Registration and useOwnership of marks
Who may apply for registration?
Any legal or natural person engaged in business activity may apply for trademark registration. Foreign applicants may apply for trademark registration in Kyrgyzstan through a patent attorney admitted to handle registration and prosecution of trademarks before the Kyrgyzpatent.Scope of trademark
What may and may not be protected and registered as a trademark?
Any signs or combinations that can distinguish goods and services of one person from similar goods and services of another person may be registered as trademarks, including verbal, visual, three-dimensional and other designations. A trademark may be registered in any colour or colour combination. Non-traditional marks that are visually indistinguishable, as well as sound and olfactory marks, cannot be protected and registered as a trademark. Kyrgyzstan is not a common law jurisdiction. The Kyrgyz trademark system is based on the first-to-file trademark legal concept.
The Trademark Law allows registration of collective trademarks, which are used for marking goods, developed, produced or sold by several companies that are legally independent yet economically linked and that are voluntarily united to carry out joint activities resulting in common quality or other general characteristics of goods to be maintained on a continuous basis. The Trademark Law does not extend to a certification mark.
The Trademark Law provides for absolute and other (relative) grounds for refusal in registration of a trademark. Absolute grounds include, inter alia:
- signs and designations having no distinctive ability;
- state emblems, flags, official names of states, abbreviations or full names of international organisations, official control, guarantees and hallmarks, awards;
- designations pointing to the type, quality, properties, purpose and value of goods;
- designations that are deceptive or capable of misleading a consumer in respect of the goods or services or the manufacturer; and
- designations that are contrary to the public interest, principles of humanity and morality, etc.
Examples of relative grounds for refusal in the registration of a trademark are as follows:
- designations identical or similar to the extent they are likely to cause confusion with a trademark registered or filed for registration in Kyrgyzstan in the name of another entity with regard to homogeneous goods holding earlier priority;
- designations that reproduce names of works of science, literature and the arts famous in Kyrgyzstan, characters therefrom or citations, works of art or parts thereof without consent of the copyright owner or his or her successor; and
- designations reproducing industrial designs the right to which are owned by other entities in Kyrgyzstan, if the industrial design holds earlier priority compared with the designation filed for trademark registration.
The Trademark Law does not stipulate a possibility of a formal preliminary search to identify in advance any identical or similar trademarks likely to cause confusion filed and registered with the Kyrgyzpatent. The absence of such a possibility can cause difficulties for applicants in the registration of their trademarks.Unregistered trademarks
Can trademark rights be established without registration?
Trademark rights cannot be established without registration.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
The Kyrgyz trademark system is based on the first-to-file trademark legal concept. The scope of validity of trademark rights is limited to:
- list of goods specified in the trademark registration certificate;
- territory of the country of registration; and
- the term for which the trademark has been registered.
Under the Trademark Law, a trademark, protected in Kyrgyzstan territory based on the registration thereof or a designation used as a trademark with no legal protection (not registered) in the territory of Kyrgyzstan, is recognised as well known (famous) if such trademark or designation as a result of intensive use has as of the date of application become well known (famous) in Kyrgyzstan among the relevant consumers of goods of an applicant. It is unlikely that a foreign trademark is afforded protection as well known (famous) if it is not used in Kyrgyzstan.
The trademark may be recognised as well known (famous) by a decision of the Kyrgyzpatent Appeal Board if it complies with the following criteria:
- the trademark must be recognisable by actual or potential Kyrgyz consumers of the goods marked by the trademark or by entities, participating in distribution channels of such goods or by business circles, whose activities relate to such types of goods, provided that the perception of the quality level of such goods must be related to the trademark in the country or in the world's market;
- the trademark must have a high distinctive capability originally or acquired owing to intensive use thereof;
- the trademark must be widely used and advertised in the territory of Kyrgyzstan or worldwide; and
- the trademark must have commercial value owing to long and intensive use in Kyrgyzstan or worldwide.
To prove the compliance with the aforementioned criteria an applicant may submit, inter alia, documents confirming promotion and advertising of the trademark, financial reports reflecting advertising costs, information on the value of trademark, results of survey among the relevant groups of consumers, etc.
Well-known (famous) trademarks are protected for an indefinite time.The benefits of registration
What are the benefits of registration?
Registration of trademark gives the following advantages:
- exclusive right to use trademark and a possibility to prohibit third parties from using it;
- a third party may not file claims or prohibit the use of the valid trademark;
- the right to prevent use of identical or confusingly similar trademarks on homogeneous goods;
- use of judicial remedies against an infringer, including arrest, confiscation and destruction; and
- border enforcement measures to prevent import of counterfeit goods.
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
Under the Trademark Law, the following documents must be filed with the Kyrgyzpatent for trademark registration purposes:
- applications indicating the applicant's name and place of residence;
- the mark claimed;
- a description of the claimed mark;
- the list of goods and services (International Classification of Goods and Services (Nice Classification)) for which the trademark registration is being requested;
- the document confirming payment of the fee in the established amount; and
- power of attorney (a foreign entity or person must carry out procedures related to the registration of trademarks through Kyrgyz patent attorneys).
Apart from the description of the claimed mark, the image of the mark must be submitted in print form or photographs; the general size requirement of the mark's representation is 5cm x 5cm; however, this requirement may vary depending on the form of the mark.
The Kyrgyzpatent undertakes efforts to implement electronic filing of trademark applications; however, no such service is yet available.
Kyrgyz laws do not stipulate for an official trademark search prior to filing an application for trademark registration (see question 5).Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
Generally, the registration process can take at least from 15 to 18 months from the date of submission of all relevant documents to the Kyrgyzpatent. The official fee for registration of a trademark applied for one class of goods or services amounts to 35,000 Kyrgyz som. Exclusive trademark right arises from the date of entry of the trademark into the State Register of Trademarks.
The time and cost of registration of a trademark may be higher in the case of experts’ actions (inquiries, provisional refusals etc), as well as the actions of third parties (eg, objections against a filed application).
The documents and information required for registration are as follows:
- the application;
- a power of attorney (if application is filed through a patent attorney);
- trademark and a description of the trademark;
- a document confirming payment of the official fee; and
- the designation of goods and services according to the Nice Classification.
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
The Nice Classification system is used in Kyrgyzstan. Any goods and services provided in this classification may be claimed. Multi-class applications are also available. The official fee for each additional class when filing the application is 7,500 Kyrgyz som.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The Kyrgyzpatent follows a two-stage examination procedure: a preliminary examination and an examination on the merits. Applications are examined for conflicts with other trademarks with consideration of the absolute and relative grounds specified in question 5, including potential conflicts with other trademarks. Registration of a designation likely to cause confusion with a trademark from the homogeneous group of goods is allowed only upon submission of a letter of consent issued by a trademark owner for registration of the said designation. Applicants may respond to rejections by the Kyrgyzpatent by appealing to the appeal board of the Kyrgyzpatent.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
The use of a trademark does not have to be claimed before registration is granted. Proof of use does not have to be submitted.
Applicants, including foreign applicants, may use conventional priority, which is established pursuant to the date of the first application in a member state of the Paris Convention if the application is filed with the Kyrgyzpatent within six months of the specified date. The Trademark Law also provides for the possibility of ‘exhibit priority’, which is established pursuant to the first date of exhibition at an official or officially recognised international fair organised in the territory of one of the member states of the Paris Convention, if the application for trademark registration is filed with the Kyrgyzpatent during six months from the specified date.
In the event that a trademark is not used for any three consecutive years after its registration, any concerned third party may challenge the registration of a trademark for non-use, in which case the registration of such a trademark shall be subject to early termination upon the decision of the court.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
A trademark owner may (but is not obliged to) use a warning marking in the form of the Latin capital letter R or ® or 'registered trademark', all indicating that the designation is a trademark registered in Kyrgyzstan. A warning marking is of an informational nature and is not a mandatory requirement, therefore, absence of a warning marking will not entail any legal (material or procedural) or regulatory consequences. However, use of the warning marking may contribute to trademark protection from counterfeit goods produced by third parties since an infringer may not claim that he or she did not know whether the trademark had been registered and whether it had an owner.
Illegal use of warning markings with respect to unregistered trademarks in Kyrgyzstan entails criminal liability.Appealing a denied application
Is there an appeal process if the application is denied?
If the application is denied, an appeal can be filed with the Appeal Board within three months from the date of receiving the refusal. The Appeal Board shall consider the appeal within four months from the date of receiving the appeal. The decision of the Appeal Board may be further appealed at the court within six months from the date of receiving the decision of the Appeal Board (see question 27).Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
The Trademark Law does not provide for publishing trademark registration applications. Therefore, a third party may not oppose an application prior to registration. However, a third party may oppose registration or seek cancellation of a trademark or service mark after registration by filing an opposition or objection with the Appeal Board. Registration of a trademark can be opposed by any concerned party within its term of validity on absolute grounds and within five years of the date of publication of trademark registration information in the official bulletin on relative grounds (see question 5). The opposition or objection shall be considered by the Appeal Board within four months from the date of its receipt. The decision of the Appeal Board can be appealed at the court within six months from the date of receiving the decision of the Appeal Board.
A brand owner whose trademark is not registered in Kyrgyzstan may not oppose a bad-faith application, since pursuant to the Trademark Law only registered trademarks are protected. At the same time, a bad-faith issue can be raised under the unfair competition legislation of Kyrgyzstan. However, there have been no precedents of challenges raised on unfair competition grounds.
The approximate costs associated with a third-party opposition or cancellation proceeding after registration are 70,000 Kyrgyz som and above, excluding the 40,000 Kyrgyz som official fee for filing the opposition or cancellation. The indicated costs depend on the complexity of the matter.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
Registration of a trademark lasts for 10 years from the date of filing an application with the Kyrgyzpatent. To maintain the registration, a trademark holder, within the last year of registration, must file an application for renewal with the Kyrgyzpatent. The trademark is renewed every 10 years. No proof of trademark use is required under the Trademark Law.Surrender
What is the procedure for surrendering a trademark registration?
A trademark owner may at any time file an application with Kyrgyzpatent requesting to terminate the trademark registration. There is no strict form of such application. Kyrgyzpatent, upon review of the application, shall enter the relevant data on trademark termination into the State Register of Trademarks and publish such information in its official bulletin.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Kyrgyz laws do not clearly regulate the issue of protection of trademark under other IP rights, such as copyright or designs.
Pursuant to the Trademark Law, the following marks may not be registered as trademarks:
- marks reproducing names of famous works of science, literature and art in Kyrgyzstan, characters therefrom or citations, works of arts or fragments thereof without consent of a copyright holder or his or her successor;
- designs owned in Kyrgyzstan by other persons or entities, if such design has earlier priority comparing to the trademark filed for registration.
The above means that registration of an IP object in various capacities is not prohibited with respect to one and the same rightholder (provided that the registration requirements are complied with).
It is important to note that in cases when the trademark is also the copyright object (name of a work, character of a work, citation from a work or an excerpt therefrom), such object protected under copyright will be excluded from the scope of protection as copyrightable object if registered as trademark. However, it may be protected under copyright law in any other cases.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Pursuant to the Trademark Law use of trademarks means, inter alia, use thereof as a domain name. In addition, unauthorised use of a mark identical or confusingly similar to the trademark as a domain name shall be deemed as infringement of trademark owner's right.