Significant amendments to trademark law introduced

Kazakhstan

Significant changes have recently been introduced to the Law of the Republic of Kazakhstan on Trademarks, Service Marks and Appellations of Origin. The amendments came into force on April 20 2015.

The amended law establishes the principle of regional exhaustion of trademark rights, as it corresponds to the goals of the Eurasian Economic Union member states.

Among other changes, Article 4 of the amended trademark law provides for the registration of a trademark in the name of both legal entities and natural persons. Previously, a natural person had to be registered as an entrepreneur in order to be entitled to register a trademark.

Further, Article 4 now forbids the registration of a trademark in the name of multiple applicants, regardless of whether these are legal entities or natural persons.

Under the same article, registration certificates will no longer be issued. The registration will be recorded in the Kazakh State Trademark Register and confirmed by an extract from the register.

The list of absolute grounds for refusal now includes a new provision that precludes the registration as trademarks of international non-proprietary names for pharmaceutical substances. In addition, the provision that previously prohibited the registration of “trademarks that are connected, directly or associatively, with the goods and/or services for which they are used”, now reads as  follows: “trademarks that are directly connected with the goods and/or services for which they are used”. Therefore, the term 'associatively' is now excluded from the provision.

Further, the law prohibits the registration of a trademark identical or similar to an earlier trademark registered in the name of a third party. The law also prohibits the registration of a trademark identical to a mark already registered or applied for in the name of the same party for the same goods and/or services. Thus, the same applicant is not allowed to register the same trademark twice.

In addition, the amended law allows the registration of a trademark similar to an earlier trademark - either registered or applied for - in the name of a third party, provided that a letter of consent has been submitted to the Kazakh Patent and Trademark Office.

The accelerated examination of trademark applications is now available after the six-month period from the filing date of the application has passed.

Finally, all disputes connected with the registration or refusal of a trademark (eg, oppositions and office actions), as well as non-use cancellation actions, should first be brought before the Board of Appeal, not the courts.

Elena Zubenko and Viktoriia Smyrnova, PETOŠEVIĆ, Kiev

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