As a well-known trademark can be recognized the mark for goods and services registered in the territory of Kazakhstan or protectable under Madrid Agreement on international registration of trademarks, as well as a non-registered trademark acquired general notoriety among the relevant circles of people as a result of its active use.

The authorized agency for acknowledgement of the trademark as well-known is the Committee on Intellectual Property Rights of the Ministry of Justice of the Republic of Kazakhstan.

The regulatory act under which the mark is recognized as well-known is the Law on Trademarks and the Rules for recognition of the trademark as well known in Kazakhstan.

The sign can be recognized as a well-known mark under the court decision as well.

Application for recognition of the trademark as well-known

The basis for recognition of the trademark as well-known is the Application filed by an interested natural or juridical person.

The official fee for filing the Application is USD 800.

Documents certifying the well-knownness of the trademark

The documents confirming the well-knownness of the trademark shall be based on the results of the customer survey, which must be held by a specialized independent organization in the territory of Kazakhstan. The survey has to cover not less than 6 major settlement areas of the Republic of Kazakhstan, including the cities Astana and Almaty. The total number of respondents must be not less than 3000 people. While the number of respondents in one residential area must be not less than 500 people. The maximum number of respondents is not limited. The survey is to be held among relevant groups of consumers.

The categories of respondent consumers depend on the purpose of the goods or services for which a well-known trademark is applied:

In respect of fast moving consumer goods the survey is to be held among the “typical” consumers (on grounds of sex, age, education, social and financial status) and also among the specialists in the relevant sectors of industry and trade.

In respect of capital goods the survey is to be held among the specialists in production, commerce or other business circles, being the consumers of such products.

The questionary must contain the information on whether the consumers are familiar with the trademark, how and when did they learn about this trademark, for what goods is the trademark used and whether the respondents are the consumers of these goods.

Apart from the survey results the following information can be submitted in support of trademark well-knownness:

  • an intensive use of the trademark in the territory of Republic of Kazakhstan;
  • ways of use of the trademark;
  • volumes of marketing of goods under applied trademark and the distribution channels;
  • annual average number of consumers of the goods under applied trademark;
  • value of the trademark;
  • intensity of advertising of the trademark, costs for advertising and the audience coverage;
  • level of initial and acquired distinctive ability of the trademark;
  • the use of the same or similar trademark by third parties, the way of such use
  • the number of licensees, producers, distributors, importers and sellers;
  • the level of consumers' awareness of the trademark at the local, regional level, in neighboring states and worldwide;
  • the registration of the trademark and its acknowledgement as well-known abroad
  • other information

Examination of the Application, publication of information about the Application filing

The examination of the Application lasts approximately 1 year.

Within 2 months from the date of Application filing the authorized institution examines the required documents, notifies the Applicant of acceptance of the Application for Examination and publishes the information about the Application for information and possible opposition by the third parties.

After 3 month from the publication date the authorized institution conducts the Examination of Application and the analysis of all submitted documents, confirming the well-knownness of the trademark. The authorized institution examines the Application within 6 months and then issues the relevant decision.

If any opposition is raised by third parties, the appropriate notice is given to the applicant, who must respond to it before the issue of the decision following the Examination of Application.

Decision on recognition of the trademark as well-known, decision to refuse recognition of the trademark as well-known

Upon review of the application the Committee decides to recognize the trademark as well known, or issues a decision to refuse such recognition.

The mark can be recognized as well-known not only as of the date of the Application filing but on the earlier date as well.

The reasons for refusal of recognition of the trademark as well-known:

  • Information submitted by the applicant doesn’t confirm the well-knowness of the trademark or is not sufficient for such recognition.
  • The existence of an earlier trademark in the name of another person, which is already protected or just applied and appears to be identical or confusingly similar to the applied trademark in respect of similar goods.

Recordal in the State Register of well-known trademarks in Kazakhstan

Information about the trademark, recognized as well-known, shall be recorded in the State register of well-known trademarks in Kazakhstan.

The owner of such trademark receives a Certificate, which is valid during 10 years. The duration of the Certificate can be prolonged each time for 10 years upon the request from the owner and submission of the documents confirming the well-knowness of the trademark as of the date of filing of such request.

Cancelation of legal protection of well-known trademarks:

  1. Due to expiration of the registration term.
  2. Due to loss of a well-known status by the trademark, upon the request of third parties or following examination of Intellectual Property Committee.
  3. in case of cancellation of the decision on recognition of the trademark as well-known by the Intellectual Property Committee.
  4. as a result of court ruling, which came into effect.