Intellectual Property Rights Protection in Kazakhstan
1. Legal Advantages of Registration of
IPR in Kazakhstan
Intellectual Property Rights
Protection in Kazakhstan
Washington, DC, November 4, 2013
by Arlan Yerzhanov,
Partner & US representative of BMF Group
2. BMF Group LLP
10 Floor, “Alatau” Business Center
Abai Ave., 151/115
Almaty, 050009
Republic of Kazakhstan
bmf@bmflegal.com
www.bmflegal.com
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.
3. 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
5. 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.
10. Licenses
Not registered license or sub-license agreement is not
valid
Formalities:
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.
11. 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
12. 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.
13. 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.