Some changes in the legislation of Kazakhstan concerning intellectual property
Our company cooperates actively with the colleagues from Kazakhstan, including in respect of preparing and filing for the registration of various kinds of the agreements relating to the disposal of the right in respect of the subject matters of intellectual property.
Realizing that currently there is an active process of improving the legislation, I would like to draw your attention to some significant changes in general, as well as to highlight the novations in respect of the agreements that we have managed to face.
On July 3, 2018, the Law “On Amendments and Additions to Some Legislative Acts of the Republic of Kazakhstan on the Issues of Improving the Legislation in the Field of Intellectual Property” came into force in Kazakhstan. This Law amends the Civil Code, the Code of Administrative Offences, the Tax Code, the Law on Copyright and Related Rights, the Law on the Protection of Selection Achievements, the Patent Law, the Law on Trademarks, the Law on the Legal Protection of the Integrated Circuit Topologies, as well as some other acts.
The following can be referred to the most significant changes:
The trademark registration system has been changed – a two-level registration system was replaced by a one-level one. The examination has been conducted earlier by the National Institute for Intellectual Property, and the approval of the decision and the registration of the mark have been carried out by the Department of intellectual property of the Ministry of Justice. Now the whole process of the trademark registration from filing to registering will be carried out only by the National Institute for Intellectual Property of the Republic of Kazakhstan.
The creation of the one-level system of registering the subject matters of intellectual property corresponds to the experience of other countries. In particular, the procedure of the examination and registration of intellectual property in the majority of countries, such as the USA, Portugal, Japan, Switzerland, Germany, China, Korea, and Belarus is carried out in one Patent Office.
In the USA it is the United States Patent and Trademark Office, in Portugal it is the National Industrial Property Institute, in Japan it is the Japan Patent Office, in Switzerland it is the Swiss Federal Institute of Intellectual Property, in Germany it is the German Patent and Trademark Office, and in China it is the China National Intellectual Property Administration.
The periods of carrying out an examination of the application for a trademark have been reduced: a preliminary examination should be carried out within 10 working days instead of 1 month and a full examination – within 7 months instead of 9 months. Due to these changes, the total period of the trademark registration will be reduced from 12 months to 9 months.
The publication of the applications for trademarks from the moment they arrive at the examination organization. This change will allow the trademark holders monitoring independently what applications have been filed and, for example, filing promptly a petition on preventing the registration of the similar marks, as well as it will allow the applicants informing, with a reference to the official publications, about the priority of the applications filed to exclude the use of the identical or similar designations by third parties.
The amendment on cancelling the mark due to its non-use has been introduced. If it has been possible earlier to cancel the mark due to its non-use within three years from the date of the registration or from the date being prior to filing an objection, then currently the person concerned may challenge the registration due to the non-use of the mark only within three years being prior to the date of filing the objection.
Currently, the disputes on the non-use of the trademark shall be considered in the court, but earlier, they have been considered in the Appeal Board of the Ministry of Justice of the Republic of Kazakhstan.
The grounds for recognizing the registration of the trademark as invalid have been added, namely:
- if the registration is carried out in the name of a representative of the person who is a holder of the identical or confusingly similar trademark in one of the member countries of the Paris Convention for the protection of industrial property, without a permission of the latter;
- if the trademark is identical or confusingly similar in respect of the homogeneous products or services with the company name of another person, the exclusive right to which in the Republic of Kazakhstan has arisen earlier than the priority date of the trademark.
The emergence of the definition “a counterfeit product and its packaging” in the legislation can also be referred to the significant changes, and also, the recovery of damages has been introduced as another measure to pay for the losses of the trademark holder.
In practice, however, we have managed to face and to assess unequivocally the advantage of the innovations regarding the issue of the registration of the agreements in respect of the subject matters of intellectual property.
In order to bring the national legislation in line with the norms of the Patent Law Treaty ratified by the Law of the Republic of Kazakhstan of May 2, 2011, the Singapore Treaty on the Law of Trademarks ratified by the Law of the Republic of Kazakhstan of April 8, 2012, the amendments aimed to simplify significantly the procedure for the registration of agreements have been introduced.
In particular, the registration periods have been reduced significantly: the registration period will be only 10 working days instead of 2 months.
The change related to the fact that it is just the registration of the legal fact that is carried out, and not the registration of the very agreement has become a significant and well-known to us change, what also entailed the innovations related to the document flow and the very registration process.
In the recent past, filing an application for the registration has required 3 original agreements, as well as the original powers of attorney from the parties – currently, submitting the original agreement and the powers of attorney are not required for the registration, and it is possible to do with their scan copies, what simplifies greatly the registration procedure.
Currently, the Office of Kazakhstan is moving to an electronic filing of the applications for the registration of the subject matters of intellectual property, including the possibility of filing the applications for the registration of the agreements and the supplementary agreements to the agreements. In this regard, when filing the application for the registration of the agreement in an electronic form, the scans of a copy of the agreement and the power of attorney are sufficient.
In general, it should be noted that the legislation of Kazakhstan in the field of intellectual property is formed and harmonized with the main international legal acts of the World Intellectual Property Organization in this field and aligned with the requirements of the WTO, in particular, with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
The government of the Republic has taken a new course and set a goal to become one of 30 most developed countries by 2050.
One of the conditions to achieve this goal is an industrial and innovative development of Kazakhstan, the introduction of new technologies and innovations. The development of these areas of the economy is connected directly with the protection and defence of the rights of intellectual property, which is one of the indicators of the country's investment attractiveness.
In respect of the agreement-based procedure, it can be noted that the adopted innovations will allow eliminating the administrative barriers and it can be said with confidence that this will become a significant stage in the development of the state legal system in the field of intellectual property.