On August 21, 2022, amendments and additions to the Laws of the Republic of Kazakhstan on intellectual property came into force.
In this regard, a brief analysis on some innovations is provided below.
The Law ON TRADEMARKS, SERVICE MARKS, GEOGRAPHICAL INDICATIONS AND APPELLATIONS OF ORIGIN OF GOODS
I. GEOGRAPHICAL INDICATIONS.
1. The RoK Law On Trademarks, Service Marks and Appellations of Origin of Goods was renamed into the Law On Trademarks, Service Marks, Geographical Indications and Appellations of Origin of Goods.
2. A new object has been introduced into the Law — «Geographical indication» (hereinafter – GI). Articles 25 to 40 address geographical indications. Registration procedure of GI is similar to the registration procedure of AOG.
Definition: “Geographical indication means designation identifying product originating from the territory of geographical object, having certain quality, reputation or other characteristics that are significantly associated with its geographical origin. At least one of the good production stages having significant impact on the formation of characteristics thereof should be executed on the territory of this geographical object”.
Examination of geographical indications:
- Within three months from the date of filing an application for a geographical indication, the Patent Office of Kazakhstan shall conduct an examination to check compliance thereof with the requirements specified in Articles 26, 27 and 29 of this Law.
- Upon the expiration of five working days from the date of filing application for geographical indication, application for the appellation of origin of goods, relevant information shall be published weekly in the bulletin.
- Within one month from the date of publication of information on the application for geographical indication, application for the appellation of origin of goods, any concerned person has the right to file opposition to registration of the claimed designation to the Examination Board on the grounds provided for in Articles 26 and 27 of this Law.
- Decision (on GI registration or on the refusal to register GI) shall be made according to the examination results. In case of refusal to register the GI, the applicant has the right to file opposition within three months with optional extension of filing period for reasoned opposition. Upon registration, appropriate notification of registration and the need to pay official fee for granting protection document and publication of information in the State Register shall be sent to the applicant.
- At this point, according to clause 2 of Article 32: «Pending a decision on the application, the applicant has the right to convert the application for geographical indication into application for appellation of origin of the goods and vice versa, subject to compliance with the requirements of this Law.”
3. The Law includes Article 11-2 «Opposition to registration of designation as a trademark«, while an official fee is envisaged for filing such an opposition. That is, it is now possible to file opposition during examination stage within the prescribed period.
- Now, within one month from the date of publication of information on the application, any concerned person has the right to file opposition to registration of the claimed designation as a trademark to the Examination Board on the grounds provided for in Articles 6 and 7 of this Law.
- Further, the Patent Office of Kazakhstan shall send notification to the applicant regarding the received opposition (oppositions) within five working days from the date of its (their) receipt with attached copy of the filed opposition (oppositions).
- The applicant is entitled to express his written position with respect to the filed opposition (oppositions) to the registration of claimed designation as a trademark within three months from the date of receipt of the notification provided for in clause 2 of this Article.
- In view of the opposition (oppositions) of the concerned person(s) and the position of the applicant, the Examination Board shall deliver an appropriate Office Action.
- The provisions of sub-clauses 4) and 5) of Article 13 of this Law shall not apply to the time period provided for in clause 3 of this Article.
Therefore, the practice of filing warning letters against trademark at the examination stage is no longer implemented.
4. Examination of trademark applications still involves two stages. However, the term of the preliminary (formal) examination intended to check the application content, the availability of required documents was increased to one month from the application filing date. And duration of full examination remained the same — seven months from the application filing date.
5. Clause 4 of Article 9 (requirements for trademark application) was amended as follows: “The application and the attached documents shall be submitted in Kazakh or Russian. If documents are submitted in another language, the applicant shall submit translation thereof into Kazakh or Russian within two months.”. Previously, this period was one month.
6. Clause 4 of Article 19 of the Law «Use of Trademark» was supplemented and is now presented as follows: “The evidence of the use of trademark is regarded as application thereof on the goods for which it is registered and (or) their packaging by the trademark owner or a person to whom such right was transferred or granted under a contract in accordance with clauses 1 and 2 of Article 21 of this Law. The use of trademark may be admitted as manufacture, import, storage, offer for sale, sale of goods with trademark designation, use thereof in advertising, signage, printed publications, on official letterheads, in other business documentation as well as in a domain name, transfer of the right to trademark, including when displaying goods at exhibitions held in the Republic of Kazakhstan, as well as other introduction thereof into circulation”.
7. The concept of “acquired distinctiveness” was introduced into the Law. The provision concerning this concept is presented in clause 1 of Article 6 “Absolute grounds excluding registration of trademark” of the Law as follows: “The specified designations may be registered as trademark if designation has acquired distinctive ability due to use as of the date of filing the application. By distinctive ability is meant the characteristics of designations enabling to distinguish goods (services) of some individuals and (or) legal entities from similar goods (services) of other individuals and (or) legal entities”.
Thus, previously unregistable elements listed in clause 1 of Article 6 of the Law, namely:
1) Entered into common use for designation of goods (services) of a certain type;
2) Generally accepted symbols and terms;
3) Indicating the type, quality, quantity, property, purpose, value of goods as well as the place and time of their production or sale;
3-1) representing international unpatentable names of drugs;
6) having direct descriptive connection with goods or services for which they are used;
Can be registered if the acquired distinctiveness is proved.
8. The deadlines for changes to be made to the Public Register of Trademarks at the request of the owner have been shortened. The wording of clause 4 of article 14 was changed as follows: “Within ten working days from the date of filing application for amendments and the relevant payment, Examination Board shall introduce into the State Register of Trademarks the changes specified in clause 3 of this Article as well as changes to correct errors of a technical nature.
Within five working days from the date of introducing changes to the State Register of Trademarks, the applicant shall be notified thereof».
Previously, the deadline for introducing changes to the State Register of Trademarks was 1 month from the date of filing the application, the deadline for receiving notification was 10 working days.
III. APPEAL BOARD.
9. Oppositions may be filed with the Appeal Board in case of disagreement with the final decision on trademarks, GI and AOG. As well as oppositions to trademark registration, GI and AOG. Therefore, the Appeals Board is now considering objections against GU. Pre-trial consideration of these oppositions is mandatory, as before.
IV.CHANGING THE AMOUNT OF OFFICIAL FEES
10. From September 19, 2022, the official fees change as follows:
— Provision is made for additional fee of 9800 tenge for registration of trademark in each additional class for more than three;
— Fee for consideration of opposition to registration of designation as a trademark was introduced in the amount of 17 999,52 tenge;
— Fee for preliminary search for geographical indication/ appellations of origin of goods in the national database of geographical indications/ appellations of origin of goods was introduced. The amount of fee depends on the search period;
— Fee for preliminary search by the name of the applicant and/or the owner of the geographical indication/ appellation of origin of goods in the national database of geographical indications/ appellation of origin of goods was introduced. The amount of fee depends on the search period.
THE PATENT LAW
The important changes are the following.
A new item 3-1 has been introduced in the article 6.
“Patents are not granted for:
1) methods of human cloning and human clone;
2) methods of changing the genetic integrity of human germ line cells;
3) use of human embryos for commercial, military and industrial purposes.”
The list of objects that can be protected as a utility model has been expanded:
before 21 August 2022
from 21 August 2022
Utility model is technical solutions in any field related to the product (device, substance, strain of a microorganism, plant or animal cell culture), method (the process of performing actions on a material object by material means), as well as the application of known product or process for a new purpose, or the use of a new product for a particular purpose, except for diagnostic, therapeutic and surgical methods for treatment of humans or animals
Utility model is technical solutions in any field related to the product (device, substance, strain of a microorganism, plant or animal cell culture), method (the process of performing actions on a material object by material means), as well as the application of known product or process for a new purpose, or the use of a new product for a particular purpose, except for therapeutic and surgical methods for treatment of humans or animals
Thus, diagnostic methods for treatment of humans or animals can be protected as a utility model.
(i) Duration of an industrial design patent has been changed.
“An industrial design patent is valid for ten years from the application filing date. At the request of a patentee its validity may be extended each time for five years. But the total validity period of the patent should not exceed twenty-five years from the application filing date.”
(ii) A new article 34-1 has been introduced.
“Article 34-1. Unregistered industrial design.
An industrial design that meets the requirements of novelty and originality may be protected without registration and issuance of a title of protection for three years from the date when the industrial design was first made public (disclosed) in the Republic of Kazakhstan.
An unregistered industrial design is considered new if no identical industrial design was made public (disclosed) before the date when the unregistered industrial design was first made public (disclosed).
The originality of an unregistered industrial design must comply with the requirements of the item 1 of the Article 8 of this Law. (for reference “An industrial design is recognized as original if its essential features determine the creative character of the product features.”)
The protection of the right to an unregistered industrial design is carried out in court.”