Trademark Protection in Kazakhstan

Trademark Protection in Kazakhstan

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 registra¬tion 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 protect¬ed 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 respec¬tive goods, and (or) packing, in manu¬facture, application, import, storage, marketing, sale of the goods with in¬dication 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 chang¬es 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 au¬thorized authority against registration of a trademark if it is not used within 3 years, with the term starting from the date of trademark registra¬tion, or within 3 years before the date of such objection. The previous provision indicated a 5-year term for such objec¬tion. 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 sup¬plemented by Article 19 of the On Trademarks Act, where the evidence of a trademark’s use can include its appli¬cation in advertising, printed publica¬tions, in official forms, signboards, or in presentation of goods at exhibitions held in the Republic of Kazakhstan. In this regard, practice demonstrates delu¬sions concerning some actions that can be recognized as use of trademarks.
For example, the decision of a court in the city of Astana satisfying a claim of a Russian pharmaceutical firm against the Kazakhstan pharmaceutical firm concerning a trademark owned by Russians.
The Kazakhstan entity submitted its objections to the Council of Appeals of the Patent Agency requesting to terminate the registration of the Russian trademark as it was not used in the territory of Kazakhstan over a period of 5 years from the date of the trademark’s registration (at the time of the legal proceedings the new changes to the On Trademarks Act were not effective yet). The Russians used their right to appeal the decision to the Council of Appeals and asked the court to cancel the decision.
To confirm use of its trademark, the Russian party furnished the following evidence:
a) a patent for an invention using the trademark in its name;
b) publication of information about the mentioned patent in the official print publication of the Patent Agency and on its official website.
c) agency agreement with a firm on advertising at an exhibition in Kaza¬khstan.
The court decided that none of the presented pieces of evidence can serve in trademark cases for the following reasons:
1. Obtaining a patent for an inven¬tion, a publication in the official print publication of the Patent Agency and on its official website cannot be re¬garded as use of a trademark in printed or any other business documentation, since the patent is an entitling instru¬ment and promulgation of the patent information is a way of informing third parties of the inventor, but not a way of using a trademark.
2. According to Article 21 of the On Trademarks Act, assignment of the right to use of a trademark can be effected in the form of a licensing agreement which is subject to obligatory registration with an authorized body. However, the agency agreement presented by the Russian party did not have anything in common with a license agreement and did not meet the requirements of Arti¬cle 21 of the On Trademarks Act. There¬fore, it cannot be applied as an evidence of use of a trademark.
In spite of the fact that arguments made by the claimant were rejected by the court, there was no need at all to prove use of a trademark. The International Bureau of WIPO regis¬tered the trademark of the claimant on November 1, 1998, which also applies among other countries in addition to Kazakhstan. The application for reg¬istration sent for consideration by the Patent Agency of Kazakhstan after the examination was denied. The refusal was explained by the existence of an ear¬lier registration of a confusingly similar trademark (according to the examina-tion) of another company. Therefore, on the basis of clause 1, Article 7 of the On Trademarks Act and Article 5 of the Ma¬drid Agreement on International Registra¬tion of Signs of 14 April 1891 (the Madrid Agreement)(1) the Kazakh Patent Agency denied registration of a trademark under the international application.
However, within the term estab¬lished by the legislation, the applicant submits his objection to the examina¬tion conclusions and, as a result, the Kazakh Agency satisfies objections of the claimant, and grants protection to the trademark under the international application. The official information on the decision of the National Patent Agency about trademark registration was published in the WIPO bulletin on 18 March 2001. Thus, the claimant’s trademark has been granted protec¬tion in Kazakhstan in accordance with clause 1, Article 4 of the On Trademarks Act, but not on the basis of registration in the country, and without registration in the declared country by virtue of the international contract.
Now, there is a question: from what date should trademark registration, in accordance with the international sys¬tem, be valid in Kazakhstan:

• from the time of its registration in the International Bureau (1 November 1998), or
• from the date of official publica¬tion about protection in Kazakhstan (on 18 March 2001)?

The answer to this question was pro¬vided in the decision of a judge, which states that the applicant (claimant), un¬der circumstances beyond his control, had no legal protection in Kazakhstan prior to 18 March 2001. For this reason, the claimant could not use the trademark in Kazakhstan lawfully till 18 March 2001, and hence, the claimant acquired the right to the trademark in Kazakhstan only from 18 March 2001, and not from 1 November 1998. And according to clause 4, Article 19 of the On Trademarks Act, when deciding on cancellation of registration of a trademark, they take into account the evidence presented by the owner that the trademark was not used for reasons beyond his control.
Since the respondent’s objection about cancellation of registration of the trademark took place on 7 Janu¬ary 2004, the respondent believed that the five year period of non-use of the trademark would start on the date of its registration in the International Bureau, i.e. from 1 November 1998 till 1 November 2003, or from 7 January 1999 till 7 January 2004 (the date prior to the objection date). However, in view of the above circumstance, the period of non-use of the claimant’s trademark should be calculated from 18 March 2001 till 7 January 2004, which comes to less than 3 years. Thus, the objection of the respondent has been satisfied by the Council of Appeals of the Patent Agency without consideration of all the circumstances of the case. As a result, the claim of the Russian company has been upheld.
II. The On Trademarks Act stipu¬lates cancellation of registration of a trademark also when such registration has been carried out with violation of the requirements established by Arti¬cles 6 and 7 of the On Trademarks Act (absolute and other grounds of denial of trademark registration). Any inter¬ested person can file an objection as to cancellation of trademark registration. The Council of Appeals considers the objection within 6 months from the date of its receipt. In practice, we often see decisions of the Council of Appeals contested on the grounds of confusing similarity with trademarks of interested persons, who filed their objection. In such a case, according to the On Trademarks Act, the owner of a trademark with cancelled validity can address a court for protection of his rights.
Thus, in the above cases of possible cancellation of registration of a trade¬mark, it is possible to secure oneself only in the first case by continuous use of a trademark. As to the second case, nobody has insurance. However, in any case, an owner of a trademark has the possibility to challenge a decision chang¬ing the status of such a trademark.

(1) The specified Article of the Madrid Agree¬ment governs the issues of possible refusal by the national agencies to register trademarks.