Law & Practice

KAZAKHSTAN: Changes Allow for GI Protection and Trademark Opposition Procedure

Published: September 21, 2022

Aliya Madiyarova

Aliya Madiyarova PETOSEVIC Kazakhstan Nur-Sultan, Kazakhstan Building Bridges Committee

Verifier

Alexey Lyajin

Alexey Lyajin Bureau PLIS Almaty, Kazakhstan Publications Committee

Significant amendments to several intellectual property (IP) laws entered into force on August 21, 2022. The most important changes included the introduction of geographical indications (GI) protection and a trademark opposition procedure.

Geographical Indications

Applicants can register appellations of origin (AO) in Kazakhstan at the moment. With the introduction of GI protection, the main difference between AOs and GIs is that when registering AOs, all product stages must take place in the specified geographical area, whereas with GIs, only one stage of production must take place in the specified location, if this production stage significantly influences the product’s quality, reputation, or characteristics. The registration process and requirements for obtaining GI or AO protection are the same, and applicants may convert a GI application into an AO application and vice versa.

The applications and the accompanying documents should be submitted in Kazakh or Russian. If the documents are filed in another language, the applicant should submit the translation within a month of the application filing date.

The Kazakh IP Office will conduct an examination within three months from the application filing date. GI and AO registrations are valid indefinitely, whereas a certificate granting the right to use a GI or AO already registered with either the local IPO or in another jurisdiction, is valid for 10 years from the application filing date and can be extended for an unlimited number of additional 10-year periods.

Trademarks

The changes to the IP laws extend the IP Office’s time limit for completing the formal examination of trademark applications from 10 working days to one month. The substantive examination term remains seven months from the application filing date. At the same time, the IP Office’s time limit to record changes to registered trademarks has been cut from one month to 10 working days. The amendments also considerably reduce the deadline for notifying trademark holders of recorded changes from two months to five working days.

Currently, trademarks that are not capable of distinguishing the goods or services of one person from that of another are refused protection on absolute grounds. The only way to avoid refusal is to impose a disclaimer on a nondistinctive element if it does not occupy the dominant position in the mark. Under the amendments, these elements will not prevent registration if distinctiveness through use was acquired prior to the application’s filing date.

The amendments introduce an opposition procedure for trademarks, AOs, and GIs. The IP Office will publish information on pending GI and AO applications on its website once a week, along with pending trademark applications. An objection on absolute or relative grounds can be filed within one month from the publication date. The IP Office will notify the applicant of the received objection(s) within five working days, and the applicant must respond in writing within three months from the notification date. The IP Office will issue a decision before substantive examination is completed or within seven months from the application filing date. Terms in opposition proceedings cannot be extended.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2022 International Trademark Association

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