In this publication we discuss the most important changes in the field of IP, which relate to trademarks, geographical indications, patents, copyright and other issues.
The amendments are provided by the Law of the Republic of Kazakhstan "On making amendments and additions to some legislative acts of the Republic of Kazakhstan on matters of improvement of legislation in the fields of intellectual property (IP) and providing state-guaranteed legal assistance" (hereinafter - the Law).
1. Opposition procedures for trademarks.
Interested parties shall have the right to file an opposition against the registration of trademark within one month from the date of publication of the respective applications. A copy of the opposition shall be sent to the applicant with the opportunity to express their position on such opposition in written form within one month.
2. Rules on registration of a trademark on the basis of acquired distinctiveness
With the entry into force of the Law, if at the date of filing an application a designation as a result of intensive use has acquired distinctiveness on the market, such a designation can be registered as a trademark.
Thus, the Law implements the provisions of Art. 6 quinquies (C) of the Paris Convention for the Protection of Industrial Property, Art. 15 of the Agreement on Trade Related Aspects of Intellectual Property Rights, the EEU Treaty on Trademarks, the Regulations to the EEU Treaty on Trademarks.
3. Duration of preliminary examination of trademarks
The period of making changes in respect of the registered trademark is reduced from one month to 10 working days and notification of the right holder is reduced from two months to 5 working days. Thus, introduction of changes into the State Register of Trademarks with notification of the right holder will take 15 working days instead of three months.
4. Confidentiality Rules.
The information on the pending application shall not be provided to the third parties, except for the cases stipulated by law. At the moment the confidentiality exists de facto, but direct provision is not set forth in the legislation.
5. Proof of the use of a trademark
The list of the use of the trademark is extended to:
- transfer of the right to trademark under the contract of assignment;
- use of the trademark in the domain name.
1. A definition of "geographical indications" (GIs).
According to the amendments, a geographical indication (GI) is a designation that identifies a product originating from the territory of a geographical object, a certain quality, reputation or other characteristics of which are significantly related to its geographical origin.
2. Opposition procedures for GIs.
Interested parties will be entitled to file an opposition to the registration of GIs, appellations of origin of goods (hereinafter AOs) within one month from the date of publication of the respective applications. A copy of the opposition will be sent to the applicant with an opportunity to express their position on such opposition in writing within one month.
3. New rules for GIs.
The requirements for an application for registration of GIs have been specified:
- an application for GI must display:
a) information relating to the connection of the characteristics of the goods with the place of their origin (production);
b) a description of the quality, reputation and (or) other characteristics of the goods, which are largely determined by their geographical origin;
c) information confirming the right to carry out activities for the production of goods, if provided by the laws of the Republic of Kazakhstan.
- at least one of the stages of production of goods registered as GI, which has a significant impact on the formation of its characteristics, must be carried out in the territory.
4. The list of unregistrable AOs and GIs.
In addition, this list also applies to the GIs. According to the amendments, the legal protection as AOs and GIs cannot be granted:
- previously registered as GIs and AOs in relation to goods of the same kind;
- identical or similar to the designation previously registered in the name of another person, if the use of such GIs and AOs could mislead consumers about goods and their manufacturer.
5. Termination of AOs and GIs.
According to the amendments, legal protection as AOs and GI cannot be granted, namely when:
- the right holder loses the right to carry out activities for the production of goods with special properties, quality, reputation and other characteristics specified in the register;
- a foreign legal entity, alien or stateless person loses the rights to these GIs and the AOs in the country of origin of goods.
- The term of formal expertise at AOs and GI is increased from 30 working days to 3 months with mandatory publication of the application on the official website of the expert organization.
Due to the signing by the Republic of Kazakhstan of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention of 09.09.1994, following supplements were made.
1. The general term of validity of a patent was increased.
The general term of validity of design patents was increased from 20 to 25 years. After expiration of the first 10 years of the patent validity it could be prolonged for another 5 years. At the same time, the total term of the patent shall not exceed twenty-five years from the date of filing the application.
2. Cases when a patent for invention is not granted.
A patent for invention is not granted for the following: a) process of human cloning and human clone; b) process of altering the genetic integrity of cells of human embryo lines; c) use of human embryos for commercial, military, and industrial purposes.
3. The range of objects for a utility model is expanding.
A utility model patent can be granted ror diagnostic methods of treatment of humans or animals if the conditions of patentability are met.
4. The validity of a patent for invention in case of partial invalidity will remain.
If a patent is partially invalidated, the documents of protection will continue to be valid instead of granting a new paten.
5. Protection of unregistered industrial designs.
Unregistered industrial designs will be protected without registration and the issuance of a patent for a period of 3 years from the date of first publication in the territory of the Republic of Kazakhstan.
Most of the changes in copyright law concern the regulation of the activities of collective management organizations.
The list of copyright exceptions extended to use of the work without the consent of the author and payment of remuneration for a reproduction for non-commercial purposes of individual articles and low-volume works lawfully published in collections, newspapers and other periodicals, office extracts from other lawfully published written works and providing their copies to students and teachers for examinations, classroom studies and independent training in quantities necessary for this purpose.
NEW RULES OF THE BOARD OF APPEALS
1. Translation of power of attorney.
If a power of attorney for a representative in cases before the Appellate Council of the Ministry of Justice of the Republic of Kazakhstan (hereinafter - the AC MJ RK) is made in a foreign language, it will be enough to provide a translation in one language only - in Russian or Kazakh. Before it was required to provide translation of power of attorney into Russian and Kazakh.
2. Extension of the term of consideration of objections.
The period of consideration of the objection by the Panel of the MJ RK may be extended not only at the request of the applicant, but also at the discretion of the Panel itself, if additional study of the arguments and circumstances of the parties is necessary.
The time limits for preliminary examination, notifications, publication of applications and issuance of decisions are reduced:
| Before | After | |
| Preliminary examination of an application for a breeding achievement | 4 months from the date of application | 1 month from the date of application |
| Notification of a grant decision | 10 working days | 5 working days |
| Notification of a refusal decision | 1 month | 5 working days |
| Publication of applications for breeding achievements | 1 month | 5 working days from the date of the decision |
| Issuance of a decision to grant a patent for a breeding achievement and notification thereof to the applicant | 10 working days | 5 working days |
| Issuance of a refusal decision for a breeding achievement and notifying the applicant thereof | 10 working days | 5 working days |