Registration of trademarks

Registration of trademarks

You make investments in creation of the brand and incur costs to promote it on the market. You take every effort to turn your product into a brand. Successful, strong brand is a real treasure. But! Until your trademark is not registered, anyone can benefit from your success, your money, and your ideas. Brand value is determined both by its marketing successes and quality of its base – trademark. Company (goods, services) name, logo, trademark, brand, slogan – all these concepts are integrated in one legal term – TRADEMARK. You are not a rightful owner of your own trademark, until it is not registered! Any person who had registered the same or similar mark may prevent you from using it. BUT! Having registered your trademark, you become its owner and acquire the following exclusive rights:

  • to prohibit use of the trademark by the third parties (judicial, administrative sanctions, entry into the customs registry)
  • to grant the right to use the trademark to any third parties on a contractual basis (license)
  • to sell the trademark rights to any third parties (contract of assignment)

GOOD! Agency employees provide the following services in trademark registration:

  • Thorough search for identity and similarity among registered trademarks and preparation of the report.
  • Advising on the possibility to register a claimed notation as a trademark.
  • Determination of your trademark protection extent in accordance with the International Classification of Goods and Services (ICGS).
  • Preparation and filing of the application for a trademark registration, application for  recognition of a trademark as well known;
  • Paperwork prior to issue of the Registration Certificate;
  • Provision of information on the status of your trademark in the course of examination;
  • International registration of your trademark under the Madrid Agreement;
  • Preparation and filing an opposition to refusal to accept your application for consideration, preliminary/final refusal to register a trademark;
  • Preparation, filing and registration of assignment contracts and licensing agreements to use trademarks;
  • Sale/purchase of trademark;
  • Legal audit of your brands;
  • Preparation of a letter of notification, letter of claim, or petition to court in case of infringement of your trademark rights by third parties;
  • Representation and protection of interests in court, appellate and other competent bodies and organizations;
  • Entry of a trademark in the Customs Register of Intellectual Property Rights and further support of the company.

In the Republic of Kazakhstan trademark certificates are issued by the Intellectual Property Committee of the RK Ministry of Justice. The National Intellectual Property Institute of the Intellectual Property Committee of the RK Ministry of Justice (INPI) receives applications, conducts examination, keeps public registers, and publishes information about trademarks.

A trademark can be registered in the name of a legal entity or individual businessman. Trademark registration procedure consists of several stages and can take 12 months to two years.

Stage 1. Preliminary examination

Analysis of the application contents, availability of all required documents, accuracy of the list of goods and/or services (ICGS) (link 12), payment of duties. If all the documents are correct, the application goes to the stage of complete examination and INPI sends an official filing receipt to the applicant (or its patent attorney) with indication of the number assigned, filing date and priority date or refusal to accept the application in the form of reasoned opinion.

Stage 2. Complete examination

INPI performs examination as to the trademark registrability. Based on the examination results, INPI can register or refuse to register the trademark. Grounds for refusal to register the trademark are divided into two groups.

Group 1 – absolute grounds (Article 6 of the Law), when notation has no distinctive ability, e.g. is  advertising in nature or appears to be a generally accepted symbol, false or confusing as to the goods origin, etc. Consult us to avoid refusal on absolute grounds.

Group 2 – relative grounds (Article 7 of the Law), when registration is impossible due to third party rights. For example, rights of another person with the same or similar trademark protected with respect to similar goods. You can avoid refusal on relative grounds by search for identity and similarity (link 4).

Refusal to register the trademark may be appealed by the applicant to the Appeals Board at the Intellectual Property Committee. Third parties may apply for cancellation of the trademark registration to the same authority. Decisions of the Appeals Board may be appealed to the Supreme Court.

Stage 3. Trademark registration

Based on the registration conclusion and upon payment of the relevant fees, information of the trademark and its owner is entered in the State Register of Trademarks of the Republic of Kazakhstan. The right holder shall be issued the Trademark Registration Certificate. The Certificate is issued for 10 years and provides for repeated renewal. The Certificate may be early terminated in case of successful third party protest or liquidation of the trademark owner.

If you already use a trademark owned by another person in your business, you may, even unconsciously, violate the rights of the lawful trademark owner with all the consequences that come with it including the obligation to indemnify damage caused by unauthorized use.

If you are going to apply for registration of a trademark, you should preliminary evaluate, whether the notation is able to undergo examination and its chances of being registered.

To help you avoid such situations, we will:

  • examine your trademark for identity and similarity with registered trademarks;
  • analyze the examination results;
  • prepare the report with the conclusion concerning the potential of your notation to be registered as a trademark.

Our search can detect already registered trademark for similar goods and/or services, which fully matches your notation or is similar thereto. In this case, you will have to renounce your notation. It makes no sense to invest money in promotion of knowingly unregistrable mark.

Trademark is an intellectual property asset and, as a property item, can be assigned or transferred in temporary use. In addition, a lawful trademark owner has a legal right to sell it.

Trademark assignment

Exclusive right to a trademark can be transferred by the right holder to another entity or individual businessman under a trademark assignment contract.

Trademark may be assigned either in respect of all goods or services for which it is registered or a part of those goods or services.

Upon assignment of a trademark, the original owner loses its trademark rights in relation to the goods and services it is assigned for.

Trademark licensing

Right to use a trademark may be licensed by the right holder (licensor) to another entity or individual businessman (licensee) under the license agreement with respect to all or a part of the goods it is registered for.

Signing of the license agreement shall not mean assignment of the trademark (i.e. all rights thereto shall remain with the original owner); license agreement grants the right to use it. Therefore, you as the owner can impose a number of restrictions on use. Such restrictions may refer to the period of time for which the license is granted and the territory where the trademark will be used.

Trademark owner can issue several licenses to use its trademark at a time and receive income from the trademark licensing, for example, in the form of royalties.

Trademark licensing agreement is the most significant part of the franchise agreement, since the whole idea of the franchise agreement is production and distribution of goods and services under a certain trademark successfully operating on the goods and services market.

Trademark assignment and licensing agreement must be registered with the Intellectual Property Committee. Without registration, all above agreements shall be deemed null and void.

Customs laws and regulations of the Republic of Kazakhstan provide for the possibility to protect intellectual property rights in goods turnover across the border of Kazakhstan using the Customs Register of Intellectual Property Assets kept by the Customs Service of the Republic of Kazakhstan. Customs authorities protect intellectual property rights to the products entered into the Register based on the right holders’ applications. Entering of trademarks in the Customs Register of Intellectual Property Assets will enable your company to:

  • stop illegal trafficking in counterfeits across the customs borders of Kazakhstan (regardless of the type of declared customs regime or another customs procedure under which goods are placed)
  • increase sales of products
  • increase revenue from royalties
  • strengthen your company’s position and reputation of the brand on Kazakhstan and foreign markets.

We offer:

  • Assistance in obtaining the Customs Service decision to take measures to suspend release of goods and enter the trademarks into the Register of Intellectual Property Assets.
  • Support of the company upon detection by the customs authorities of goods likely to be counterfeits.
  • Protection of the right holder interests in a judicial or administrative procedure in case of counterfeit goods detention at the border to prevent their import/export, confiscate and destruct the same.

Prior to submission of an application for a trademark registration (or search for identical or similar trademarks), claimed notation should be properly classified in accordance with the International Classification of Goods and Services (ICGS). For us to do such classification, you must provide a complete list of goods manufactured, works or services performed by you.

What is ICGS?

All goods and services are arranged in 45 classes of ICGS. Classes from 1 to 34 include various goods, for example, class 5 is for medicines and pharmaceuticals, class 33 – alcohol beverages. Classes 35-45 cover services: 35 – advertising services, 39 – transportation , 43 – supply of food stuff and beverages. When applying for registration of a trademark, it shall contain an alphabetical list of goods for which registration is sought. Legal protection covers all goods and services, for which the trademark is registered, and those similar thereto.

Trademark registration in the Republic of Kazakhstan does not vest its owner with any rights in the territory of a foreign state. Meanwhile, any dynamic business sooner or later goes beyond the borders of its country. However, if the trademark has not been registered in the country, whereto the respective goods are exported, it may be used freely by any business entity operating in the market. To avoid the situation, it is necessary to register the trademark in the relevant country or, more precisely, in the relevant foreign countries, since borders of the majority of modern states are transparent for movement of goods.

Holder of the national registration may ensure legal protection in all or several countries by filing one application in one language with one specialized agency under Madrid Agreement Concerning the International Registration of Marks. Application for a trademark registration in the member-countries of Madrid Agreement shall be filed based on the original trademark registration in Kazakhstan. Application for international registration of a trademark shall be filed with INPI, which sends it to the International Bureau of WIPO;

  • Application for international registration of a trademark must contain information of the original registration or original application, list of countries where registration is sought, goods and services for which registration is sought (the list of goods and/or services in the application for international registration shall match the list of goods and/or services in the original application or certificate);
  • Upon receipt of the application, International Bureau of WIPO shall examine the regularity of application for international registration of a trademark and conformity of the list of goods and services to the International Classification of Goods and Services; register the trademark and send the certificate containing the particulars entered into the International Register to the trademark owner.
  • Upon official examination of the application, the International Bureau of WIPO sends the application to the national offices of the countries where trademark registration is sought;
  • National offices of the respective countries examine the application for registration of a trademark on its merits in accordance with the effective trademark protection laws and regulations in these countries;
  • Upon examination, national offices of the respective countries inform the International Bureau of WIPO of the decision to grant trademark protection in the territory;
  • International Bureau notifies the trademark owner of entries made to the International Register concerning preliminary and final refusals to provide protection, final decisions following the refusal, entries made to the International Register concerning cancellation of registration, and provides a copy of changes made to the International Register.
  • International registration of a trademark with the International Bureau is issued for ten years with the option to renew.

Marks registered with the International Register shall in each country enjoy the treatment used for trademarks applied for national registration, save in the event of refusal by the competent national authority to provide protection, which is applicable in the territory of such country only.

You are ready to run an advertising campaign for the product, but your trademark has not been registered yet. In this case, registration (sometimes it takes up to two years) can cost you much more than purchase of an existing trademark or at least an application whereon a decision to register a trademark has been already made. Purchase of a trademark is economically advantageous in the following cases:

  • Trademark is known on the market and its purchase can increase sales.
  • Urgent need for a trademark (there is a product with no name).
  • You just like a trademark, as it fully meets your needs.
  • Trademark is confusingly similar to the notation you want to register.

How to buy a trademark.

Purchase of a trademark is effected by signing of the assignment contract and licensing agreement (link 9). Refusal to register the assignment contract or licensing agreement is near-impossible, if the above instruments are executed under the patent attorney control. Signing of the contract and filing thereof for registration can be done within one day.

How to sell a trademark.

Quite recently, when application fee was three to ten times lower, you could become the owner of a trademark which found no practical use. It is also possible that your trademark interferes with somebody’s activities. In this case, those people usually apply for deregistration of such mark due to non-use. To keep the trademark, you have to gather many documents, which means time lost and additional expenses.

YOU’D BETTER GET MONEY FOR PROPERTY YOU DO NOT NEED, THAN SPEND MONEY TO PROTECT IT.

 

 

 

 

 

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