Kazakhstan: IP Enforcement In Kazakhstan. How It Really Works

Last Updated: 8 August 2016
Article by Legalmax IP Law Firm

This article contains general information about IP enforcement practice in Kazakhstan and our recommendations on the best ways for trademark owners to protect their rights.

1. PROTECTION OF TRADEMARK OWNERS' RIGHTS UNDER KAZAKH LAW

In Kazakhstan, trademarks are subject to the Law "On Trademarks, Service Marks and Appellations of Origin of Goods" (1999) (the "Trademark Law").

A trademark is granted protection if it is registered in the State Trademark Register of Kazakhstan as prescribed by the Trademark Law. According to that law, registration of a trademark is evidenced by a trademark registration certificate issued by the Committee for Intellectual Property Rights under the Ministry of Justice of the Republic of Kazakhstan (the "CIPR"). Trademarks are registered in relation to specific classes of goods or services under the NICE Classification; and protection is granted only in respect of goods and services listed in the registration certificate and strictly to the extent of the relevant class. The right to a trademark may also be protected without registration in Kazakhstan under applicable international treaties to which Kazakhstan is a party. The owner of a trademark has the exclusive right to use and dispose of the trademark and to prohibit any unauthorized use thereof by third parties.

The Trademark Law prohibits unauthorized use of confusingly similar trademarks or designations of homogeneous goods used in economic transactions in the Republic of Kazakhstan, including their use:

  1. on goods, labels, or packages that were produced, offered for sale, sold, demonstrated at exhibitions and fairs, or otherwise used in economic transactions, including their storage and transportation for the aforementioned purposes, or on the goods brought into the Republic of Kazakhstan for resale;
  2. in respect of execution of works and provision of services;
  3. in documentation;
  4. in offers of goods; and
  5. on the Internet.

Characterization of counterfeit goods and parallel imports from the perspective of violation of trademark rights.

According to the established interpretation of the relevant Kazakh laws, bringing into, and selling in, Kazakhstan counterfeit goods1 is a violation of trademark rights.

As regards parallel imports, we note that the applicable Kazakh laws do not regulate the principle of exhaustion of rights to trademarks at all. Moreover, until January 2012, Kazakh government and judicial authorities interpreted the gap in the applicable laws regarding the principle of exhaustion of rights to trademarks as non-prohibition of parallel imports.

In January 2012, Russia, Belarus, and Kazakhstan entered into the Agreement on Common Principles of Regulation in Safeguarding and Protection of Intellectual Property Rights in the Customs Union (Moscow, December 09, 2010) (the "Agreement").

The Agreement, in particular, provides that there is no violation of rights to a trademark if the relevant item of goods was legitimately made part of civil transactions in the Customs Union member states personally by the trademark owner or other persons with the owner's consent. Hence, a regional principle of exhaustion of rights to exclusive rights to trademarks was introduced in Kazakhstan in 2012 by the relevant laws. According to the principle, using a trademark in respect of the goods that were legitimately made part of civil transactions in the Customs Union does not constitute violation of the exclusive right to that trademark.

However, despite the provisions of the Agreement, the current situation demonstrates that there is no established clear-cut interpretation of the relevant Kazakh laws treating parallel imports as a violation of trademark owners' rights.

Moreover, Professor T.E. Kaudyrov, an expert in intellectual property rights, believes that parallel imports do not violate trademark owners' rights. According to him, the rights to a trademark may be considered "exhausted" after the relevant item of goods was first sold (made part of economic transactions) abroad. Therefore, since the item of goods was legitimately sold to the importer abroad before being brought into Kazakhstan, the rights of the trademark owner were "exhausted" as a result of the sale and cannot be violated by bringing the goods to Kazakhstan. Regretfully, this "international exhaustion of rights" approach was used when adjudicating certain cases (the 2010 Chivas Regal case).

The databases of court decisions that are open to general public (which, we note, contain only a limited number of court decisions made) include (in addition to the Chivas Regal case) several cases trying to ascertain whether or not parallel imports violate trademark owners' rights. The conclusions made by the judges are not quite consistent.

At the same time, note should be made that both cases dealt with non-standard situations. Namely, in the case prohibiting parallel imports all of the goods were damaged and their import obviously undermined the reputation of the trademark owner (the 2005 Hyundai case).

In the other case, the court based its decision not to allow the claimant to destroy the 'parallel import' goods on, among other things, the fact that the claimant groundlessly demanded that the goods were destroyed as counterfeit goods. The court also found that the claimant did not enter into a license agreement with the trademark owner and that the claimant was not even entitled to file the claim. The court, however, held that since the importer did not import or offer the trademark "as a designation" but imported the goods that were original and were legitimately acquired by the importer aboard, the claimant's rights to the trademark were not violated (the 2009 Hennessy case).

In the 2008 Martini case and the 2009 BAYLEYS case, both seeking prohibition of illegal importation by the defenders of goods under the aforementioned trademarks into Kazakhstan, the Specialized Interdistrict Economic Court also dismissed the claims.

All in all, according to the information available to us, most of the civil (economic) courts hold the view that parallel imports do not violate trademark rights.

Finally, we note that illegal use of trademarks may also be regarded from the unlawful competition viewpoint. Namely, the Law of the Republic of Kazakhstan "On Competition", qualifies a sale of goods that involves illegal use of registered trademarks of a legal entity or illegal use of a designation similar to such trademarks as unfair competition. At the same time, there is no established practice in Kazakhstan for resolving issues related to preventing the dissemination of counterfeit goods or parallel imports in the context of antitrust violations.

2. MECHANISM TO DETECT TRADEMARK CONTAINING GOODS IMPORTED INTO KAZAKHSTAN

The major role in notifying the trademark owner containing goods imported into Kazakhstan play the customs authorities.

In particular, the customs authorities maintain a register of persons who hold rights to using the trademarks registered in Kazakhstan or in the Customs Union and take measures to prevent violation of trademark rights.

Therefore, for the purpose of protecting the trademark rights they should also be included in the customs register of intellectual property items maintained by the customs authorities (articles 436, 438, and 439 of the Customs Code of the Republic of Kazakhstan) (the "Customs Register of Intellectual Property Items").

As regards the measures protecting the trademark owners' rights, the customs authorities may, as part of the customs control procedures, suspend custom clearance of the goods intended for the use in the Customs Union.

Custom clearance of the relevant goods is suspended upon discovery of any elements of a violation of intellectual property rights if such goods contain intellectual property items, are included in the Customs Register of Intellectual Property Items and in the Unified Customs Register of Intellectual Property Items of the Customs Union Member States (article 440 of the Customs Code of the Republic of Kazakhstan) (the "Registers").

The following should be noted in this connection. The applicable laws do not specify what an element of a violation of intellectual property rights actually is. Moreover, as mentioned above, it does not always happen that courts treat parallel imports as a violation of trademark rights. Therefore, there is a possibility that a customs authority may not find elements of a violation of intellectual property rights when clearing original goods imported without the consent of the owner of the relevant trademarks. In fact, customs authorities suspend and are likely to continue to suspend clearance of parallel imports. As authorized representatives of a number of trademark owners we regularly interact with the customs authorities on the issues related to suspension of clearance of grey market goods and can say that the customs authorities, guided by the established practice of applying the customs laws, suspend the clearance of any products bearing a trademark included in the aforementioned registers. At the same time, we may not exclude that their position may change over time.

Should the clearance of goods be suspended, the customs authority must, within one day thereafter, provide the trademark owner or its representative specified in the Registers with details of the goods and of their applicant (article 440 of the Customs Code of the Republic of Kazakhstan).

Initially, the goods intended for domestic use are suspended for ten business days (upon the owner's request, this timeframe may be extended for another ten business days). To ensure that the relevant goods intended for domestic use are not cleared before its origin is ascertained and the owner's interests are protected, the owner must provide the customs authority with either the documents authorizing seizure, confiscation or attachment of the goods, or a court decision to initiate a civil suit in connection with violation of owner's rights. The documents must be provided within the suspension period. Should no such documents be provided upon the elapse of the suspension period, the customs authorities will clear the goods for domestic use.

The aforementioned documents may be obtained when taking measures to protect rights as will be specified in greater detail below.

Please not that should the relevant violation of its rights not prove true, the trademark owner will be liable to the customs applicant/owner/receiver of the goods for the damage (loss) caused by the suspension of their clearance (article 440 of the Customs Code of the Republic of Kazakhstan).

Since in the case of parallel imports there is a certain probability that judicial authorities may deny protection of trademark rights, suspension of clearance of the imported goods may put the trademark owner to additional expenses. At the same time, the trademark owner may examine the goods suspended by the customs authorities (article 440 of the Customs Code of the Republic of Kazakhstan) and quickly, already at an early stage, ascertain whether they are parallel imports or counterfeit goods.

Measures to be taken further will be decided based on the examination results. In certain cases, for the purpose of minimizing expenses or when it is unreasonable to prosecute a specific importer, it may be practical to file an application for clearing the goods with the customs authority.

3. PROTECTION OF A TRADEMARK OWNER'S RIGHTS IN CASE OF COUNTERFEIT GOODS IMPORTED INTO KAZAKHSTAN

3.1. Administrative remedies to protect the rights violated by imports of counterfeit goods

3.1.1. Liability for illegal use of a trademark

Liability for violating trademark owners' rights is provided for in article 45 of the Administrative Offences Code of the Republic of Kazakhstan (the "AOC"). According to the article, illegal use of trademarks, service marks, appellations of origin of the relevant goods owned by other parties or of designations of homogeneous goods and services similar thereto is a violation of trademark owners' rights.

The relevant individual, legal entity, and/or official may be held liable for such violation and subjected to a nominal fine (300-500 US dollars in the case of individuals and up to 500-1000 US dollars in the case of legal entities). Should the individual, legal entity, and/or official commit this violation once again, the fine will be doubled.

At the same time, in addition to imposition of the fine, the article provides for confiscation of goods containing illegal images of trademarks, service marks, and appellations of origin.

As mentioned above, importing and selling counterfeit goods in Kazakhstan is a violation of trademark rights and therefore amounts to the administrative violation provided for in article 145 of the AOC.

Moreover, trademark images on counterfeit goods are also illegal ad such goods must be confiscated.

Below is a brief description of the procedure for holding an importer administratively liable (and our comments thereon).

  • The right to initiate administrative proceedings in connection with the violations provided for in article 145 of the AOC is vested in prosecution and law-enforcement authorities of Kazakhstan.
  • In order to subject an importer to administrative liability and impose penalties on the importer, the trademark owner must file an application for commencement of proceedings for violation of its ownership rights to the trademark (article 634 of the AOC of the Republic of Kazakhstan). The application must be filed with the relevant competent authority at the location of commitment of the administrative violation. The application must include a description of the circumstances under which the violation was committed and provide evidence of ownership of the trademark as well as any information available on the counterfeit goods.
  • The competent authority must examine the application on the merits and make a procedural decision to either commence or refuse to commence administrative proceedings. Should there be sufficient evidence of any elements of a violation, the competent authority commences administrative proceedings and executes a report. The report must be executed immediately after discovery of the violation (receipt of the application); however, should specific circumstances of the violation need to be clarified, the report may be executed within three days (article 638 of the AOC of the Republic of Kazakhstan).

Please note that the relevant government authority may conclude that the elements specified in the trademark owner's application do not amount to an administrative violation and initiate an unscheduled inspection of the importer to ascertain whether or not there are grounds for taking administrative action. The inspection may last for up to 30 days2.

  • In a lawsuit concerning an administrative violation, the trademark owner will be an injured party and have a number of rights, including the right to provide explanations and evidence, and examine all case files.

Note that the trademark owner should keep an eye on its application examination progress. Should the government authority decide not to take measures to protect its ownership rights to the trademark, the owner may appeal this decision to a higher authority or a court.

Moreover, we advise you to make sure that all of the proceedings are carried out in accordance with the applicable laws and that the report meets the requirements of the AOC (articles 635 and 636 of the AOC). This will let you avoid delaying the proceedings or their termination on formal grounds.

  • As mentioned above, the customs authorities suspend clearance of the goods brought into Kazakhstan and intended for domestic use for ten business days. Upon the trademark owner's request, this timeframe may be extended for another ten business days. Should the trademark owner fail to provide the customs authority with the documents authorizing seizure, confiscation or attachment of the goods before the elapse of the aforementioned timeframe, the goods will be cleared (article 440 of the Customs Code of the Republic of Kazakhstan).

At the same time, the competent authority trying a case concerning an administrative violation may seize the counterfeit goods being the subject-matter of the administrative violation for the period of the proceedings (articles 618, 632, and 632-1 of the AOC). Based on the results of adjudicating the case, the seized property will be either confiscated or returned to the owner.

That is why the trademark owner, when applying to a competent authority, should draw the competent authority's attention to the fact that the clearance of the counterfeit goods is temporarily suspended for 10 business days and demand that the goods be seized for the purpose of preventing the administrative violation and clearance of the goods for domestic use.

We think it important to mention that should it be ascertained in the course of the proceedings that the seized goods are not counterfeit goods, the official resolving to seize them will be liable to the owner of the goods for the damage caused by the illegal seizure (article 618 of the AOC).

  • Once the report is executed, the competent authority's official submits it to the court for trying the case concerning the administrative violation.
  • Lawsuits concerning the administrative violation provided for in article 145 are tried by specialized administrative court. Generally, such cases are adjudicated within 15 days after the relevant materials are filed with the court. The trademark owner may participate in the proceedings and provide explanations and evidence related to the case as an injured party.

We believe that when trademark rights are violated by small enterprises or individuals selling counterfeit goods, the most efficient and convenient way to protect your rights is through administrative proceedings.

These measures will become more efficient as the courts become more proficient in adjudicating the cases related to violation of intellectual property rights and the number of such cases grows.

We also note that the use of administrative remedies does not prevent you from simultaneously taking a civil legal action (for example, filing a lawsuit to recover damages). In this case, the materials related to the administrative proceedings may be used as proof at a civil court.

3.1.2. Liability for unfair competition

As mentioned above in Section 2, a sa le of goods that involves illegal use of other people's trademarks or designations similar thereto without the trademark owner's consent is unfair competition (articles 16 and 17 of the Law "On Competition").

Liability for unfair competition is provided for in article 147-4 of the AOC of the Republic of Kazakhstan and provides for imposition of a fine ranging from USD 2,500 (in the case of a sole entrepreneur) to USD 15,000 (in the case of a large-scale business entity).

The article does not provide for confiscation of property.

Subjecting to liability provide for in article 147-4 is done in accordance with the procedure described above in clause 4.1.1, besides a few exceptions.

In particular, the body authorized to execute a report and try a case concerning an administrative violation provided for in the article is the relevant local office of the Agency for the Protection of Competition of the Republic of Kazakhstan (the "Antitrust Agency").

Moreover, before initiating proceedings concerning an administrative violation and executing a report, the Antitrust Agency may carry out an investigation to establish the facts related to illegal use of the relevant trademark.

The investigation may continue for up to thee months3; once the investigation is over, the Antitrust Agency initiates proceedings concerning an administrative violation. Therefore, subjecting a party to administrative liability for unfair competition may take up to several months.

Besides initiating proceedings concerning an administrative violation, the Antitrust Agency may issue the party violating provisions of the competition laws with a mandatory order to cease unfair competition in the form of illegal use of the relevant trademark. Should the violator refuse to comply with the order, the violator may be forced to do that through legal action.

Therefore, subjecting to liability for violating the competition laws may also be a reasonable measure to prevent the importers from violating trademark rights in the long term.

3.2. Criminal remedies to protect trademark rights violated by imports of counterfeit goods

According to the Criminal Code of Kazakhstan, illegal use of trademarks, service marks, appellations of origin or of designations of homogeneous goods and services similar thereto is a criminal offense (subject to such illegal use taking place on repeated occasions or causing heavy damage) that may entail punishment, including correctional labor for up to two years (article 199 of the Criminal Code of the Republic of Kazakhstan). Heavy damage is damage to a legal entity in excess of 1,000 times the monthly calculation index, which, as at June 01, 2014, amounts to USD 2,332 (article 189 of the Criminal Code of the Republic of Kazakhstan).

Therefore, should the administrative violation be committed repeatedly or the damage caused exceed USD 2,332, importing and selling counterfeit goods in Kazakhstan will qualify as a crime and the importer/seller of counterfeit goods may be held criminally liable.

In order to take legal action for illegal use of a trademark, the trademark owner must file an application with the law-enforcement agency at the location of commitment of the offence. The trademark owner will qualify as an injured party to the criminal proceedings.

As in the case of administrative violations, the inquiry officer or investigator may, with the approval of a public prosecutor, issue an order to seize or confiscate the counterfeit goods to satisfy the trademark owner's claim for reimbursement of damages. The order will also constitute grounds for suspension of clearance of the counterfeit goods into Kazakhstan by the customs authorities (as mentioned in Section 3 above).

Criminal prosecution of the persons importing counterfeit goods into Kazakhstan may be the most efficient measure to prevent illegal use of the relevant trademarks.

3.3. Civil remedies to protect trademark rights violated by imports of counterfeit goods

As mentioned above, importing and selling counterfeit goods in Kazakhstan is a violation of trademark rights.

According to the Trademark Law, should a trademark owner's right be violated, the trademark owner may file the following claims with a Kazakh court:

  1. a claim seeking cessation of the violation and (or) reimbursement of the damage caused by the violation;
  2. a claim seeking destruction of a trademark or deletion thereof from the goods, their packages, forms, and other documentation, as well as designations confusingly similar to the trademark. Should it be impossible to satisfy the claim, the relevant goods must be destroyed.

Depending on who violated the trademark owner's rights (an individual or a legal entity), such claim may be filed with a common law court or with a specialized economic court, the location of which is determined, as a rule, based on the defendant's place of residence (registration).

According to the applicable Kazakh laws, claims seeking to protect trademark owners' rights by putting an end to the violation of the rights and deleting (destructing) illegally used trademarks are non-property claims and are subject to a standard state duty.

At the same time, should a claim for reimbursement of the damage caused by illegal use of the relevant trademark be filed either with or without non-property claims, the claim will be subject to a duty of 3% of the claim amount. The maximum amount of the state duty is not limited in Kazakhstan. Therefore, should a claim involve a considerable amount, the amount of the state duty may also be considerable.

Should a claim be satisfied in part, the amount of the state duty will be proportionate to the satisfied part of the claim.

After receiving a claim, the court will, within five days, rule to accept it4. As mentioned above, this ruling is also the ground for extending the suspension of clearance of counterfeit goods intended for Kazakhstan by the customs authorities. That is why we advise you to file with the customs authorities the court ruling to commence proceedings. In this case, clearance of the goods will be suspended until the legal proceedings are over. But we note once again that should the court hold that the import of these goods did not violate the rights of the trademark owner, the latter will be obliged to reimburse the damage caused by the suspension of clearance of the goods for domestic use to the customs applicant/owner/receiver of the goods.

After the claim is accepted, the trademark owner (and any other party to the case) may seek provisional remedies from the court, provided that the defendant stores the relevant goods at warehouses or shops. Applications for provisional remedies are reviewed on the day of submission. Application for provisional remedies should specify that failure to provide provisional remedies may impede or make enforcement of the court decision impossible.

Cases in Kazakh courts are tried within rather short timeframes. In fact, trial courts render decisions within the two months of accepting the claim. However, before a decision takes effect it may be appealed to a court of appeals and to the court of last resort; so, trying a case may take up to six months. Since filing appeals to a court of appeals and to the court of last resort is not subject to any duties, parties often apply to the aforementioned courts to verify the legality of the relevant trial court decision.

Besides appealing to the aforementioned courts, a court decision may be also appealed within a year of becoming effective to the Supreme Court of the Republic of Kazakhstan under the supervisory review procedure. Since supervisory review may be requested only in case of material violations by lower courts, the procedure is very seldom used.

We note that Kazakh courts have gained certain practical experience in protecting trademark owners' rights violated by imports of counterfeit goods, so, in most cases such disputes present no particular problems to them. At the same time, as we mentioned above, protecting trademark owners' rights in court may take some time and is reasonable only in case of material violation of such rights by a large market entity.

In other cases, rights can be protected by issuing the violator with a cease and desist letter. However, efficiency of the method may vary depending on the actual circumstances.

We note that provisions of article 9 of the Civil Code of the Republic of Kazakhstan include general requirements as to reimbursement of damages in connection with trademarks. Namely, according to the relevant provisions of the Civil Code, the person whose right is violated may seek full reimbursement of the damages caused to that person, unless otherwise provided for in the applicable laws or agreement. "Damages" means the expenses that were or will be made by the person whose right is violated (actual damages) and the lost earnings the person would have received in the ordinary course of business had that person's right not been violated (lost profit).

In practice, in order to get reimbursement for the damages suffered, the trademark owner has to request, through court procedures, information about the volumes of counterfeit goods produced and sold and calculate, on its own, the amount of lost profits (there are no procedures for calculating industrial property damages in Kazakhstan). Due to a lack of the relevant regulations and a total lack of past court decisions related to ascertaining the amount of damages, the trademark owner is sometimes unable to get reimbursement for the damages suffered.

4. PROTECTION OF A TRADEMARK OWNER'S RIGHTS IN CASE OF 'PARALLEL IMPORT' GOODS IMPORTED INTO KAZAKHSTAN

4.1 Today, there are no administrative or criminal remedies in Kazakhstan to protect trademark rights violated by parallel imports

Unlike in the case of protection of rights violated by imports of counterfeit goods, remedies against parallel imports are limited. Like we explained it in sufficient detail above, there is no consensus of opinion as to whether or not parallel imports violate trademark rights.

Though there are court decisions (that are open to general public) dealing with administrative or criminal violations, our own experience shows that so far parallel imports have not been regarded as amounting to the administrative offence provided for in article 145 of the AOC of the Republic of Kazakhstan or as the criminal offence provided for in article 199 of the Criminal Code.

As mentioned above, approaches to the protection of trademark rights violated by parallel imports may change as the Agreement on Common Principles of Regulation in Safeguarding and Protection of Intellectual Property Rights (Moscow, December 09, 2010) is implemented.

It should be noted specifically that even if parallel imports is recognized as a violation of trademark rights, penalties therefore will be limited to fines that are, in fact, small. As mentioned above, confiscation provided for in article 145 of the AOC of the Republic of Kazakhstan may be resorted to only in respect of the goods that contain an "illegal image" of the relevant trademark. Since in the case of parallel imports the goods are original and the trademark image is applied thereon legally, the administrative penalty in the form of confiscation of the goods may not be resorted to in the case of such violation.

4.2. Civil remedies to protect trademark rights violated by parallel imports

As regards protection of trademark rights by filing a claim, there hardly is an established practice of adjudicating such suits. We are aware of only three lawsuits filed by trademark owners against importers of grey market goods; in two of the three lawsuits the courts held that parallel imports did not violate the relevant trademark rights.

This practice, however, cannot be viewed as established because the latest amendments to the applicable laws were made not so long ago (with the introduction of the Customs Union laws). Besides, as we mentioned above, it is expected that protection against parallel imports is going to be strengthened in the Customs Union. This, as well as the fact that existing decisions of Russian courts favor the interpretation that parallel imports violate trademark rights, allows us to conclude that in certain cases such civil claims may be upheld by courts.

At the same time, given the inconsistency of the court decisions currently made by Kazakh courts, we do not advise you to submit to the customs authorities documents of applying to courts for the purpose of extending the suspension of clearance of goods for domestic use.

As we mentioned above, this may put the trademark owner to additional expenses associated with reimbursement of damages caused by suspension of clearance, should the claim be dismissed. At the same time, even if the goods for domestic use are cleared, the trademark owner still may prosecute the importer and obtain precedent court decisions.

So, decision to file a civil claim with a court should be made subject to taking into account the facts and circumstances of each particular situation in order to avoid an undesired precedent and obtain a favorable court decision to be used in future lawsuits.

Peculiarities of Kazakh courts (which, in certain circumstances, may lack expertise and transparency when dealing with protection of trademark rights or be biased or influenced) should also be taken into account.

Finally, an important factor is financial and time expenditures for prosecution of the relevant importer.

In summary, should counterfeit goods be imported into Kazakhstan, a trademark owner may protect its rights in several ways:

  1. Applying to a local prosecution or law-enforcement authority to institute a lawsuit concerning the administrative violation provided for in article 145 of the AOC of the Republic of Kazakhstan. Should the violator be subjected to administrative liability, the court will impose a fine on the violator and confiscate the counterfeit goods;
  2. Applying to government authorities to institute criminal proceedings in accordance with article 199 of the Criminal Code of the Republic of Kazakhstan;
  3. Filing a claim with a court seeking protection of violated trademark rights, including cessation of the violation, reimbursement of the damages caused, and destruction of the counterfeit goods.
  4. Besides, the relevant importer may be held liable for violating the applicable competition laws.

As regards protection against parallel imports into Kazakhstan, the only way that is currently worth considering is filing a claim with a court seeking protection of violated trademark rights, including cessation of the violation, reimbursement of the damages caused, and destruction of the counterfeit goods. However, due to the current practice of interpretation of the applicable laws, this option does not fully guarantee that the relevant trademark rights will, indeed, be protected.

Based on the analysis, we conclude that Kazakhstan has mechanisms to ensure efficient protection of trademark owners' rights against imports of counterfeit goods into the country. Importers of counterfeit goods may be subjected to civil, administrative, or criminal liability and may be required to destroy counterfeit goods and reimburse the damages.

However, in the case of parallel imports, there is no established clear-cut practice of interpretation of the relevant Kazakh laws ensuring efficient protection of trademark owners' rights. Moreover, several courts held that parallel imports do not violate trademark owners' rights. The situation with the imports violating trademark owners' rights may improve as the relevant laws of the Customs Union between Russia, Kazakhstan, and Belarus will develop.

Footnotes

1 In this article, counterfeit goods shall mean homogeneous goods that include intellectual property assets (trademarks) created in violation of owners' rights.

2 We note that the government authorities of Kazakhstan often fail to observe the timeframes for examining applications because the applicable laws contain a sufficient number of formal grounds for extending and suspending such timeframes and do not provide for any efficient mechanisms for subjecting such government authorities to liability for their non-observance.

3 The Law "On Competition" provides for conducting a preliminary investigation (within one month) followed by the main investigation (within two months). The preliminary investigation and the main investigation may be extended for up to one and two months, respectively.

4 Subject to the claim being filed in compliance with all of the requirements provided for in the applicable procedural laws.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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