appeal of the IP Rights Committee.

Copyright

Copyrights are property and personal non-property rights of an authors to the result of his/her creative activity, arising due to the fact he/she created such results. Objects of copyright include works of science, literature and art, and include software and databases that are used everywhere and every minute - on radio and television, in newspapers and books, movies, theatres and concert halls.

The commercial success of a work directly depends on how correctly and fully the relations with the copyright holders have been established. Errors in contracts threaten not only the entire project, but in fact can lead to the financial collapse of a company.

The registration of copyrights as a mandatory procedure for the acquisition of rights of authorship in the Republic of Kazakhstan is not provided. According to Article 9 of the Law of the Republic of Kazakhstan ‘On Copyright and Related Rights’, a copyright arises by virtue of making and registering a work and no other special registration is required.

No registration or any other special registration of a work or meeting any other formalities are required for the emergence and exercise of the copyrights.

As indicated in the definition, copyrights arise by virtue of creating an object of copyright.

An author may notify other persons of his/her exceptional property rights by means of protection mark, which is placed on each copy of the work and should consist of three elements:

1. copyright ©
2. own name
3. year of first publication of the work

This applies to works of science, literature and art.

Since copyrights often have a great value, they are protected by the state, but for this purpose, an author must prove the authorship of the work. The main form of proof of authorship is the disclosure of the work, for example, by publication thereof. For many reasons however, sometimes publication is impossible or impractical. In this case, the author is required to have documentary proof of his authorship. In order to avoid offenders being assigned the authorship of a work, the author must complete the registration of their rights with the authorised state body.

After inspection by an authorised body of the application for registration of copyright objects and documents, the authorised body shall issue a certificate on the state registration of intellectual property, or send a notice of refusal to register the declared object.

To avoid potentially denying the claimed object of copyright because of the improper drafting of statements, or the submission of an incomplete set of documents, with the application for registration of the alleged object of copyright, it is more convenient for the applicant to entrust it to the specialists.

Our services:

• deposit and registration of copyright in the authorised body;
• registration of copyright in other countries of your choice;
• design and registration of contracts for the transfer of copyright;
• representation in court.

Due Diligence of Intellectual Property

Few companies engaged in manufacturing, financial, construction, trade and other activities know anything about legal audits of intellectual property.

When is legal due diligence of intellectual property performed?

There are two cases when a legal audit of intellectual property is performed:

1. Within the overall legal due diligence, which is performed in the case of a merger of legal entities or an acquisition of a new company. Here, in addition to the issues relating to intellectual property, the following issues are analysed:

• structure and legal status of an audited legal entity and each of its subsidiaries;
• presence or absence of licences;
• material contracts;
• availability of disputes;
• insurance issues;
• intellectual property/information technology.

2. As part of an audit of intellectual property, which is usually aimed at the identification of IP objects of an organisation. In this case, after such an identification, the possibility to refer this or that object to the objects of intellectual property and determining its subsequent registration with the authorised body shall be determined.

What is the due diligence of intellectual property for?

If your company does not have a so-called ‘patent portfolio’ or other registered IP rights, including trademarks, copyrights, and licences to use intellectual property, then you need to conduct a due diligence of intellectual property.

What can the results of the due diligence of intellectual property give you?

The value of a company includes both tangible and intangible (intellectual property) assets which can become a part of the charter capital of the company. Furthermore, the identified intellectual property can be used as collateral or be the subject of transactions.

Advantages of the due diligence of intellectual property by specialists

It should be noted that in the case of a revelation during the due diligence of at least one intellectual property object, which is subject to registration, and this object by the time of the due diligence has not been registered, a specialist on intellectual property first should draw the company’s attention to the importance of registering such an object.

For example, if the name of your company or output products are not registered with the Patent Office of Kazakhstan as a trademark, then you will bear the risk of becoming a victim of unfair competition, which may even lead to the loss of the right to engage in business under the name of your company that is already well-known to your clients.

An important role in the due diligence of intellectual property is checking the information technology of a company. They often check for licences to use the software, correct registration of contracts on the transfer of property rights to the software owner, if established by the company’s employee, and in cases with the banks - the existence of organisational and program-technical measures to ensure information security.

Please note that the main problem for companies in the area of information technology is the acquisition of software or other IP products from improper suppliers. This means that by signing an agreement to purchase the software, the company does not check the right of the supplier to sell such a product, which leads to the risk of becoming a subject of claims from the real owner. Before entering into a contract for the purchase or use of intellectual property, it is therefore advisable to contact us, and our experienced specialists will help you to avoid possible claims from the proper copyright holders.

In summary, we would like to draw your attention to the fact that a due diligence audit of intellectual property can be performed in any case, regardless of whether you have registered your IP rights, whether they are in the process of registration, or even if you do  not have any protection. In the latter case, the due diligence will help in identifying IP objects and in determining whether they are registered.

In addition, according to the results of due diligence, in case of a violation of IP rights, GRATA can offer procedures for pre-trial and/or judicial remedies, as well as subsequent legal support for these remedies.

Our services:

• a comprehensive due diligence of your company in respect of IP objects;
• recommendations for the protection of identified IP objects.

Commercialisation of Intellectual Property

First of all, please note that intellectual property may be owned either by a legal entity,  an individual entrepreneur, or an individual.

The intellectual property of a legal entity or an individual entrepreneur can be in the form of a corporate name, trademark, know-how or patent for any design. The intellectual property of individuals can be represented in the form of a literary work, project documents, musical composition, etc. Often in this case, neither the legal entity nor the entrepreneur and the individual are even aware of the existence of intellectual property.

Have you ever thought about the fact that any IP object can bring you income as well as, in the case of a professional approach to this issue, bring stable profits for your company or you? In addition, you can buy an existing business of your favourite brands and also receive income therefrom. This proposal will help you to choose one of the ways in which to gain profit from your intellectual property, which is a compensable transfer of IP rights, i.e. the transfer of rights for a fee.

There are four ways to transfer IP rights:

1. Licence Agreement
2. Contract of Assignment
3. Franchising Agreement
4. Copyright Agreement

1. A licence agreement provides for the transfer of IP rights to a third person for temporary use. In this case, a licensee is granted an exclusive or non-exclusive licence to use intellectual property.

Situation: You are going to expand the boundaries of your business.

Solution: For this purpose, you sign a licence agreement with Company X, which provides that this company obtains the right to use your intellectual property. This right, for example, may mean the right to sell or produce products under your trademark.

Result: You receive income from the right to use your intellectual property at such intervals, which is best for your situation.

2. A contract of assignment provides for the complete transfer of IP rights. At the same time, after signing the contract, you will not have any rights to the transferred IP object. In fact, in this case, there is a sale of IP rights.

Situation: You are leaving the country and have decided to sell your corporate name, which you do not intend to use anymore in Kazakhstan.

Solution: You sign a contract of assignment of IP rights with Company X and thus lose the rights to all possible use of the IP in Kazakhstan.

Result: You will receive appropriate remuneration for the assignment of the IP rights.

3. Under a franchising agreement, the receiving party receives a comprehensive business licence, which includes not only the IP rights, but also the entire structure of the franchiser’s business.

Situation: You want to sell qualitative products under the promoted brand of Company X and at the same time, adopt the goodwill of the company (company’s reputation) and know-how in organising and conducting such business.

Solution: You sign a franchising agreement with Company X, and, depending on the conditions of the agreement, Company X may find you a room, teach you to use its equipment and may even provide you with its customers.

Result: You buy the established business and intellectual property of Company X and receive the income therefrom.

4. Under a copyright agreement, a copyright holder may transfer the copyrights for temporary use to a third party (legal entity or individual) and also get the relevant remuneration.

Situation: You are a software developer and want to get a profit from the software.

Solution: You sign an agreement for the transfer of copyrights to the software.

Result: You receive income from the right to use your intellectual property.

Our services:

• verification of the compliance of the agreement with Kazakhstani legislation;
• preparation of the agreement;
• registration of the agreement with an authorised body.

Pre-Trial Protection of IP Rights

In accordance with the laws of the Republic of Kazakhstan, a violation of IP rights entails civil, administrative or criminal liability. Moreover, a violation means the following acts:

• illegal use of intellectual property;
• unauthorised introduction into civilian turnover.

There are various reasons, for which the issues related to the violation of IP rights are better solved using the pre-trial procedure. Such reasons include the uncertainty of the IP owner regarging one or another violator, and the possibility of stopping the violator’s activity without initiating proceedings. The Department of Intellectual Property therefore offers a variety of ways for pre-trial protection of your IP rights, which include the following legal actions.

Our services:

• preparation and sending of the warning letters to a violator;
• application to law enforcement agencies.

Representation in Courts

Disputes over intellectual property may not always be resolved through negotiations and there is therefore a need to enter into judicial proceedings.

Depending on the case background, the preparation of one or more procedural documents has many nuances, which are known only to lawyers. There is no need to try personally to understand all of the intricacies of intellectual property law, to write a statement of claim for a discovered pattern, and then to personally participate in the proceedings. It is much easier to request assistance from professionals.

It is crucial that procedural documents for court are to be prepared by precisely qualified specialists. Having applied for judicial protection of your interests to the experts, you will save time and can be confident that you will be given proper legal assistance.

GRATA Law Firm offers you many services on the legal representation of IP issues in court. The advantage of our company is that we can present the interests of your company in all instances. The first thing that can be suggested to you by our company is a preliminary legal analysis of the documents provided by you and an evaluation of the judicial potential of the case. There are times when we may settle all the issues without applying to the court. Unfortunately, sometimes there are cases when the likelihood of a successful outcome is very low and therefore, it is possible to save you from the burden of bearing unnecessary costs.

If the case has the potential to succeed in judicial proceedings, we as professionals will do our best to protect your interests and to bring the violators to liability. We will carry out qualified representation and protection of your interests in the courts of all instances.

Please note that in accordance with the applicable law (Articles 107, 110, and 111 of the Civil Procedural Code of the RK), the costs of representation are referred to as legal costs and are reimbursed by the losing party. Practically, this means that if you sign an engagement letter for court representation with our company, in the case of a successful outcome of the proceedings, you may recover money for our services from the losing party. Our task is therefore to provide you with qualified legal assistance in a legal conflict and make it universally accessible.

Our services:

• representation in courts;
• preparation of expert opinions.

Protection of Intellectual Property at the Border

Surely, many of you have been faced with a situation where instead of being presented with an original product, you have been offered a fake product. Indeed, such cases are not uncommon, not only in our country but also worldwide. In this situation, it is not only consumers who suffer, but also the original producer of the product (the IP owner), which incurs huge losses in connection with the ‘enterprising’ of individual ‘entrepreneurs’.

We therefore believe that this proposal will be especially interesting to IP holders, regardless of the type of activity, whether it is in services or the manufacturing business.

In accordance with the laws of the Republic of Kazakhstan, in order to protect IP rights, in addition to administrative, civil and criminal remedies, customs measures to protect IP rights may be applied as preventive measures. Such measures prevent the cross-border movement of counterfeit goods, as well as original goods being transferred without the consent of the owner (parallel import).

GRATA Law Firm would be happy to assist your company in the implementation of customs measures in respect of your intellectual property.

We hope that this information will be useful to you. If you have any questions or require further information, please contact us. We would be pleased to offer our assistance in this regard and in other matters as well.

Our services:

• preparation of documents for entering information into the Register of IP Objects;
• keeping records for applications;
• obtaining a decision from an authorised body.