TRADEMARK REGISTRATION IN KAZAKHSTAN
The effective protection of a trademark is necessary in avoiding pitfalls and potential losses especially in cases of infringement or unfair advantage by third parties. For total enforcement of trademark rights, the registration of the trademark is paramount; and although not as straightforward as it might seem, with the assistance and guidance of a well experienced and highly knowledgeable trademark attorney, the successful prosecution of a trademark application is possible.
The following should be taken into account for TRADEMARK REGISTRATION IN KAZAKHSTAN:
Anyone claiming to be the proprietor of a trademark may apply for the registration of the trademark. Nationals and foreigners have equal right in this regard but a foreign applicant must be represented by a Kazakhstan Attorney.
CLASSIFICATION OF GOODS
The International (Nice) Classification of goods/services (latest edition).
POWER OF ATTORNEY REQUIREMENTS
Notarization or Legalization is not required for the Power of Attorney; but the company’s stamp, if it is used, should be placed on the signature as well as the date of signing. If the applicant company does not use a company stamp, the Power of Attorney shall be notarized, i.e. verified by a notary.
The procedure for obtaining Trademark registration in Kazakhstan is full examination of the Application without opposition period. The first stage after filing is formal examination, and the second stage is the substantive examination.
Trademark search is not obligatory for Trademark Registration in Kazakhstan, but it is highly recommended in order to avoid confusing similarity of your trademark to already registered and applied trademarks, which can result in a refusal. It is possible to estimate from the search and evaluations of our experienced Kazakh trademark attorney, the possibility of receiving a refusal on the application, and if so the chances and strategy needed to overcome this refusal.
In this estimation the following factors would be assessed:
This precursory assessment of the protectability of the trademark assists the applicant in minimizing unnecessary costs while weighing all available options in the protection of the trademark.
The following information and documents are required for Application filing:
Formal examination: The formal examination entails checking the compliance of the application and accompanying documents with statutory requirements.
Substantive Examination. In the substantive examination, the mark is thoroughly examined in respect of distinctiveness, similarity (or being identical) with existing trademarks on the Register of Trademarks, and compliance with the requirements of the Trademark Law and Rules of Trademark Examination.
In case of a refusal, our Kazak Trademark Attorney will carefully review the refusal to provide a Legal Opinion and discuss with the Applicant options available in overcoming said refusal.
TIME FROM FILING TO REGISTRATION (PUBLICATION AND ISSUE OF THE CERTIFICATE OF REGISTRATION):
If no obstacles, generally eighteen (18) to twenty-four (24) months. However there also exists in Kazakhstan, an official procedure of expediting the examination which allows an Applicant obtain registration within nine (9) to ten (10) months if no provisional refusal is issued. This procedure is available no earlier than six (6) months after the beginning of the formal examination.
There’s no opposition period in Kazakhstan. However, a warning letter to the Examination against the registration of a pending mark can be filed before the decision on granting protection is issued by the PTO.
The registration is valid for ten (10) years from the filing date.
While valid for 10 years, the lifespan of a Trademark can be extended through a request for a renewal. This renewal request can be filed within twelve (12) months prior to the expiration date of the trademark. The renewal is valid for ten (10) years.
The following information and documents are required for renewal:
DECLARATION OF USE
NON-USE GRACE PERIOD
The non-use grace period is three (3) years from the trademark registration (publication) date.
RECORDAL OF THE HOLDER’S NAME/ADDRESS CHANGE
RECOGNITION OF WELL-KNOWN TRADEMARKS