With the accession to the Madrid System for the International Registration of Marks by the Republic of Kazakhstan, foreign applicants and mark owners have been enjoying the benefits of the system, such as submitting a single international application in respect of several countries, including Kazakhstan.
No doubt, filing with the International Bureau of the World Intellectual Property Organization (WIPO) a single application in one language and paying a single fee gives applicants a number of advantages, including lower expenses and less time and paperwork compared to having to apply in different jurisdictions.
However, sometimes foreign applicants may encounter certain procedural difficulties when an international application is being reviewed by the registration authority (Kazpatent). Namely, Kazpatent may issue a provisional refusal to register their mark as a trademark.
There are many reasons why Kazpatent may issue a provisional refusal; but, in our experience, the most common of them are as follows:
1. The mark submitted for registration as a trademark lacks distinctive character;
2. The list of goods (services) in respect of which trademark protection is sought needs to be adjusted;
3. The mark is confusingly similar to a prior claim.
Of course, each provisional refusal to register a trademark should be reviewed on a case-by-case basis in order to work out a proper, effective strategy to have the refusal withdrawn. The purpose of this article, however, is to give you some general recommendations efficient in most situations.
1. Lack of Distinctive Character
One of the easiest ways to prove a distinctive character of a mark submitted for registration is to provide Kazpatent with evidence that the mark has already acquired a distinctive character as a result of a continued and intensive use of it prior to the date of submission of the application in Kazakhstan.
This can be achieved by giving a reasoned reply to the provisional refusal which
• includes proof of registration of the trademark in the applicant’s country of origin;
• specifies the amount of goods produced and sold / the scope of services provided bearing the trademark submitted for registration (unless, of course, such information has value due to its unavailability to third partiesand may not be disclosed);
• specifies the area where the goods/the services are sold;
• specifies the period during which the goods/the services specified in the application have been marked with the trademark submitted for registration;
• specifies the amount of funds spent on advertising the goods/services bearing the trademark submitted for registration;
• specifies the degree of consumer awareness of the trademark submitted for registration and of the manufacturer of the goods/the services bearing the trademark, including the findings of public opinion polls on the degree of consumer awareness of the trademark, on how consumers associate the trademark with the manufacturer etc.;
• includes information on publications about the goods bearing the trademark submitted for registration in print media;
• includes information on exhibitions of the goods bearing the trademark submitted for registration in the Republic of Kazakhstan and abroad; and
• includes other potential evidence of the trademark having been used intensively prior to the date of submission/registration of international the application.
2. Confusing Similarity to a Prior Claim
If Kazpatent claims that the trademark is confusingly similar to a prior claim, the applicant, in its reply to the refusal, should either reason against that claim or submit a letter of consent to registration of the applicant’s trademark from the owner of the other trademark.
Requirements for the letter of consent:
• The letter of consent should be issued on the trademark owner’s letterhead;
• The letter of consent should include the full name and exact address (both as in the State Register) of the consenting trademark owner;
• The letter of consent should include the full name and exact address (both as in the international application) of the party to which the consent is given;
• The letter of consent should include the owner’s signature and seal and should specify the position and last name of the signatory. The letter of consent without a seal should be notarized;
• The letter of consent should list the goods and (or) the services in respect of which the consent is given; and
• The letter of consent should specify the country in which the consent to the use and registration of the relevant trademark is given.
3. Granting of Legal Protection to a Trademark as a Whole with a Disclaimer in Respect of One of Its Elements
Actually, it is not a refusal to grant protection but a disclaimer, that is, notification that the trademark has been granted legal protection in Kazakhstan, except for the relevant element of the trademark.
• If the international applicant decides to dispute the disclaimer, the applicant may file a motivated objection to the decision of Kazpatent. We are always ready to offer you our professional assistance in overcoming the provisional refusal.
• If the applicant does not object to the disclaimer, we recommend that the applicant submit its consent within three months of the date of refusal (it should be noted, however, that there are no prescribed timeframes or official fees for such submission). In this case, Kazpatent will submit a new decision (“DECISION FINALE”) to the WIPO and the entry in the ROMARIN database in respect of Kazakhstan will change from “Total Provisional Refusal of Protection" to "Other Decision".
• If the registered owner does not react to the disclaimer, the status of the entry in the ROMARIN database will not change (remaining “Total Provisional Refusal of Protection").
Fees and delegation of authorities:
If Kazpatent issues a provisional refusal to register a trademark the registration of which is sought pursuant to an international application, then, in order to overcome the refusal, the applicant should:
• Issue the applicant’s patent attorneys of the Republic of Kazakhstan with a power of attorney to represent the applicant. The applicant’s name and address in the power of attorney should match those in the international application. If the applicant does not have a seal or is an individual, the power of attorney should be be notarized.
• Pay the official fee of US$ 60 to Kazpatent.
Timeframes for filing an objection to the provisional refusal:
An objection to the provisional refusal is filed within three months of the date of refusal (the date specified in the refusal). This timeframe may be extended at the request by the applicant by a further one to six months, subject to paying the official fee of US$ 20 for each month).
If the applicant fails to meet the filing deadline, the applicant still can file an objection within two months thereafter, subject to paying the official late fee of US$ 100.
Patent and Trademark Attorney
Patent and Trademark Attorney