ARTICLE
5 September 2023

The Concept And Registration Of A Trademark In The Republic Of Kazakhstan

Trademark registration is an important procedure for protecting intellectual property and ensuring the legal protection of a brand or product on the market.
Kazakhstan Intellectual Property

Trademark registration is an important procedure for protecting intellectual property and ensuring the legal protection of a brand or product on the market. In this article we will consider the concept, types of trademark and the process of its registration in Kazakhstan.

The concept of a trademark

A trademark in the Republic of Kazakhstan is regulated by the Law of the Republic of Kazakhstan "On Trademarks, Service Marks, Geographical Indications and Appellations of Origin of Goods", the Civil Code of the Republic of Kazakhstan and other regulatory legal acts.

A trademark is a designation registered in accordance with the law and serving to distinguish goods (services) of some legal entities or individuals from similar goods (services) of other legal entities or individuals.

The main purpose of a trademark is to distinguish the goods or services of one enterprise from the goods or services of other companies on the market. A trademark helps consumers and buyers to identify a specific brand and associate it with certain characteristics, quality or reputation.

Types of trademarks

Various types of trademarks can be registered in the Republic of Kazakhstan, including:

  • Pictorial signs: these are designations that include graphic elements, logos, images, emblems and other visual symbols.
  • Verbal signs: these are designations consisting of individual words or phrases that can serve to identify goods or services.
  • Letter signs: these are designations consisting of one or more letters or combinations thereof that can distinguish the goods or services of one enterprise from others.
  • Digital signs: these are symbols consisting of numbers or combinations thereof that can be used to identify goods or services.
  • Three-dimensional signs: these are designations having a three-dimensional shape or three-dimensional elements that can be used to distinguish goods or services.
  • Other designations or combinations thereof: this includes all other designations that do not fall under the above categories, but are able to distinguish the goods or services of one enterprise from others.

All these types of trademarks can serve to identify and differentiate the goods or services of one company from others in the market, creating recognition and uniqueness. Registration of a trademark allows the owner to secure his rights and protect himself from illegal use or forgery by others.

Restrictions on trademark registration

There are certain restrictions and prohibitions in the process of trademark registration in the Republic of Kazakhstan. These restrictions include designations that do not have a distinctive ability or consist only of the following elements:

  • universal use to designate a certain type of goods or services.
  • are generally accepted symbols and terms.
  • indicate the characteristics of the goods, such as their type, quality, quantity, properties, purpose, value, place and time of production or sale.
  • international non-patent names of medicines.
  • have a direct descriptive relationship with the goods or services for which they are used.

However, these designations can be used as part of a trademark if they do not occupy a dominant position in it, that is, they are not its main element.

Registration of reproducing designations is prohibited:

  • State coats of arms, flags and emblems.
  • Abbreviated or full names of international organizations and their coats of arms, flags and emblems.
  • Official control, warranty and assay stamps, seals.
  • Olympic symbols, awards and other insignia.

Designations similar to the above to such an extent that they may cause confusion.

However, such designations may be used as unprotected elements of a trademark if they do not constitute its only component and if there is consent of the relevant competent authority or their owner for their use.

Also, the trademark is not allowed to be registered in the case of:

  • Are false or capable of misleading about the goods, services or their manufacturer, the person providing the services, as well as geographical objects capable of misleading about the place of production of the goods.
  • Formally indicate the true place of production of the goods, but create an erroneous idea of the origin of the goods from another territory.
  • Contain names of geographical objects identifying mineral waters, wines or spirits to designate such goods that do not originate from the relevant place, as well as if a translation is used or the designation is accompanied by expressions of "type", "type", "in style" or other similar.
  • Contradict the public interests, principles of humanity and morality in their content.

Also, the list of other grounds for refusal of registration includes designations that are identical or similar to the extent of their confusion with the following categories:

  • designations that coincide with already registered trademarks in Kazakhstan or are protected in accordance with international treaties and relate to similar goods or services, or coincide with identical trademarks of the same copyright holder in relation to the same goods or services.
  • designations that are generally recognized in Kazakhstan in relation to any goods and services.
  • designations that were submitted for registration with an earlier priority in the name of another person in respect of similar goods or services (with the exception of withdrawn and discontinued), or coincide with identical designations of the same person in respect of the same goods or services.
  • names of the places of origin of goods that are protected in Kazakhstan in respect of any goods, except in cases when they can be included as an unprotected element of a trademark registered in the name of the owner of the right to use this name of the place of origin of goods, provided that the trademark registration is carried out for the same goods for which the name is registered the place of origin of the goods.

Registration of a designation as a trademark in respect of similar goods or services, which is confusingly similar to any of the mentioned trademarks, is permitted only with the written consent of the trademark owner. If the copyright holder is a legal entity, the consent must be submitted on an official letterhead

In this regard, it is important to comply with these rules and restrictions when registering trademarks in the Republic of Kazakhstan in order to ensure their legal and effective protection on the market.

Filing an application for trademark registration

The application for registration is submitted by one applicant. It can be either an individual or a legal entity. It is also possible to submit an application by a representative using a power of attorney.

To apply for trademark registration, the following elements must be included:

  1. Request for examination of the designation, including information about the applicant, his location or residence.
  2. The claimed designation to be used as a trademark.
  3. The list of goods and/or services corresponding to the International Classification of Goods and Services.

The following documents must be attached to the application:

  1. A copy of the document confirming payment for the examination.
  2. A copy of the power of attorney, if the application is submitted through a representative.
  3. The Charter of a collective trademark (if the application relates to a collective trademark), including the name of the organization that is authorized to register this mark, the purpose of registration, the list of entities entitled to use the mark, the list and uniform qualities or characteristics of goods and services designated by the mark, terms of use, control over use and responsibility for violation of the provisions of the charter.

The application and the documents attached to it must be submitted in Kazakh or Russian languages.

Trademark registration procedure

The application submission date is set by the date of receipt by the expert organization, subject to the compliance of the submitted documents with the requirements.

After sending the application to the authorized body, it is necessary to take into account the period of technical registration in the information system. It takes 10 to 15 calendar days.

The examination of the trademark registration application is carried out in several stages:

  1. Preliminary examination: within one month from the date of filing of the application, a preliminary examination is carried out, during which a check is carried out for contradiction to the absolute grounds excluding the registration of a trademark.
  2. Full examination: After the preliminary examination, a full examination is carried out, which takes up to seven months from the date of filing the application. During the full examination, the compliance of the claimed designation with the requirements established in the law is checked.

After the end of the preliminary examination, information about the application is published in the bulletin within five working days. The Bulletin is an official periodical on the protection of trademarks and appellations of origin of goods. In this regard, any interested person may file an objection to the registration of the claimed trademark within one month from the date of publication of information about the application. The applicant, in turn, has the right to submit written arguments regarding the filed objection within three months from the date of receipt of the notification.

The expert organization considers the objection and the position of the applicant, after which it makes an appropriate expert opinion.

It should be noted that at any stage of the examination, the expert organization may request additional materials from the applicant. The response must be sent within 3 months, otherwise the paperwork is terminated and the application is considered withdrawn.

Based on the results of the full examination, the applicant is sent an expert opinion on registration, preliminary partial registration or preliminary refusal to register a trademark.

The applicant has the right to submit a reasoned objection within three months from the date of sending him a preliminary expert opinion on refusal or partial registration, based on the results of consideration of which the expert organization makes a final conclusion within three months from the date of receipt of the objection.

Based on the final conclusion, the expert organization makes a decision on registration, partial registration or refusal to register a trademark.

As a result, information about the registration of a trademark is entered into the State Register of Trademarks.

Trademark registration is valid for ten years from the date of filing the application.

Having considered the concept and procedure of trademark registration, it can be concluded that a trademark is of great importance for business:

  1. Legal Protection: A registered trademark provides a legal basis for protection against possible violations and grants the owner the right to bring lawsuits and claims in case of violations of their trademark rights.
  2. Identification: Trademark registration allows you to identify the goods or services offered by the company and distinguish them from the goods or services of competitors. A registered trademark becomes recognizable and helps to create a unique image and brand of the company.
  3. Protection against counterfeiting: Trademark registration provides protection against illegal use or forgery of the mark. A registered trademark gives the right to suppress falsification and provides a stronger legal basis for combating counterfeit products.
  4. Commercial Value: A registered trademark can become a valuable asset for a company. It can be sold, transferred to a franchise, or used as collateral when receiving financing. Trademark registration can increase the company's value and become its competitive advantage.
  5. The prospect of expansion: Trademark registration in various countries allows the company to expand its activities internationally and protect its rights in various jurisdictions.

Thus, awareness of the importance of trademark registration and following the registration process in the Republic of Kazakhstan allow entrepreneurs to provide legal protection, successful positioning in the market and achieving a competitive advantage in their industry.

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.

Find out more and explore further thought leadership around Intellectual Property Law and Copyright Laws

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More