As part of the draft law On introducing amendments and supplements into several legislative acts of the Republic of Kazakhstan (the "RK") on the issues of improvement of the legislation in the sphere of intellectual property (the "Draft Law") is expected introducing amendments into number of legal acts including laws on the trademarks.
The Draft Law suggests fundamental amendments in the sphere of intellectual property of the RK as a whole. Thus, the existing two level system of registration of the objects of intellectual property (the "IPO") will be replaced by the one level system. In other words, registration of the IPO currently is conducted by the State Enterprise on right of economic management "National Institute of Intellectual Property" of the Ministry of Justice of the Republic of Kazakhstan (the "Patent Office") with direct involvement of the Ministry of Justice of the Republic of Kazakhstan (the "Ministry"). Whereas, one level system avoids participation of the Ministry in the process of registration of the IPO which automatically results in abolishment of state fees to be paid in favor of the RK and shortening of the terms for registration of the IPO.
Below we present major amendments, in our opinion, which are expected in legislation on trademarks as a part of the Draft Law:
- The right holder will be provided by the possibility to recover compensation for illegal use of his trademark. Currently such right is provided only for patent holders.
- Publication of the information on filed trademark applications on the web-site of the Patent Office. Currently information on filed trademark applications is not publicly available.
- Renewal issuance of a trademark certificate verifying the exclusive right for the trademark. It is known that the right for the trademark currently is verified by recording it with the State Trademark Registry of the Republic of Kazakhstan and extract from it.
- The Draft Law clearly defines the moment from which the exclusive right for the trademark appears. Currently the Law on Trademarks does not contain such provision.
- Facilitation of trademark registration procedure. Namely, according to the Draft Law the applicant will have the choice, i.e. the possibility to provide for registration with the Patent Office instead of originals of such agreement the extracts from the assignment and license agreements with the assignment/license details for registration of the fact of such assignment/license. For license agreements it also will be possible to provide notification in the specified form.
- The Draft Law also defines the procedure of registration of the cancelling of the provided right under the trademark license agreement.
- The Draft Law defines separately the procedure for registration of the pledge on exclusive right for the trademark.
- Revised absolute and other grounds excluding the registration of the trademark, as well as the grounds for recognition of the trademark as a well-known.
Apart from the abovementioned major novelties, the Draft Law suggests amendments in the part of the requirements to the documents to be provided to the Patent Office. For instance, execution of the Powers of Attorney, Letter of Consent and etc.
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