On 03.07.2018 came into force the Law of the Republic of Kazakhstan "On Amendments and Additions to Certain Legislative Acts of the Republic of Kazakhstan on Improving Legislation in the Sphere of Intellectual Property" dated June 20, 2018 (hereinafter the "Law").
These changes not only make adjustments to legislation on intellectual property (hereinafter "IP"), but fundamentally change the existing system. Thus, the Law amends 12 Codes and laws of the Republic of Kazakhstan ("RK") aimed at improving IP legislation, simplifying the procedure for registration of IP objects, removing legal gaps, as well as the exclusion of norms that create administrative barriers in the field of intellectual property protection.
In general, the Law provides for changes in relation to almost all objects of intellectual property. In this publication we will examine the regulation of trademarks.
One of the historical changes is the introduction of one-level system of registration instead of the existing two-level system of registration of intellectual property objects, which included the RSE "National Institute of Intellectual Property" of the Ministry of Justice of the Republic of Kazakhstan (hereinafter referred to as "the Office") and the Ministry of Justice of the Republic of Kazakhstan (hereinafter "MJ RK"). Only the regulatory functions remain for MJ RK, except for the well-known trademarks.
From the basic innovations of the Law, in our opinion, it is possible to highlight the following:
- - The regional principle of exhaustion of rights. This principle was established in the framework of supranational legislation in the field of trademarks and is now directly enshrined in the national legislation of the Republic of Kazakhstan.
- - Reduction of terms. The formal examination of the application for a trademark is reduced to 10 working days instead of 1 month, and the substantive examination - up to 7 months instead of 9 months from the date of filing an application for registration of a trademark, etc.
- - Certificate to the trademark. The right to a trademark is now certified by a certificate, before making these changes, the exclusive right was confirmed only by an extract from the State Register of Trademarks of the Republic of Kazakhstan.
- - Publication of applications. At the moment, only registered trademarks are publicly available in the RK through online resources. Now, according to the Law, from the moment of admission to the Office, applications will also be available on the website of the Office.
- - Challenging registration only judicially. The law provides only a judicial procedure for challenging registration for a trademark in connection with its non-use within 3 years preceding the date of submission of an objection. Earlier, in order to challenge registration on this basis, it was necessary to apply to the Appeal Board at the MJ RK.
- - The law defines the concept of «counterfeit goods». According to the Law, "the goods and their packaging, on which the trademark or designations similar to them to a degree of confusion are placed without the consent of the owner, are recognized as counterfeit". Previously, there was no such definition in IP law.
- - Indemnification or compensation. According to the Law, the right holder, in the case of a proven fact of the offense, has the right to demand compensation from the violator in the amount determined by the court instead of compensation for losses, based on the nature of the violation, the market value of the original goods.
- - The form of the letter of consent is defined. Previously, the legislation did not provide for requirements for the form of letter of consent, which in practice caused many procedural difficulties.
- - Transfer of rights to trademarks and license. The requirements were simplified, and the terms of registration of the assignment contracts for rights and licenses with respect to trademarks were shortened.
- - The moment of arising of the right to a trademark was determined. According to the Law, the exclusive right to a trademark arises from the date of registration of a trademark in the State Register of Trademarks.