03 NOV 2016

After the adoption of the new draft law in Kazakhstan the mechanisms of IP regulation will become easier

Very soon the Parliament in Kazakhstan will consider a bill that contains a number of fundamental changes, intended to simplify and speed up the procedures of registration, transferring rights to trademarks and licensing. The drafters say that the changes are designed to stimulate business development in Kazakhstan, growth of investments and increase of patent activity.

The most important changes provided by the Bill:

  • All the information about applications filed for trademark registration is to be in open access - Kazakhstan Patent Office will be required to publish such information. Thus, trademark owners will receive an opportunity to prevent registration of trademarks, which may infringe their rights.

  • Trademark registration procedure is to be based on the 'first to file' principle: a right to receive protection for trademark lies with the first person to file application.

  • All relations in the sphere of trademark use are to be brought in line with international standards - Paris Convention for the Protection of Industrial Property and The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). These agreements do not allow any restrictions on use of the trademark owners on the discretion.

  • Mechanisms of transferring rights to trademarks and licensing are to be improved by simplifying the procedure of state registration for such agreements. It totally suits to Singapore agreement, which was ratified by Kazakhstan in 2012.

  • Trademark owner will be able to receive compensation for damages from the offender simply basing on fact of infringement of his rights to trademark. This means that the new rules will relieve the need to prove in court incurred losses or lost profits. In fact, by depriving holders’ need to prove their losses, the new legislation will create a substantial obstacle for those who tend to use other people's TM illegally or create similar or identical ones.

    Generally speaking, it is expected to see quite a lot of changes and they are aimed mainly at facilitating business and improving its protection, including from unfair competition. The question is, when the long-awaited bill will finally be considered by the Parliament and whether the above-mentioned changes will take effect soon enough.