Kazakhstan Amends IP Legislation

On July 3, 2018, various intellectual property legislation amendments came into force in Kazakhstan, affecting 12 laws, including the trademark, patent, and copyright laws, as well as the Civil Code and the Code on Administrative Offenses. The amendments were adopted in order to fill the gaps in the existing legislation and to simplify the administrative procedures related to obtaining IP rights protection. The most significant changes brought about by the amendments are outlined below.

Amendments Concerning All IP Rights

• Before the amendments, both the National Institute of Intellectual property (NIIP) and the Ministry of Justice (MoJ) were involved in the IP rights registration process, which is now only the NIIP’s responsibility. The MoJ will be responsible for general regulatory functions.
• IPR registration fees will no longer be determined according to tax legislation, but by the NIIP and the MoJ.
• It is now explicitly stated that the administrative and criminal liability is not applicable to cases involving the exhaustion of IP rights.
• State procurement procedures will now require candidates to provide documents proving their exclusive IP rights, if applicable.
• Assignment and license agreements for industrial property and plant variety/breeders’ rights are now registered by NIIP within 10 business days. Earlier, the term was 40 business days.
• If a license agreement does not indicate the license’s validity term, it will automatically be valid for five years or, if the validity term of the licensed IP right is shorter than five years, the license will be valid until the end of this term.
• “Exclusive license” is now defined in such a way that the licensor cannot use the licensed IP rights along with the licensee, which was possible before the amendments.
• A new notion of a “single license” has been introduced, to refer to what an “exclusive license” referred to before, namely, a license with which the licensor is able to use the licensed IP rights along with the licensee.
• The law now explicitly allows cancelling assignment and license agreements in court.

Trademarks and Geographical Indications (GIs)

• The concept of counterfeit goods has been introduced; counterfeit goods are defined as “any goods, and their packaging, that bear a trademark or GI or a confusingly similar mark without the rights holder’s consent”. Counterfeit goods and any equipment or materials used for manufacturing such goods are to be withdrawn from the market and destroyed at the infringer’s expense.
• If the court establishes trademark or GI infringement, the rights holder can demand monetary compensation instead of claiming damages. In this case, the rights holder does not have to prove losses and the court determines the compensation amount according to the nature of the infringement. While this simplifies the procedure for the rights holder, the compensation amount is completely at the court’s discretion. The draft law had set the minimum and maximum compensation rates, but these were not reflected in the final law.
• Changes made to a trademark/GI registration are to be published online within three business days from the date they are entered in the State Register of Trademarks. Earlier, the deadline was one month.
• Provisions concerning conflicts between trade names and trademarks are now also applicable to conflicts in which the trademarks are registered in the name of natural persons or legal entities that are not involved in entrepreneurial activity.
• The date the exclusive right to a trademark starts is now clearly defined as the date of trademark’s registration in the State Register of Trademarks.
• The formal examination term for trademark applications is reduced from one month to 10 business days from the application filing date.
• The substantive examination term for trademark applications has also been reduced from nine to seven months. However, the expedited examination option (within six months, upon payment of additional fees) has been abolished.
• The term for substantive examination of GI applications has been reduced from six months to 30 business days.
• All trademark applications are to be published on the NIIP’s website within five working days after the formal examination is completed. This novelty will simplify the monitoring of potentially infringing applications, enabling rights holders to file observations or oppositions before such applications become registrations.
• Requirements and procedures for applying for a well-known trademark have now been incorporated into the law, while they were governed by a bylaw before.
• Well-known trademark applications can now only be considered by the MoJ Board of Appeal, while they were also considered by courts before.
• Non-use trademark invalidation actions can now be considered only by courts, unlike before, when they were considered by the MoJ Board of Appeal. The non-use grace period is now defined as three years before the filing of an invalidation action, while it was previously defined as three years from the date of trademark registration.
• The notion of “use” of a trademark has been broadened to include use in any form that differs from the trademark’s originally registered form (i.e. different size, font, color, etc.) to the extent that does not affect its distinctiveness.
• New grounds for trademark invalidation have been introduced, namely (1) registration of a trademark or confusingly similar mark in the name of the representative of the holder of the same trademark registered in any member country of the Paris Convention, without the consent of the trademark holder; and (2) the trademark being identical or confusingly similar to the trade name of another entity, if the trade name has priority over the trademark in the territory of Kazakhstan.
• Termination of a business activity is no longer a ground for automatic termination of a trademark registration.
• Trademark rights could only be certified by an extract from the State Register of Trademarks, while they can now also be confirmed by trademark registration certificates issued by the NIIP.
• Requirements for letters of consent for the registration of conflicting trademarks are now explicitly stated in the law – the letter has to be written on an official letterhead, signed by an authorized person and sealed with a company seal (if available); if the letter is issued by a natural person, it has to be notarized.
• When filing a trademark application, it is now officially allowed to provide a copy of a power of attorney (PoA) instead of the original. However, the original PoA must still be presented within three months. The PoA should be returned to the attorney upon the NIIP’s verification.
• It is now also allowed to provide a copy of the official fee payment confirmation instead of the original when filing a trademark application.

Patents

• All patents (inventions, utility models and industrial designs) can be invalidated before the court only. The jurisdiction of the Board of Appeal under the MoJ, which handled these cases before, is now limited to appeals against the NIIP’s refusals to grant a patent.
• It is no longer required to file a list of an industrial design’s essential features in a design patent application.

Copyright and Related Rights

• Copyright protection cannot be granted for works intended to be used as trademarks, service marks, trade names and GIs. This is a new clause that intends to distinguish industrial property rights protection from copyright protection.
• The deadline for the MoJ to register a copyrighted work has been reduced from 20 business days to one business day from receiving the request.

Plant Variety Rights

• The term for publishing applications for plant variety/breeders’ rights in the Official Bulletin has been reduced from 18 months to one month from the date a positive decision is issued following the formality examination.

By: Djakhangir Aripov

For more information, please contact Djakhangir Aripov at our Uzbekistan office.