Jul 01, 2024 (Newsletter Issue 5/24)
Official Fees Increased
From July 1, 2024, the National Institute of Intellectual Property of Kazakhstan changed the prices for services related to the registration of trademarks, service marks, geographical indications, and names of places of origin of goods.
The amount of the fee for filing and conducting examination of the trademark application was increased from 91,000 to 113,750 tenge (USD 240), and for each additional class after the third in the application – from 14,700 to 31,875 tenge (USD 70).
At the same time, the fee for registration and issuance of a trademark certificate remained unchanged.
The cost of extending the term of validity of a trademark certificate for an additional 10 years has been increased from 145,716 to 182,146 tenge (USD 390).
Source: www.craneip.com
May 06, 2024 (Newsletter Issue 3/24)
Accelerated Trademark Registration Procedure Introduced
Updated rules for the examination of applications for objects of intellectual property have entered into force in Kazakhstan.
The new rules allow applicants to request an expedited examination of trademark applications, which will reduce the examination duration from seven to three months. A request for an accelerated examination of an application is submitted by the applicant at the time of application submission. Along with the petition, a document is submitted confirming the relevant payment.
The amount of the state fee for submitting an application and conducting an accelerated examination, when claiming up to three classes, is 770,000 tenge (approximately 1,735 USD) and 215,000 tenge for each additional class. For comparison, the cost of submitting an application and carrying out an examination according to the standard procedure is 91 thousand tenge (if up to three classes are claimed).
It is worth noting that even after an accelerated examination, if an application with a convention, exhibition, and (or) other priority is detected, such a trademark may be canceled. At the same time, the amount paid by the applicant is not returned.
Source: www.craneip.com
Aug 03, 2023 (Newsletter Issue 7/23)
Official Fees Amended
The Kazakh Intellectual Property Office introduced amendments to certain official fees, which entered into force on July 10, 2023.
The following fees have increased by 45%:
The fee for filing a trademark application increased from EUR 132 to EUR 192; the fee for each additional class over three increased from EUR 37 to EUR 54;
The trademark renewal fee increased from EUR 212 to EUR 308; the fee for each additional class over three increased from EUR 37 to EUR 54;
The fee for filing a response to a provisional refusal and for filing an opposition against a pending trademark application increased from EUR 39 to EUR 57;
The fees for conducting all types of trademark searches have increased by up to 40%.
Finally, the fee for registering an assignment agreement or license for all types of IP rights, including patents, utility models, industrial designs and trademarks, has increased from EUR 98 to EUR 119, a 21% increase, while the fee for each additional IP right in the same agreement increased from EUR 20 to EUR 29.
In contrast, plant variety right annuity fees have been reduced by 5% to 15% per annual fee. For instance, the annuity fee for years 1-3 decreased from EUR 24 to EUR 20 and the annuity fee for years 41-45 decreased from EUR 247 to EUR 222.
Source: www.petosevic.com
Oct 20, 2022 (Newsletter Issue 15/22)
Official Fees Amended
The Intellectual Property Office (IPO) has made changes to certain official fees that came into effect on 19 September 2022.
The fee for trademark registration now only covers up to three classes of goods and services and no longer all classes applied for. An extra fee will now be charged for each additional class beyond three.
Furthermore, the IPO amended the fee for recording a change of name/address for registered IP rights by excluding the wording "fee per each change". Owners will now only pay one fee to record all changes to a registered IP right. However, when recording changes to applications, a fee will continue to be charged for each individual change.
Source: www.petosevic.com
Jul 27, 2022 (Newsletter Issue 10/22)IP Laws Amended and TM Opposition Period IntroducedOn June 20, 2022, Kazakhstan adopted a set of amendments to various intellectual property laws introducing significant changes in the field of intellectual property in relation to trademarks, geographical indications, patents, and industrial designs. The amendments will come into force on 21 August 2022.
With respect to trademarks, the most important changes are the following:
- Introduction of an opposition procedure for trademarks
An opposition procedure for trademarks has been introduced. Pending trademark applications are published weekly on the Intellectual Property Office (IPO) website. Any interested person may file an opposition to the pending applications on absolute or relative grounds within one month from the date of publication of the application with the IPO.
- Time limit for formal examination extended
The time limit for formal examination of a trademark application has been extended from 10 working days to one month from the application filing date.
- Time limit for IPO to record changes to registered trademarks changed
The time limit for the IPO to record changes to registered trademarks has been shortened from one month to 10 working days. The deadline for the IPO to inform trademark owners of recorded changes has also been significantly shortened, from two months to five working days.
- No obstacle to registration if distinctive character acquired through use before filing date
Currently, trademarks that are not capable of distinguishing the goods or services of one person from those of another are denied protection on absolute grounds. The only way to avoid refusal of protection is to impose a disclaimer on a non-distinctive element if it does not occupy the dominant position in the mark. According to the amendments, such elements are not an obstacle to registration if the distinctive character was acquired through use before the filing date.
In addition, it is already possible in Kazakhstan to register geographically related signs and names as appellations of origin (AO). Soon, the protection of geographical indications (GIs) will also be possible.
For more information, please click here Source: www.petosevic.com May 19, 2022 (Newsletter Issue 6/22)Official Language Requirements AmendedOn January 11, 2022, legislative amendments concerning the status and use of the two official languages, Kazakhstan and Russian, came into force.
Under recent amendments, signboards of privately owned businesses and of non-governmental organisations, their announcements, advertisements, forms, price lists, price tags, menus, signs, and other visual information no longer must be in both Kazakh and Russian. They need to be in Kazakh only but may also be in Russian and/or other languages if required in certain circumstances.
Trademarks protected in Kazakhstan which are used in signboards of non-governmental organizations should remain unchanged and do not need to be translated.
It is now mandatory to use both Kazakh and Russian languages on:
- Labels applied to medication packaging and on the document that provides information about the medicine and its use; and
- Labels applied either directly to medical products or to their packaging and on instructions for their use (this applies to any instruments, devices, equipment, materials, and other items used in medical facilities).
For more information, please see here Source: www.petosevic.com; www.sber-solutions.kz Oct 20, 2021 (Newsletter Issue 15/21)Labelling of Medicines and Footwear Becomes MandatoryKazakhstan introduces mandatory digital labelling of footwear and medicines.
On November 1, 2021, Kazakhstan starts the mandatory digital labelling of footwear. The production and import of unlabelled shoes are prohibited from this date, but retailers are able to sell unlabelled footwear until November 1, 2022. All manufacturers and importers have to use the Labelling System and enter information about their goods in order to generate Data Matrix codes. These codes are then applied to the product using a sticker or a label. Imported products must be labelled before they go through the customs procedure – either at the production site in another country or at a customs warehouse in Kazakhstan.
The mandatory digital labelling of medicinal products is introduced on January 1, 2022. The implementation phases are determined by the Kazakh Ministry of Health. A pilot project is currently taking place to allow pharmaceutical companies to test the labelling procedure before it becomes mandatory. Four Kazakh pharmaceutical manufacturers, one importer, two distributors, five pharmacies and eight medical institutions, as well as the state-run medicine distributor SK-Pharmacy LLP, are participating in the project. Since the project's launch in September 2019, nearly 100,000 packages of medical devices have been digitally labelled.Source: www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com May 17, 2021EAEU Trademark Agreement in ForceOn April 26, 2021, the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five Eurasian Economic Union (EAEU) member countries – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force, following the recent ratification by all member states, including the last state, Kazakhstan.
The Agreement introduces a new system for the registration of EAEU trademarks. Instead of registering a trademark in each EAEU member state, the Agreement provides a centralized filing of the application and further prosecution in one IP Office. The EAEU trademark is kept in a single register administered by the Eurasian Economic Commission (EEC). Further, applicants receive a unified protection certificate.
Source: www.petosevic.com and Mikhailyuk, Sorokolat and Partners, Ukraine Feb 25, 2021 (Newsletter Issue 4/21)Official Fees on Renewals ChangedThe Patent Office of Kazakhstan (Kazpatent) has made changes in the official fees on the renewal of a trademark, service mark and publication of information on renewal.
Starting from January 1, 2021, the fee for renewal of trademark registration increased to KZT 97,144.32 for up to 3 classes and KZT 16,993.76 for each additional class. Small and medium-sized businesses will receive a discount of 50 percent in the period from 1 January 2021 to 31 December 2021 for this service and a discount of 25 percent in the period from 1 January 2022 to 31 December 2022. The benefits of receiving a discount will be cancelled as from 1 January 2023.
Further, the discount of 15 percent for filing trademark and collective trademark applications in an electronic format has been abolished by the Office.
More information on the official order can be found here
Source: Mikhailyuk, Sorokolat & Partners, Ukraine Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs
On January 12, 2021, Kazakhstan deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO.
The Protocol shall enter into force three months after depositing its instrument of ratification in respect of Kazakhstan.
Source: www.eapo.org
Nov 05, 2020 (Newsletter Issue 18/20)
Labeling of Tobacco Products Mandatory
On September 10, 2020, Kazakhstan adopted Resolution No. 568 introducing mandatory labeling of tobacco products. The labeling requirements entered into force on October 1, 2020 for filtered cigarettes, while other types of tobacco products, such as cigars, cigarillos and heated tobacco, will be subject to mandatory labeling from April 1, 2021.
All tobacco products in Kazakhstan will need to include a unique identifier on their packaging, a Data Matrix code, containing information such as the product’s serial number and manufacturer’s name. The sale of tobacco products will only be possible with the use of a 2D barcode scanner, which will read the information contained in the Data Matrix code.
Source: www.petosevic.com
May 28, 2020 (Newsletter Issue 8/20)Trademark Agreement by Eurasian Economic Union Members SignedOn February 3, 2020, the Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed by all EAEU members states, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.
This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices. Trademark applications will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.
For more information, please click hereSource: www.petosevic.com Nov 30, 2018 (Newsletter Issue 20/18)
Pending Trademark Applications Online Now
Recently, the information on all pending trademark applications in Kazakhstan became available on the National Institute of Intellectual property (NIIP) website, in Russian and Kazakh languages only.
The applications are published online within five working days after the formal examination is completed. This will simplify the monitoring of potentially infringing applications, enabling rights holders to file observations and oppositions before such applications become registrations.
Source: www.petosevic.com
Sep 06, 2018 (Newsletter Issue 15/18)IP Legislation AmendedOn July 3, 2018, various intellectual property legislation amendments came into force in Kazakhstan. The amendments were adopted in order to fill the gaps in the existing legislation and to simplify the administrative procedures related to obtaining IP rights protection.
Some of the most significant changes are outlined below:
- The National Institute of Intellectual property (NIIP) is now only involved in the IP rights registration process. The Ministry of Justice (MoJ) will be responsible for general regulatory functions. Before, both Offices were involved in the IP rights registration process.
- Well-known trademark applications can now only be considered by the MoJ Board of Appeal, while they were also considered by courts before.
- The examination periods for trademark applications have been reduced.
- All trademark applications are to be published in the Official Bulletin within 5 business days after the formal examination is completed.
- To confirm registration, amendment, renewal etc., right holders may now refer to certificates and attachments thereto without requesting additional extracts from the State Register of Trademarks.
- Date of creation of the exclusive right is the registration date of the trademark.
- Procedure for cancellation of non-use has been changed.
- Use of a trademark in a modified form may constitute use of the mark.
- Further amendments refer to licensing and geographical indications.
For further information, please check the article of the law firm Dentons Kazakhstan LLP hereSource: www.petosevic.com, www.dentons.com Nov 09, 2016 (Newsletter Issue 20/16)
Amendments to IP Laws Drafted
The Kazakhstan’s Ministry of Justice has drafted a new law amending and supplementing a number of intellectual property laws and regulations to align Kazakhstan’s IP legislation with the Organization for Economic Cooperation and Development’s (OECD) standards in the area of IP protection and with the Singapore Treaty on the Law of Trademarks.
The Ministry of Justice has held public hearings on the draft law, which aims to introduce the following:
- A single-level system for the registration of IP rights, i.e. all registrations shall be handled by the National Institute of Intellectual Property (NIIP), as opposed to the current two-level system where both the NIIP and the department for IP-related rights within the Ministry of Justice are involved;
- An appeal board shall be created within the NIIP to handle potential appeals against NIIP’s decisions, instead of going directly to court;
- Stronger enforcement measures, including fair compensation to IP rights owners;
- Simplified recording of license, sublicense and assignment agreements – currently, four originals of the agreement are needed for the recordal, but according to the draft law, only a certified copy or extract of the agreement will be required;
- Harmonisation of the ‘exclusive license’ definition with that of the Singapore Treaty — according to current regulations, a licensor retains his right to use a patent, trademark, industrial design or plant variety even after transferring his license to a licensee. According to the draft law, this right will truly be exclusive to the license holder, that is, the licensor will lose his IP right once he transfers his license.
- Clarification of what is to be done with original goods found in the same shipment with counterfeit goods – they are to be transferred to the rights holder or to their representative, provided that their appearance or purpose have not been altered; and
- Clarification regarding proof of use of a trademark – the use of a registered trademark in a slightly different form that does not influence its distinctiveness should be considered as proper use and can not be the ground for cancellation.
Source: www.petosevic.com
Sep 02, 2015 (Newsletter Issue 13/15)
Accession to WTO
WTO members formally adopted Kazakhstan’s WTO terms of entry at the General Council meeting on July 27, 2015, in the presence of Kazakhstan’s President Nursultan Nazarbayev.
Kazakhstan will have until October 31, 2015 to ratify the deal to formally become a WTO member 30 days after it notifies the ratification to the WTO Director-General.
Source: www.wto.org
Jun 30, 2015 (Newsletter Issue 10/15)Official Fees IncreasedUnder the Order No. 294 dated May 26, 2015, of the Minister of Justice of the Republic of Kazakhstan new official fees came into effect as of June 11, 2015.
Particularly, official fees for trademarks have been significantly increased from about 20 to about 100 percent.
The new official fee for filing a trademark application, including examination, is now KZT 60,599.84 for up to three classes. The filing fee for each additional class is KZT 9,800. The official registration fee is KZT 24,000.48.
Also, the possibility of accelerated prosecution of the inventions has been introduced. The official fees for acceleration of the formal and substantive examinations are respectively 15 percent and percent higher than the stipulated basic fees. Previously excluded percent discount on the examination fee for applications with established international search report or an international preliminary examination report was retrieved.
In the meantime, new percent discount was added for applicants being small and middle entities related to the registration of inventions, utility models, industrial designs and selection achievements. It should be noted that aforesaid discount is provided only to resident entities.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine and Tagbergenova & Partners, Kazakhstan Jun 30, 2015 (Newsletter Issue 10/15)
Patent and Trademark Office Moved
The «National Institute of Intellectual Property» of the Ministry of Justice of the Republic of Kazakhstan moved to another building. The new address of the location is:
National Institute of Intellectual Property of the Ministry of Justice of the Republic of Kazakhstan
Left Bank, Oryndor str., 8, Body 1, Entrance # 1, # 2.
010000 Astana
Republic of Kazakhstan
Phone +7 8 7172 74 95 80 (Reception)
Source: www.kazpatent.kz
May 13, 2015 (Newsletter Issue 7/15)IP Law AmendedThe Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellations of Origin" has been amended and the following changes came into effect on April 20, 2015:
- It is no longer possible for several persons to be listed as co-applicants for one application and the requirement for applicants - natural persons to be registered as individual entrepreneurs was abolished;
- An applicant will have the right to file a request for assignment of a trademark application without executing and registering an assignment agreement;
- Issuance of a trademark certificate is cancelled. The information about trademark registration is published by the expert organization in the Official Bulletin and in the Internet resources. The fact of a trademark registration and of amendments to this registration is confirmed by the extract from the State Register of Trademarks.
- The timing of the trademarks registration has been reduced. The Law establishes the timeframes for all stages of the examination of the application for registration of a trademark, details the timing of the approval of preliminary and final expert opinions by the Ministry of Justice of the Republic of Kazakhstan, the timing of the delivery of such opinions to the applicants.
- The list of absolute grounds for refusal in trademark registration has been changed. The registration formerly would have been refused if a trademark consisted exclusively of designations which are non-distinctive and constitute international unpatentable names of pharmaceuticals (e.g., amoxicillin, ampicillin). Such basis as direct associative connection with the goods or services for the designation of which the trademark is used has been excluded from the list of absolute grounds. Previously, the existence of those absolute grounds precluded the registration of practically any trademarks that could be associated with the applied goods and/or services.
- Disputes arising from trademark registration (or refusal thereof) and non-use cancellation of trademarks cannot be brought directly to the court. They will be considered by the Appeal Board of the Trademark Office first.
Source: Tagbergenova & Partners, Kazakhstan; Mikhailyuk, Sorokolat & Partners, Ukraine and Dentons, Kazakhstan May 29, 2012 (Newsletter Issue 9/12)Ratification of Singapore TreatyThe Law of the Republic of Kazakhstan on “Ratification of Singapore Treaty on the Law of Trademarks”, dated April 8, 2012, entered into force. It was officially published in the “Kazakhstanskaya pravda” 2012 № 100-101 (26919-26920) and “Egemen Kazakhstan” on April 13, 2012 № 149-151 (27224).
Source: Tagbergenova & Partners, Kazakhstan May 29, 2012 (Newsletter Issue 9/12)Trademark Law AdoptedThe Law of the Republic of Kazakhstan “On the introduction of amendments to several legislative acts of the Republic of Kazakhstan on the matters regarding the intellectual property” (the “Law”) was adopted on January 12, 2012. The Law came into effect on January 31, 2012.
The Law amended, among others, the Criminal Code of the Republic of Kazakhstan, the Civil Code of the Republic of Kazakhstan, the Administrative Code of the Republic of Kazakhstan, the Law of the Republic of Kazakhstan “On Copyright and Neighboring Rights”, the Law of the Republic of Kazakhstan “On the Protection of Selection Inventions”, the Patent Law of the Republic of Kazakhstan, the Law of the Republic of Kazakhstan “On Trademarks, Service Marks and Appellation of Origin” (the “Trademark Law”), and the Law of the Republic of Kazakhstan “On the Legal Protection of Topographies of Integrated Circuits”.
The basic amendments introduced by the Law to the Civil Code, the Trademark Law and the Patent Law are as follows:
- A contradiction in Kazakhstani legislation regarding the non-use grace period for trademarks has been resolved. Now both the Civil Code (Article 1028) and the Trademark Law (Article 19.4) determine three years from the registration date as the non-use grace period.
- The term of preliminary examination was decreased from two (2) months to one (1) month from the application filing date.
- The term of substantial examination was reduced from 12 months to 9 months from the application filing date.
- The period for which a design patent is issued was extended and is now 15 years from the filing date (prior to the adoption of the Law, such period was 10 years).
Source: Tagbergenova & Partners, Kazakhstan Oct 04, 2010 (Newsletter Issue 15/10)
Accession to the Madrid Protocol
Kazakshstan joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks.
The Madrid System will become effective on December 8th, 2010.
Source: www.wipo.int
Legal basis is the Trademark Act (in force since September 4, 1999) with changes and additions as of June 8, 2024.
Kazakhstan is a member of the Madrid Agreement. From December 8, 2010, Kazakhstan is a member of the Madrid Protocol as well.
Trademark protection is obtained by registration.
Graphic, verbal, letter, numerical, three-dimensional and other signs or combinations of signs allowing to distinguish goods and services of certain parties from similar goods and services of other parties may be registered as a trademark (Art. 5 (1)).
The following trademark types are registrable: trademarks, service marks and collective marks.
The application is filed at the National Institute of Intellectual Property (NIIP).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A power of attorney should be signed and stamped. In case stamp is not available the document must be notarised. Legalisation and Notarisation of the power of attorney is not required, provided that the document is signed by the applicant/corporate official of the applicant.
Foreign applicants do not need a domestic registration.
Examination of an application shall be carried out in stages:
1) preliminary examination (within 1 month from the application data) and
2) full examination (within 7 months from the application date).
The full examination includes an examination of distinctiveness and a search for identical or confusingly similar prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use before the filing date.
Marks are published in the Official Bulletin after their recordal in the State Register of Trademarks.
The processing time from first filing to registration is approx. 7-11 months.
National:As of 21 August 2022, an opposition procedure for trademarks has been introduced. Any interested person, within one month from the date of publication of information about the application in the Official Bulletin, has the right to file an objection to the expert organization against registration of the declared designation as a trademark on the grounds provided for in Articles 6 and 7 of this Law.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years at the request of the owner submitted during the last year of its validity.
The official fees for electronic and paper applications for trademarks are the same in Kazakhstan.
The official fee for acceptance of an application and examination of registration of a trademark or service mark is KZT 113,750 for up to 3 classes and KZT 31,875 for each additional class above 3 classes.
Registration of a trademark or service mark in the State Register, issuance of a certificate and publication of information on registration amount to KZT 36,544.48 for up to 3 classes and KZT 10,800 for each additional class above 3 classes.
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