The law of the Republic of Kazakhstan on trademarks, service marks and appellations of origin entered into force in 1993. Amendments to this law have been made for the period of its validity. The last ones were made in April of 2015.
The right to a trademark shall be attested by a record in a State Register and confirmed with an extract from State Register.
The term of the trademark registration shall be ten years from the filing date of the application.
The term of the trademark registration may be renewed for further periods of ten years at the request of the owner, which request shall be filed in the course of the last year of the current term of the registration.
Figurative, verbal, alphabetical, digital, three-dimensional, sound signs or combinations thereof serving to distinguish goods and services of one person from similar goods and services of other persons may be registered as trademarks.
A trademark may be registered in any color or combination of colors.
Statutory grounds for refusal of registration of a trademark
- Trademarks may not be registered where they consist solely of signs that are not distinctive, in particular:
1) that have become the customary designation for goods of a particular type;
2) that are symbols or terms in common use;
3) that specify the type, quality, quantity, properties, function or value of the goods, or the place and time of their manufacture or sale;
4) that have direct described connection with goods or services for which designation are used;
5) that represent names of non-patentable medicines.
These signs may be used as unprotected elements of a trademark if they are not predominant.
- Those signs may not be registered as trademarks that reproduce State Emblems, national flags or emblems of States, abbreviated or full names of international organizations and their emblems, flags, official signs or hallmarks of control, warranty or assay, Olympic symbol, government awards and other honorary signs as well as signs that are confusingly similar to such signs.
Such signs may be used as unprotected elements, provided that there is a consent for this of a competent authority or the owner thereof.
- Signs may not be registered as trademarks or as elements thereof:
1) that are inaccurate or liable to mislead as to the product or its producer, including geographical indications liable to mislead as to the place of product manufacture;
2) that formally indicate the real place of product manufacture, but give a wrong impression that the product originates from another territory;
3) that are or include geographical indications identifying mineral waters, wines or strong drinks, to designate such products not originating from this place or where a translation is used or a sign is accompanied by such expressions as “of this type/kind” or “in a style of” or something like that;
4) that are contrary to the public interest, humanitarian principles or morality.
Other grounds for refusal of registration of a trademark
- Those signs may not be registered as trademarks that are identical or confusingly similar to:
1) trademarks registered in the Republic of Kazakhstan earlier in the name of other person for goods or services of the same type;
2) trademarks that are known to all in the Republic of Kazakhstan for goods and services of any type;
3) designations in respect of which an application for registration has been filed previously in the name of a third party for goods and services of the same type (excepting those withdrawn);
4) certification marks registered in the territory of the Republic of Kazakhstan;
5) appellations of origin protected in the Republic of Kazakhstan, except where they can be incorporated as unprotected elements in a trademark registered in the name of a person authorized to use the said appellation of origin.
- Those signs shall not be registered as trademarks that constitute reproduction of:
1) industrial designs protected in the Republic of Kazakhstan in the name of other persons on condition that they have the earlier priority;
2) titles of known literary, scientific or artistic works, artistic works or parts of such works, that are protected by copyright, if registration of such rights has been made in the order stipulated by the legislation of the Republic of Kazakhstan earlier than the priority date of the registering trademark;
3) surnames, forenames, pseudonyms and names derived therefrom, portraits and facsimile, where the reproduction of those elements infringes the non-pecuniary personal rights of the persons concerned, or their heirs or legal successors, or where those elements form part of the historical and cultural heritage of the Republic of Kazakhstan and are reproduced without the consent of the competent authority.
Requirements for an application for registration of a trademark
- The application shall relate to one trademark only.
- The application shall be submitted on an official form and shall contain:
1) a request for registration of a sign as a trademark, in which the name of the applicant and his place of business or place of residence shall be specified;
2) the sign in respect of which the application is filed (to be submitted as a photograph or typographic print of size 8 cm by 8 cm);
In a case the protection is solicited for a color trademark, 15 color reproductions shall be presented.
If the protection is solicited for a three-dimensional sign, then images of different projections of the three-dimensional sign can be supplied along with the primary two-dimensional image of the sign, to help the expert commission determining the level of the protection being solicited;
3) labels and some special kinds of trademarks can be presented life-size, but not exceeding 21 cm by 29.7 cm;
4) in a case the solicited protection is for a sound (audio sign), then its notes and phonogram should be attached with the application;
5) the list of goods and (or) services for which registration of a trademark is sought, grouped in accordance with the International Classification of Goods and Services.
- The application shall be accompanied by:
1) proof of payment of the prescribed fee;
2) a power of attorney if the application is filed through a patent agent (certified with a seal or a stamp of the applicant, no notarization, no legalization).
The priority of a trademark
The priority of a trademark shall be determined:
- by the filing date of the application with the Patent Office of the Republic of Kazakhstan;
- by the filing date of the first application for the trademark in a State party to the Paris Convention as well as in the international or regional organization provided for in the Convention (convention priority) provided thatthe Patent Office of the Republic of Kazakhstan receives the application within six months following the said date;
- the priority of a trademark affixed to a product displayed at officially recognized international exhibitions may be determined by the date as from which this product was on public display at the said exhibition (exhibition priority), provided that the Patent Office of the Republic of Kazakhstan receives the application within six months following the said date.
A trademark examination procedure
An examination of the application shall be carried out by the Patent Office of the Republic of Kazakhstan and shall comprise the following stages:
- preliminary examination shall be carried out within two months following the date of receipt of the application;
- full examination shall be carried out within twelve months following the filing date of the application.
Exploitation of the trademark
The owner of the trademark shall be bound to exploit the trademark.
Any interested party may file with the Patent Office of the Republic of Kazakhstan a request for the cancellation of the registration of the trademark where the trademark has not been exploited in three years following the date of registration thereof or in three years preceding the filing date of the request. The request may relate to all or a part of goods and services specified in the certificate.
Transfer of the right to the trademark
The exclusive right to the trademark in respect of all or some of the goods and services specified in the certificate may be contractually assigned by the owner thereof to another person.
The right to exploit the trademark may be granted by the owner thereof (licensor) to another person (licensee) under the terms of a license agreement in respect of all or some of the goods and services specified in the certificate.
Natural persons having their residence outside the territory of the Republic of Kazakhstan and foreign legal entities shall be required to act through patent agents registered with the Patent Office of the Republic of Kazakhstan in all proceedings conducted for the purposes of obtaining titles of protection and maintenance thereof as well as for lodging an appeal with the Board of Appeal.