EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
Infringement of a registered trademark entails civil and criminal liability. The anti-monopoly body considers the administrative matters involving unfair competition. Kyrgyz law provides for criminal liability for illegal use of trademark in the form of:
- a fine ranging between 220,000 Kyrgyz som to 260,000 Kyrgyz som; or
- imprisonment for two to six months with a fine of 60,000 Kyrgyz som to 100,000 Kyrgyz som.
There are no specialised courts or other tribunals in Kyrgyzstan dealing exclusively with trademark matters.Procedural format and timing
What is the format of the infringement proceeding?
Cases in the area of intellectual property are examined by one judge. Court proceedings are held in the form of hearings. Any evidence in the form of documents, reports of witnesses, expert evidences, video and audio records, etc, can be submitted to the court. Court proceedings typically take around one month, provided that no expert examination is appointed. All parties are allowed to participate in the proceedings.
Kyrgyz laws provide for a criminal enforcement mechanism. In particular, unauthorised use of a trademark shall entail criminal liability should heavy damages be caused. Heavy damages shall be deemed as such if the damage caused is of an amount exceeding 500 times the index rate stipulated by Kyrgyz laws at the time of committing a crime (50,000 Kyrgyz som). A criminal case is initiated and investigated by an investigator of the financial police. Investigation of such cases must be completed no later than one month from the date of the initiation of the criminal case. Upon completion of the investigation the case shall be sent to court. A judge shall consider the case on its merits no later than one month from the date of receipt of the case by the court. During the investigation the investigator undertakes investigative actions (interrogation, visiting premises, examination of goods, documents and other material objects, search, seizure and arrest, etc). During the criminal proceedings the judge listens to the testimonies of the defendant and other parties of the case, witnesses, the opinion of experts, examinations of material evidence, declared protocols and other documents, and undertakes other judicial actions on examination of the evidence. The judgment of the court must be based only on the evidence that has been examined during the court proceedings. In practice, application of the criminal enforcement mechanism is virtually non-existent.Burden of proof
What is the burden of proof to establish infringement or dilution?
The parties shall bear the burden of proof in establishing infringement of trademark by proving the facts to which each party refers as the basis of it claims and objections. Dilution is not considered to be a cause of action in Kyrgyzstan.Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
The trademark holder may always seek a remedy for an alleged trademark violation, while a licensee may seek a remedy only when it is provided under the licence agreement. Both the trademark holder and the licensee are entitled to bring a criminal complaint.Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
As registration and protection of a trademark are limited by the territory of Kyrgyzstan, any foreign activities may serve only as auxiliary evidence in trademark infringement proceedings.
A trademark can be protected in Kyrgyzstan through registration thereof with the Kyrgyz customs authorities. Note that pursuant to the Kyrgyz legislation, customs authorities are responsible for the registration of intellectual property objects (including trademarks), including maintaining the Customs Registry. Such border enforcement measures may help in stopping the importation of counterfeit goods in Kyrgyzstan.
Trademark is registered in the Customs Registry for the period of two years. This term can be prolonged for the next two-year period.
The customs authorities may suspend the release of allegedly infringing goods into free circulation for a term of 10 days with further prolongation for not more than 10 days (upon the relevant application of the rightholder). The customs authorities must inform the infringing importer and the rightholder about suspension of infringing of goods, reasons and terms of suspension not later than one business day. Upon expiry of the suspension term the allegedly infringing goods will be released if the rightholder fails to submit a court or law enforcement body's order on seizure, arrest or goods' confiscation.
Starting from 12 August 2017, the principle of regional exhaustion of trademarks rights applies in Kyrgyzstan owing to the country's accession to the Eurasian Economic Union consisting of Armenia, Belarus, Kazakhstan and Russia. Foreign trademark holders are recommended to take this issue into consideration when planning trademarks protection strategies, particularly with respect to parallel importation.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
A party experiencing difficulty in obtaining important evidence may turn to the court with a request to issue a judicial request to the other party or third parties to produce the evidence sought. The judge has the power of discretion as to the issuance of such a judicial request. With regard to obtaining evidence from parties outside Kyrgyzstan, the court may, within the framework of international agreements on rendering legal assistance (eg, international agreements such as among Commonwealth of Independent State countries) enforce such judicial requests. Any such actions intended for obtaining evidence are time-consuming.Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
The approximate time frame for trademark infringement action is as follows:
- about two months at the trial level;
- about two months at the appeal level; and
- about two months at the cassation appeal (Supreme Court) level.
Kyrgyz laws do not stipulate a preliminary injunction level. The issue of injunctive relief is discussed in question 37.Limitation period
What is the limitation period for filing an infringement action?
Kyrgyz laws set forth general limitation period of three years. The commencement of the limitation period starts from the day when a person or entity has learned or should have learned about infringement of their rights.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The approximate costs of litigation for the first instance and further stages of appeal are about 350,000 Kyrgyz som and above. The indicated litigation costs depend on the complexity of the matter.
Pursuant to Kyrgyz law, a successful plaintiff shall be entitled to all legal expenses should a court grant a judgment in favour of the plaintiff in its entirety. However, if the court grants the judgment in part, then the legal costs shall be shared proportionally between the parties.Appeals
What avenues of appeal are available?
A judgment of the court of first instance can be appealed by filing an appeal with the second-instance court and cassation petition with the Supreme Court.Defences
What defences are available to a charge of infringement or dilution, or any related action?
The defendant has a right to object against the charge of infringement, adducing its evidence objecting to the claim, filing a motion for the appointment of expert examiners, interrogation of witnesses, experts and undertaking any other actions defending his or her position. Thus, the defendant (the participant of the legal proceedings) enjoys the same rights as the plaintiff.Remedies
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
The major remedies are stipulated in a civil action, including, inter alia:
- compensation for losses incurred owing to the infringement;
- cessation of the infringement;
- seizure and destruction of the infringing goods; and
- publication of a court’s decision to restore the business reputation of the legitimate trademark holder.
Monetary relief is available in criminal and civil court proceedings. Usually the courts award all costs against the losing party.
Kyrgyz laws do not distinguish between preliminary and permanent injunctions. The injunctive relief is available at any stage of court proceedings if failure to undertake such measures may impede or prevent enforcement of the court’s decision. Such an injunction may include an injunction against the defendant to commit specific actions: against other parties to transfer the property, seizure of property or funds etc.ADR
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
ADR techniques, such as cease-and-desist letters and pretrial negotiations, are available, but not commonly used. The major benefits of ADR are time and cost savings.