Trademarks for goods and services registered in the territory of Kazakhstan or protected under the Madrid Agreement on the international registration of trademarks, as well as non-registered trademarks which have acquired general notoriety among a substantial segment of the general population as a result of their active use, can be recognized as well-known trademarks.
The authorized agency for acknowledgement of a 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 a mark is recognized as well-known is the Law on Trademarks and the Rules for recognition of the trademark as well known in Kazakhstan.
A trademark can also be recognized as well-known under the decision of the court.
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.
Documents certifying the well-knownness of the trademark
The documents confirming the well-knownness of a trademark shall be based on the results of a customer survey, which must be held by a specialized independent organization in the territory of Kazakhstan. The survey has to cover not less than six (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 three thousand (3,000) people. While the number of respondents in one residential area must be not less than five hundred (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 and/or services for which a well-known trademark is applied:
In respect of fast moving consumer goods, the survey is to be held among “typical” consumers (on grounds of sex, age, education, social and financial status) and also among specialists in the relevant sectors of industry and trade.
In respect of capital goods, the survey is to be held among specialists in production, commerce or other business circles being the consumers of such products.
The questionnaire must contain information on the familiarity of the consumers with the trademark, how and when they learned about the trademark, for what goods and/or services the trademark is used, and whether the respondents are actual consumers of these goods.
Apart from survey results, the following evidences can certify a trademark as well-known
These include documents which can confirm:
- Intensive use of the trademark in the territory of Republic of Kazakhstan;
- Methods of use of the trademark;
- Volumes of sales under the applied trademark and the distribution channels;
- Annual average number of consumers of the goods and services under the applied trademark;
- Value of the trademark;
- Intensity of promotion and 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 and methods 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.
- Any other information on which basis a conclusion that a trademark is well-known in Kazakhstan could be made available.
Examination of the Application, publication of information about the Application filing
The examination of the Application lasts approximately one (1) year.
Within two (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 third parties.
After three (3) months from the publication date, the authorized institution conducts the Examination of the Application and the analysis of all submitted documents, confirming the well-knownness of the trademark. The authorized institution examines the Application within six (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 the 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 filing of the application, but also much earlier.
Reasons for refusal of recognition of a trademark as well-known:
- Information submitted by the applicant does not 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 on the trademark being recognized as well-known, shall be recorded in the State register of well-known trademarks in Kazakhstan.
The owner of said trademark receives a Certificate which is valid for ten (10) years. The duration of the Certificate can be prolonged each time for ten (10) more years upon the request of the owner and submission of the documents confirming the well-knowness of the trademark as of the date of filing of such a request.
Cancelation of legal protection of well-known trademarks:
- Due to expiration of the registration term.
- Due to loss of well-known status by the trademark, upon the request of third parties or following examination of the Intellectual Property Committee.
- In case of cancellation of the decision on recognition of the trademark as well-known by the Intellectual Property Committee.
- As a result of a court ruling, which came into effect.