The Republic of Kazakhstan passed the law No.161-VI, titled "On Amendments to Certain Legislative Acts of the Republic of Kazakhstan Concerning the Improvement of Legislation in the Sphere of Intellectual Property”, dated 20 June 2018 (see the law in Russian).
It is intended to reform the whole Kazakh legislation on intellectual property objects in order to improve its legislation, follow OECD’s previous recommendations1 and harmonize its legal system with the rest of the OECD member states.
This comprehensive reform has the merit of addressing most of the issues to correct or improve them, making registration, transfer and disputes over intellectual property objects much easier and quicker. Please find below the main amendments:
1 – Formalism.
The right seeker applying for the registration of industrial designs is no longer obliged to submit an inventory of these good’s features.
The Kazakh law now details the qualification requirements for patent attorneys. From now on, the original of the patent of attorney’s documents will be required within 3 months from the registration or objection.
Even without any prior registration, one can now file a lawsuit aiming to protect their intellectual property rights and interests.
The letter of consent produced by a legal entity shall be signed by the authorized person and sealed by the legal entity. If the author is an individual, the signature must be notarized.
2 – Registration.
The registration of intellectual property objects shall only be filed before a unique institution, namely the National Institute of Intellectual Property (so the Kazakh registration system is now a “one-stage system”). It will consider applications much more quickly - details below:
The formal examination of trademark applications will take 10 working days;
The substantive examination will be carried out within 7 months;
The review of appellations of origin application will be conducted within 30 working days;
Transfer, assignment and pledge of rights contracts will be examined within 10 business days.
Please note that registering a trademark is now more likely to be refused, as the National Institute of Intellectual Property is supposed to refuse the registration of a trademark filed by a representative without the right holder’s approval, if a similar trademark is already registered in one of the Paris Convention’ member states. Also, the trademark registration will not be granted if a similar trade name already exists.
Following the successful application, the right seeker will be granted an exclusive right deemed to arise on the registration date.
3 – Transfer of exclusive rights.
Unless otherwise provided, a license is deemed to last 5 years;
The licence duration cannot be longer than the trademark’s registration period;
The court will consider termination and annulation of licenses within one day;
Marketing activities carried out by a ratepayer under trademarks licenses and sublicenses are tax-free.
4 - Infringing activities.
Counterfeit goods are now defined as follows “goods and their packaging, on which a trademark or designation confusingly similar to it is placed without the right holder’s consent”;
The law states that counterfeit goods and their packaging, as well as tools, equipment or other means and materials used for their manufacture, shall be withdrawn from circulation and destroyed at the expense of the offender, on the basis of a court decision except if their introduction is necessary in the public interest and does not violate consumer rights;
Disputes over imported infringing goods will now be heard before the civil court;
The new law generally increases the transparency of the activities of expert organizations and organizations engaged in collective management of copyright.
5 – Disputes over intellectual property objects.
Not only the registration itself will be published as before, but also the application for registration. This should guarantee a better protection of trademark’s right holders that will no longer need to await the registration stage to object to new registrations;
The law creates the Appeal Council, intended to handle pre-trial dispute resolution. Possibilities to use these pre-trial dispute resolutions have been expanded for trademarks but excluded for issues regarding copyright;
Henceforth, victims of an illegal use of their trademark can file a claim asking offenders compensation instead of damages before the freshly established Institute of Compensation. The victim is required to justify the amount of compensation that may be granted taking into consideration 3 criteria: the nature of the violation, the market value of equivalent original goods, the extent of confusion the infringing goods sustain in the eyes of consumers;
Disputes involving trademark’s cancellation for non-use will no longer be handled by the Ministry of Justice of the Republic of Kazakhstan but by the court. This action can be file within three years preceding the date of submission of an objection (previously the plaintiff had the choice between the latter and the date of the trademark’s registration).