Article 18-1. Recognition of a trademark by the well-known Law on Trademarks, Service Marks, Geographical Indications and Names of Places of Origin of Goods

Home / RLA / Article 18-1. Recognition of a trademark by the well-known Law on Trademarks, Service Marks, Geographical Indications and Names of Places of Origin of Goods

1. A trademark registered in the territory of the Republic of Kazakhstan or protected by virtue of international treaties, or a designation used as a trademark without its legal protection in the Republic of Kazakhstan, which has become widely known in the Republic of Kazakhstan as a result of active use, may be recognized as a well-known trademark in the Republic of Kazakhstan.

The application of individuals or legal entities for the recognition of a trademark as well-known in the Republic of Kazakhstan is submitted to the authorized body.

The application must relate to a single trademark or designation and contain the following:

1) information about the applicant, indicating the place of residence or location;

2) an image of a trademark or designation claimed as a well-known mark;

3) the date on which, in the applicant's opinion, the mark became generally known;

4) a list of goods (services) in respect of which, in the applicant's opinion, the mark has become generally known.

2. The application must be accompanied by:

1) information confirming the well-known trademark or designation;

2) images of a trademark or designation in the format of 8x8 centimeters in the amount of five copies;

3) a copy of the power of attorney in case of application by a representative;

4) a document confirming the payment of the state fee for the recognition of the trademark as well-known.

An application for recognition of a trademark as well–known in the Republic of Kazakhstan is considered by the commission of the authorized body for recognition of a trademark as well-known in the Republic of Kazakhstan (hereinafter referred to as the commission of the authorized body).

Within five working days from the date of receipt of the application for recognition of the trademark as generally known, the compliance of this application and the documents attached to it with the requirements of this article is checked.

In case of receiving a positive verification result, the expert organization publishes information about the received application in the bulletin.

After three months from the date of publication, the commission of the authorized body shall, within two months, review the application and the materials attached to it confirming the well-known nature of the mark.

The applicant has the right to make corrections, additions and clarifications to the application materials before the completion of its consideration.

If there is disagreement on the part of third parties, an appropriate notification is sent to the applicant, to which the applicant submits a response before issuing an opinion on the results of the examination of the application.

Based on the results of consideration of the application by the commission of the authorized body, a decision is made to recognize the trademark as generally known or to refuse such recognition, which is sent to the owner (rightholder) of the trademark within ten working days from the date of such decision.

If the factual information provided by the applicant confirms the date when the mark became generally known, other than that indicated in the application, the trademark may be recognized as generally known from the actual date.

Information about the actual recognition of a trademark as well-known is confirmed by the results of a consumer survey conducted by a specialized independent organization in the territory of the Republic of Kazakhstan. The survey should cover cities of national significance, the capital and at least five cities of regional significance. The total number of respondents in one locality should be at least one hundred people.

A decision to refuse to recognize a trademark as well-known is made if it is established that:

1) the information is insufficient to recognize the well-known trademark;

2) there is a trademark that is identical or confusingly similar to the applicant's trademark, protected or claimed in the name of another person in respect of similar goods, with priority earlier than the date from which the applicant applies to recognize his trademark as generally known.

The decision of the commission of the authorized body may be appealed in court.

3. A well-known trademark is granted the legal protection provided for by this Law.

4. Legal protection of well-known trademarks is terminated:

1) due to the expiration of the registration period;

2) upon the application of any interested person for the early termination of the legal protection of a well-known trademark in connection with the loss of its well-known status on the basis of a court decision that has entered into legal force.;

3) on the basis of a court decision that has entered into legal force to revoke the decision of the commission of the authorized body.

5. On the basis of the recognition of a designation or trademark as generally known in paragraph 1 of this article, relevant information shall be entered in the State Register of Trademarks.

The validity period of a trademark recognized as well-known is calculated from the date of filing an application for recognition of the designation or trademark as well-known to the authorized body.

The validity period of recognition of a trademark as generally known at the request of its owner and upon presentation of information confirming the well-known trademark, is extended for a further ten years.

Information about the registration of a well-known trademark, its owner and subsequent changes concerning such registration are entered into the State Register of Trademarks and published in the bulletin.

The right to a well-known trademark is certified by an entry on registration in the State Register of Trademarks and confirmed by an extract from the State Register of Trademarks.

Information on the termination of legal protection of a well-known trademark is entered into the State Register of Trademarks, posted on the Internet resource of the authorized body and published in the bulletin of the expert organization.

The Law of the Republic of Kazakhstan dated July 26, 1999 No. 456.

This Law regulates relations arising in connection with the registration, legal protection and use of trademarks, service marks, geographical indications and names of places of origin of goods in the Republic of Kazakhstan.

President

Republic of Kazakhstan

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