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Intellectual property

Recently Kazakhstan has been taking significant steps to attract foreign investment into the country, including through changes to its intellectual property-specific legislation. For example, on 3 July 2018, the Law on Amendments and Additions to Certain Legislative Acts of the Republic of Kazakhstan on the Improvement of Legislation in the Field of Intellectual Property (the IP Amendment Law) entered into force. The IP Amendment Law amends and supplements a number of legislative acts with a view to improving intellectual property legislation, simplifying registration procedures and eliminating legislative gaps. Furthermore, it aims to eliminate regulations that have been creating impediments in the field of intellectual property protection. The principal agency involved in regulating intellectual property matters is the National Institute of Intellectual Property (NIIP) of the Ministry of Justice, which has the following two key functions within Kazakhstan's intellectual property rights regime.

i Intellectual property searches

Preliminary searches should be made to establish whether there are any similar or identical marks already on the register. Kazakhstan is a 'first-to-file' and not a 'first-to-use' jurisdiction, so it is important to register intellectual property rights as soon as possible to protect them.

ii Intellectual property protection

Patents must be registered with the NIIP to be protected. Patent protection is given to an invention if it is new, involves an inventive step and is industrially applicable. Patent protection can be granted for inventions, utility models, industrial designs and selection achievements. The duration of protection varies for each protected item. As of 1 January 2015, a party can choose to apply for a national patent or a Eurasian Patent – a unitary patent that, if registered in one of the eight contracting states (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan), is valid upon grant in each of those jurisdictions (provided that corresponding annual fees are paid for the selected countries after the issuance of the patent).

Trademarks should also be registered with the NIIP, although they may also be protected without national registration under international treaties to which Kazakhstan is a party. Trademark and service mark registration is granted for 10 years, renewable every 10 years.

Applications for registration of patents or trademarks should be filed with the NIIP, which assesses the applications and determines whether to grant or refuse registration. Assignments and licences for patents and trademarks must be registered with the NIIP to be valid.

Copyright items are protected by virtue of their creation without registration or other formalities (although it is advisable to register them with the NIIP). Copyright does not apply to ideas, concepts, principles, methods, systems and processes, discoveries and facts. The NIIP will not examine the materials or verify the information in a copyright application. Copyright applies during an author's lifetime plus 70 years. An author is free to assign his or her copyrighted work.

Confidential know-how and trade secrets are protected provided that the information: (1) has an actual or potential commercial value by virtue of its being unknown to third parties; and (2) cannot be freely accessed on a legal basis. It is also necessary for the holder of such information to take measures to protect its confidentiality.

iii Enforcement

While Kazakhstan is a signatory to most major international agreements and conventions on intellectual property, enforcement of the law is not always strong. A number of state authorities protect and enforce intellectual property rights, including customs. Owners of certain intellectual property rights (e.g., trademarks) can ask the customs authorities to add their trademark to the customs register of intellectual property rights. Following such a registration, the customs authorities can suspend the import of any objects bearing that trademark for 10 business days. This period can be extended for another 10 business days; however, this is conditional on the custom authorities being provided with documentation confirming the rights holder's appeal to the court. They will also alert the rights holder of the importation so that the rights holder may challenge the import or request interim relief.

The legislation of Kazakhstan provides for civil, administrative and criminal forms of protection of intellectual property rights.

Civil protection

Civil remedies – including damages and injunctive relief – can be claimed through court proceedings for infringement of intellectual property rights. The damages calculation process is subject to the usual civil remedies limitations. Both direct losses and loss of profits can be claimed, although the process of proving loss of profits in court is fairly complicated. Pursuant to the Draft Law, instead of damage recovery a right holder may make a claim for the infringer to pay compensation of a sum ranging from 500 to 10,000 monthly calculation indexes as ruled by the court, depending on the nature of the infringement, or up to twice the value of the goods unlawfully bearing the trademark.

Administrative protection

Alternatively, infringement can constitute an administrative offence. Such offences can be pursued via an application from the rights holder to the relevant authority. The primary administrative sanction is a fine calculated according to the size of the infringing entity. In accordance with the Administrative Code of the Republic of Kazakhstan, government revenue authorities and judicial authorities are empowered to initiate administrative litigation. If the actions of the offender constitute anticompetitive conduct, the rights holder can apply to the anti-monopoly authority, which has competence to independently review the case as an administrative offence and impose an administrative penalty.

Criminal protection

Infringement of intellectual property rights can constitute a criminal offence in some circumstances, the consequences of which can be severe. For example, criminal liability for illegal use of a trademark can result in either a fine or correctional labour, or a sentence of community service, or arrest.

The elements that must be established to constitute an administrative or criminal offence are similar. Whether a particular act will qualify as a crime is dependent on the scale of the damage caused to the copyright holder or the state.