Amendments to trademark legislation enter into force


Numerous amendments to Kazakhstan’s trademark law entered into force on January 31 2012. The most important changes are explained below.

First, the list of absolute grounds for refusal has been shortened (ie, the part related to the lack of distinctive character). However, the instructions for conducting examinations have not yet been published, so it is not clear how the changes will be implemented in practice.

Second, the formal examination period has been reduced from two months to one month, while the substantive examination period has been shortened from 12 to nine months; this will speed up the trademark registration procedure before the Kazakh Patent and Trademark Office.

Third, the licensing and assignment procedures, as well as the procedure for filing oppositions before the Board of Appeals, are now outlined more clearly.

Finally, the amendments establish strict requirements regarding the language of documents filed with the Patent and Trademark Office. Trademark applications may be filed either in Russian or in Kazakh, while assignments, oppositions and corresponding documents (eg, supplements and powers of attorney) must be filed in both Russian and Kazakh. If these documents are filed in another language, a notarised translation into both Russian and Kazakh must be provided.

The stricter language requirements contribute to an increase in the filing costs and have thus provoked negative reactions among local trademark attorneys. It is expected that the language requirements will be relaxed once the Singapore Treaty on the Law of Trademarks enters into force in Kazakhstan, which is expected to occur on September 5 2012.

Elena Zubenko, PETOŠEVIC, Kiev

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