Kazakhstan: Intellectual Property in "KAZAKHSTAN +"¯

Last Updated: 17 August 2016
Article by Yuri Bolotov

After disintegration of the USSR, business is rapidly developing in the CIS, one of the key countries of which is Kazakhstan.

Kazakhstan, bordering with China on the South and with Russia on the North and being the Central Asian leader in natural resources and industry, for many companies is a gateway for business in other Central Asian Republics, such as Kyrgyzstan, Tajikistan, Turkmenistan, and Uzbekistan.

Kazakhstan roughly equal in size to five states of France is a valuable potential key player in world oil and gas markets, it is a major world source of coal, copper, iron ore, chromium, magnesium, lead, zinc, silver, and uranium and has notable reserves of gold, molybdenum, titanium, and others.

In various cases intellectual property ("IP") is one of the most important areas for initial entering the market of the region, and registration of trademarks and patents and other IP rights is a big step towards the market and wise care of company' assets even without a physical presence of the company. Furthermore registration of trademarks and patents is a must in these countries if your company cares about its trade name, image and IP value of its assets, as without such a registration no protection can be gained or IP rights enforced, which is often necessary in this region.

Kazakhstan is a member of Paris Convention, Madrid Agreement, PCT, and others. It has developed a system of IP rights protection, including the Patent Law, Law on Trademarks; Administrative Code and Criminal Code provide administrative and criminal liability for infringement of the IP rights.

Kazakhstan is currently facing its domestic market abound with counterfeit goods, thus intellectual property rights require effective protection. Law enforcement bodies frequently encounter relatively good copies of the goods containing IP belonging to others, however rough fakes also exist. In this case not only IP are violated, but also the rights of consumers who purchased goods of poor quality, which may endanger their health or even life. Other frequent violations in Kazakhstan are piracy of trademarks and copyrights.

While Kazakhstan legislation provides broad protection to IP, particular areas remain underdeveloped and enforcement generally remains a problem.

IP, under Kazakhstan legislation, is (i) an exclusive right of an individual/company to results of intellectual creative activities and (ii) means of individualization of a company, production of an individual/company, works performed or services rendered thereby (trade name, trademark, service mark, and appellation of goods origin).

An exclusive right to the result of intellectual property activity or means of individualization is a property right of its owner to use the IP object by all means and at his/her discretion. Other persons would be allowed to use exclusive rights objects only subject to the owner's consent.

Our practice in Kazakhstan and other CIS countries has shown that western companies pay very little attention to the preventive protection of their rights on the new markets, ignoring to register inventions, and more often trademarks, well in advance.

In order to protect a trademark or patent from the infringements, first of all the owner of such IP objects needs to ensure their appropriate registration. Absence of the registration can easily permit violation of the IP right.

Foreign individuals or companies may apply for registration of IP objects only through a registered patent attorney (patent agent).

Owner's consent is granted by way of either a license agreement or an assignment agreement. Pursuant to a license agreement an owner of an exclusive right to results of intellectual creative activity or means of individualization (licensor) grants to the other party (licensee) a right to temporarily use the relevant object of intellectual property.

The Intellectual Property Rights Committee of the Ministry of Justice of the Republic of Kazakhstan (the "IPR Committee" or "Kazpatent") is an authorized state agency for intellectual property matters. The IPR Committee is responsible for registration of IP objects and implementation of the state policy in relation to protection of copyrights, inventions, utility models, industrial designs and other intellectual property items; issuing copyright, patent and trademarks certificates, and recognition of marks as well-known.

National Institute of Intellectual Property ("NIIP") accepts applications for issue of patents for inventions, utility models, industrial designs, as well as for registration of trademarks and carries out their expertise, maintains State IP Registers and arranges official publications.

In Kazakhstan and some other CIS countries IP rights also enjoy protection of customs authorities, which maintain a register of goods containing IP objects. Such goods are included into such register upon applications of IP owners. Given that the customs authorities may only suspend the release of goods contained in the register and that the procedure of inclusion of the goods into the register is complicated, we note that protection of IP rights by the customs authorities is considered somewhat ineffective. However, in several cases we managed to prevent importation of counterfeit products in Kazakhstan.

The term "violation of intellectual property rights" was clarified and is now defined as illegal use of copyrights, inventions, utility models, industrial designs, trademarks or appellations of origin, appropriation of copyright, etc.

Violators of IP rights are subject to civil, administrative or criminal liability, depending on gravity and consequences of violation.

Particularly, criminal liability is incurred for illegal use of trademark with the severest sanction being correctional labor for up to two years. Further, illegal use of inventions, utility models, industrial designs, selection achievements or topologies of integrated circuits may incur punishment with up to five-year imprisonment with confiscation of property.

Similar legislation have other Central Asian Republics of the CIS.

Trademarks

When entering the CIS market and registering trademarks the companies need to take into account the following peculiarities.

All of the CIS countries are rather "first to file", than "first to use" countries. It means that even in the case of a widely known but unregistered mark, the mark (i) may be used by any person, and, what's more, (ii) be registered by any person in his name. "Unregistered" means "unprotected". We strongly recommend registering marks in advance in any CIS country where the said marks are expected to be used or where there is a possibility of using it by any third person. It should be kept in mind that sometimes the registration procedure may last as long as two years.

It should be noted that unlike in the USA and some other countries, which are a party to the Madrid Protocol, Kazakhstan and Tajikistan are parties only to the Madrid Agreement, and accordingly, American companies may only directly apply for registration of their trademarks in Kazakhstan's and Tajikistan's Patent Offices and only through the Kazakh and Tajik patent attorneys. Normally such registration of trademarks takes about 18 months.

Once registered the trademark needs to be used primarily on goods and in rendering services. If a registered trademark remains unused for more than three years its registration can be cancelled, while the trademark can be taken by any interested person.

Well-Known Marks

The other way of protecting marks in the CIS is to have them recognized as famous and well-known. This strengthens protection and increases the value of marks, requires no their prior registration, as trademarks but is more time consuming and costly.

List of well-known trademarks in Kazakhstan includes such trademarks as Coca-Cola, Fanta, Sprite and Contour Bottle belonging to the Coca-Cola Company, and several other brands of non-US companies.

Trademark's recognition as well-known in Kazakhstan grants the following advantages:

  1. well-known mark has the same level of protection as a regular registered trademark, but for the full range of goods and services, irrespectively of its initial registration or use,
  2. it is unnecessary to register a trademark before it's recognition as well-known,
  3. it is possible to prevent or terminate registration of a trademark that is identical or confusingly similar to a well-known mark with respect to any goods or services within five years of its registration,
  4. the owner of a well-known mark has the right to take actions against infringers, including Internet infringers, with regard to any goods and services, and
  5. in case of accounting trademarks in the balance sheet or its contribution into the charter capital, a well-known mark has significantly bigger value, which also allows its higher depreciation rate.

Well-known and famous U.S. trademarks are not automatically recognized as such in Kazakhstan and other CIS Republics and formal recognition is required.

As a rule the procedure of mark's recognition as well-known takes from nine to twelve months. In order to recognize a mark as well-known in Kazakhstan it is necessary to file an application with the IPR Committee. Actual information confirming that the mark is well-known must contain consumer poll results, which should be conducted at least in six cities of Kazakhstan and contain responses of not less than 3,000 people. Additional information confirming the mark's intensive use, volumes of sales of goods bearing the mark and other details may also serve as a confirmation of the fact that the mark is well-known.

The rights to a trademark or a well-know mark may be transferred to any person under an assignment deed or license both to be mandatory registered with the Patent Office.

Patents

According to the Kazakhstan legislation, two types of patents for invention are available:

(i) so-called "innovative" patent which is issued for the maximal five years term from the application date and issued after formal examination of the application materials and examination of the invention for its local (Kazakhstan) novelty, and

(ii) patent valid for 20 years from the date of application for the patent (here – "Full Patent").

A patent application undergoes a two-stage examination. The formal examination shall commence in two months of the application date. If as a result of the formal examination it is established that the application refers to items protectable as invention, and documents comply with the established requirements, the positive decision of the formal examination shall be adopted. The formal examination normally takes four to five months (provided there are no requests from the examiner to the applicant).

Upon request of the applicant which is submitted after issue of the positive decision after formal examination, but not later than three months from the date of issue of the positive decision, Kazpatent shall conduct a substantive examination of the application. If the applicant fails to present this request within this period without a good reason, the patent application will be cancelled.

As a rule, at each examination phase (formal examination and substantive examination) the applicant may receive one or two requests, and it is a rare case when a third or fourth request is sent to the applicant.

In the event of a positive decision, a decision to grant a Full Patent is issued. Within six months of adoption of this decision, provided that the state duty is paid for issuance of the Full Patent, Kazpatent publishes an announcement of the issuance of the Full Patent.

The 20 years term of some Full Patents, subject to the permission of an authorized body (e.g. pharmaceutical patent), may be extended by Kazpatent on the request of the owner of the said Full Patent, for a period not exceeding five years.

The same procedure is applied for industrial designs, which are patented for 10 years with a possibility to extend the term for another five years.

Copyright

In most countries, lawmakers' approach to creating copyright and the exclusive right to related rights objects is the same. In Kazakhstan as well, copyright and related rights arise from the moment of their creation. Thus, copyright and related rights need no registration.

It is a common opinion that the only purpose of having copyright and related rights be registered is to confirm that, at the time of registration, the object in question has been in existence – this may be used as a proof, if and when a dispute arises.

In most countries, based on the above principle, such objects are not registered with state agencies. Instead, copyright and related rights are registered with institutions for collective management of property rights of authors and related rights holders, as is the case, for example, in Russia.

In Kazakhstan the IPR Committee registers the copyright and related rights, and issues a certificate of registration and record the object in the State Register of works protected by the copyright and related rights legislation.

Normally, registration takes a month. The IPR Committee neither examines the materials filed by an applicant nor verifies the information stated in the application. Accordingly, data stated in the certificate are based on information supplied by the applicant, who shall be liable for the compliance with the rights of third parties.

Concurrently, the certificate of registration of a copyright or related rights object confirms that:

  • The registered and deposited object is indeed a copyright or related rights object.
  • The IPR Committee has received it on the date shown in the certificate (an authorized state agency establishes a kind of priority that is a date no later which the object was created).
  • The object stated in the certificate is stored at the IPR Committee and can be compared with an opposed object.
  • The individuals stated in the certificate have claimed a right to the registered and deposited copyright or related rights object.

Unless the contrary is proven, the certificate helps one fight pirates because the certificate serves as proof of existence of the said right and could be submitted to state agencies or court.

Also,

  • Copyright or related rights objects can be used as collateral for the initial and subsequent public offering of securities.
  • Property rights to copyright or related rights objects can be used as contribution to the charter capital of a company as intangible assets that make it possible to considerably increase the size of the charter capital. Also, copyright or related rights objects can be put in the books of a company with subsequent depreciation.
  • Intellectual property objects, including copyright or related rights objects, can be used as pledge for loans.

When IP is used as collateral, contribution to the charter capital of a company, for accounting it in the books of a company, or as pledge, the IP objects should be assessed. Registration of copyright or related rights objects is important for their assessment, as it makes it possible to individualize the object assessed and establish its completeness.

Selection Achievements (Breeders' Rights)

Since the Kazakhstan law "On Protection of Selective Breeding Achievements" of 1999, the system of protection of such achievements, + including plant varieties, has not been noticeably amended.

We can say that now new plant varieties are adequately protected in Kazakhstan. The scope of a patent holder's rights corresponds to that provided for by the International Convention on the Protection of New Varieties of Plants (the "Convention") for the breeder. Given that the breeder and patent holder may be different, the selective breeding law provides a right for the plant variety breeder to be called as such arising out of his inalienable personal non-property right. The breeder is entitled to compensation from the patent holder for use of his selective breeding products throughout the life of the patent. The selective breeding law provides for the minimum size of such compensation.

The Kazakhstan legislation and the Convention provide for the temporary legal protection of a new plant variety. The duration of protection complies with the Convention's provisions, and a patent's validity can be extended at the patent holder's request. Foreign entities and individuals currently enjoy the same rights as Kazakhstan legal entities and individuals.

In Kazakhstan, the IPR Committee and the State Commission for Testing of New Varieties of Agricultural Plants "Commission" are in charge of plant variety protection. The Commission examines new plant varieties as to substance, and based on its opinion, the IPR Committee grants a patent. The priority of application filed with the NIIP under the IPR Committee can be established as the date of filing the original application in a country member of the Convention.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.