Intellectual Property Rights Protection in Kazakhstan

Legal Advantages of Registration of IPR in Kazakhstan

Intellectual Property RightsProtection in Kazakhstan

Washington, DC, November 4, 2013

by Arlan Yerzhanov, Partner & US representative of BMF Group

BMF Group LLP

10 Floor, “Alatau” Business CenterAbai Ave., 151/115

Almaty, 050009Republic of Kazakhstan

[email protected]

This presentation is for informational purposes only and is not legal advice or consulting. Presenting this information does not create, and receipt does not constitute, a legal relationship. This presentation should not be used as a substitute for professional legal services or advice.

Intellectual property rights (IPR) in Kazakhstan

IP

Results of intellectual creative activity

Scientific, literary and artistic works

Performances, staging, phonograms

and programs of organizations of air

and cable broadcasting

Inventions, utility models, industrial

designs

Selection achievements

Topologies of integrated circuits

Confidential information, including trade secrets (know-

how)

other results of intellectual creative

activity

Means of individualization

firm's name trademarks (service marks)

name of the place of origin (indication of the origin) of goods

other means of individualization

Trademarks (Marks)

Regular Well-Known (total – 16)- Zhanna- Coca-Cola- Sprite- Fanta, and 12 others

Advantages of recognition of marks as well-known in Kazakhstan

a well-known mark or trademark has the same level of protection as a regular registered trademark, but irrespective of goods and services of its initial registration or use;

before recognition of a mark as well-known, it is unnecessary to register it as a trademark;

it is possible to prevent or terminate registration of a trademark that is identical or confusingly similar to a well-known trademark with respect to any goods or services within five years of its registration;

the owner of a well-known mark has the right to take actions against infringers of his rights to the well-known  trademark with regard to any goods and services, including the ones in the Internet;

a trademark recognized as well-known has bigger value for its accounting purposes and, if necessary, as an input into the charter capital; and

in case of non-use of trademark registered for a number of classes, it can be partially deregistered for some goods and services.  It is impossible in case of the well-known mark, which remains protected regardless of use of the marks in all classes of goods and services.

Statistics

Applications filed as of 31.12.2012

Trademarks ~ 60,592 National; 67,897 Madrid Agreement

Inventions ~ 36,000 Industrial Designs ~ 1,200 Utility Models ~ 1,250 Selection Achievements ~ 360

Examples of registered IPR in 2013

8

LADY GAGA FAME

WD-40

LicensesNot registered license or sub-license agreement

is not validFormalities: 4 copies in Russian or Kazakh with title page,

bound and sealed and notarized; Filed for registration within 6 months of the

date of signing; Accompanied with decision of licensor (for KZ

entity) to grant the license; and Mandatory examination for separate official

fee.

Licenses

Needs to contain provision that quality of goods of Licensee shall not be poorer than the same of Licensor, even if Licensee does not produce the goods (e.g. uses only trademarks while distributing goods)

Governing Law and Enforceability - optional

Licenses

Other reasons to conclude a License Agreement Confirmation of trademark use; Customs Registration Purposes (Border

Measures) – parallel import, ex-officio actions; Accounting, depreciation, including expedited

depreciation; Calculation of damages; Enforcement of IP Rights; Separate LA for franchising.

Why you need to register IP?

Not registered – not protected; Registered – protected by state;

Registration does not give the right to use IP, but gives the right to forbid the use by others;

“First to File” and not “First to Use” country; All transactions with registered objects must

be registered - licenses, pledges, assignments, etc.;

Need to use Trademark or Patent; IP – Intangible Assets.

Examples of violations – all of them eliminated by BMF

BMF GROUP LLP

Arlan Yerzhanov Partner, Representative in USA

Mob .: +1 (347) 424-1522E-mail: [email protected]