Mr. Nurzhan Stamkulov, Ms. Dina

Bektemirova

Kazakhstan legal framework provides a legal protection

for owners of intellectual property. This article focuses on trademark

infringement and legal actions available to

protect brands.

Copying. Unauthorized

use of brand can be done whether fully or partially. For instance, Apple Inc.

has a registered trademark Apple. Let’s assume, company B in Kazakhstan

produces electronic products under with logo Apple on it. Such use will be

considered as an identical copy of all trademark elements. This identical copy will

be regarded as a trademark infringement.

The most popular type of trademark infringement is a partial copying to make it

confusingly similar to the trademark. The Kazakhstan laws consider it as a

whole to the extent of mixture of different elements of the trademark. The

infringer simply imitates a trademark, for example, Colgate and Сoldate, Adidas

and Adibas, Samsung and Sumsung.

Our practice shows that trademark infringement by full

copying are decreasing, while the partial copying to get consumer confusion,

are getting more frequent in Kazakhstan. It is not hard to prove in Kazakh

court that full copying of the brand is an obvious infringement. However, to establish trademark infringement

in cases of mixed copying is a much complicated task for a legal practitioner

in Kazakhstani court.

Import regulations. The import of goods to Kazakhstan without the

brand owner consent is almost impossible. The customs authorities will not give their permission.

For example, some local company imports to Kazakhstan air conditioning

equipment with Panasonic logo. Let’s assume the importer does not have any

rights to import goods with Panasonic logo. Such import can be seen as

infringement of the owner’s exclusive rights to the import of Panasonic brand

into Kazakhstan.

Unauthorized production of goods. Let’s assume

a famous worldwide company producing furniture has a registered and protected trademark

in Kazakhstan, while it has no furniture production in Kazakhstan. Let’s assume

a local company in Kazakhstan starts manufacturing furniture under the brand name

of the famous worldwide company, even though it does not know that trademark is

duly registered and protected under the Madrid Convention. In this case, it is

obvious that a local company infringes the owner rights of the registered

trademark, i.e. of a famous worldwide company.

Unauthorized

brand use in advertising. Kazakhstan

laws forbid using someone else’s trademark in any manifestation. Such usage in

advertising of someone goods or production, and other forms and types of

unauthorized usage are initially considered as illegal. It is necessary to get

a prior consent the brand owner to use the brand in any commercial or

non-commercial operations.

Legal

consequences of trademark infringement. Legal remedies-differ

from case to case. In most court cases the judges rule in favor of the legal

owner of the registered trademark. Nonetheless, when the cases are

controversial, the legal outcome depends on each specific court case.

Litigation. The owner or holder

of trademark has a right to sue a trademark infringer in a court. The right

holder can claim: (1) terminate and stop the trademark infringement actions;

(2) destruct the consignment; and (3) compensate for damages and losses. The

compensation is not limited and depends on evaluation evidences in the courts.

Destruction of the unauthorized consignment. Kazakhstan administrative laws implied withdrawal,

destruction or confiscation of goods that infringes someone’s trademark. The

state bodies like justice authorities, anti-corruption service or tax authorities

submit claims on trademark violation to the administrative court. The

administrative court is entitled to either to fine the company with penalty of

200,000 Tenge, a Kazakh national currency, or to confiscate goods without

compensation or reimbursement.

Import of

goods into Kazakhstan. Kazakhstan Customs Code protects the rights and

interest of trademark owners and holders. In case commodities are

included in the customs register of trademarks, the customs authorities verify

whether the goods are imported with the consent of trademark owner. The customs authorities are obliged to suspend

the release of goods for ten working days. Later on they inform to the owner of

the trademark about the import of such goods with the use of his trademark.

Whenever a dispute between the right holder and trademark infringer takes

place, the customs authorities will suspend the customs clearance until the

court’s decision. As a result, the goods with the trademark will not be allowed

for customs clearance and later the customs authorities will ask for the

reimbursement of the temporary storage costs.

Anti-monopolistic

investigation. The remedy

of trademark can be considered as an unfair competition and anti-monopoly

authority can initiate an anti-monopolistic investigation. 

The infringer in this case can be subject to an administrative liability, where

the consequences can take the form of a fine in the amount of approximately 3.1

million Tenge.

Criminal prosecution. The law enforcement authorities can initiate

pre-trial criminal investigation on trademark infringement. It is enough for an

infringer to be a subject for criminal prosecution in case when: (1) this

infringer has two administrative charges for the infringement; (2) this

infringer is obliged to recover damages exceeding 2.12 million Tenge. Kazakhstan

criminal law considers the trademark infringement as a criminal misdemeanor,

for which the punishment may be in the form of either public works, or

correctional labor or fine or imprisonment up to 70 days.

In summary, we

observe the Kazakhstan law is effective and enforceable for trademark rights

protection.

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