Kazakhstan Amends Several IP Laws, Introduces GI Protection
On June 20, 2022, Kazakhstan adopted a set of amendments to several intellectual property laws introducing significant changes in the IP field, including the introduction of GI protection. The amendments will enter into force on August 21, 2022.
Geographical Indications and Appellations of Origin
An important novelty is the introduction of GI protection. A GI is defined as an indication identifying certain goods as originating from a certain geographical area, where certain quality, reputation or other characteristics of goods can essentially be attributed to their geographical origin. At least one stage of production, which substantially influences the quality, reputation or characteristics of the product, should take place on the territory in question.
It is already possible to register geographically related signs and names in Kazakhstan as appellations of origin (AO). The main difference between a GI and an AO is AO’s stronger link with its place of origin – all product stages must take place in the specified geographical location. Apart from that, the registration process and other requirements for obtaining GI or AO protection are the same. It is also possible to transform a GI application into an AO application and vice versa.
A GI may be registered by several persons, either jointly or independently; the right to use a GI belongs to each registrant. The legislation also provides for the registration and use of foreign Gis, if they are protected in the country of origin.
An application for the registration of a GI or AO or the right to use an existing GI or AO should be filed with the Kazakh Intellectual Property Office and must contain the following:
- Representation of the claimed GI or AO;
- Details about applicant(s) including their location(s) or place(s) of residence;
- Product description;
- Details about the place of origin or production of goods, including geographical borders;
- Description of specific product characteristics and its link with the production area – description of quality, reputation and/or other characteristics, including the source material used for production (physical, chemical, microbiological, etc.) which is primarily determined by its geographical origin;
- Information on the production process and product’s storage and transportation, if this has a significant impact on the formation and preservation of the product’s characteristics;
- If the production is based in Kazakhstan, a document issued by a local authority confirming that the applicant produces the goods in a certain geographical area, as well as documents confirming that the quality, reputation and/or other characteristics of goods are essentially attributable to their geographical origin; and
- Proof of payment of the official fee (which has yet to be determined) and, in case the applicant is filing through a representative, a copy of the Power of Attorney form.
GI and AO applications and the accompanying documents should be submitted in Kazakh or Russian. If the documents are submitted in another language, the translation into Kazakh or Russian should be submitted within a month from the application filing date.
The Kazakh IPO will conduct an examination within three months from the application filing date. GI and AO registrations are valid for an unlimited period of time, while a certificate granting the right to use an already registered GI or AO is valid for 10 years from the application filing date, and can be extended for an unlimited number of additional 10-year periods.
The time limit for the formal examination of a trademark application has been extended from 10 working days to one month from the application filing date. Substantive examination term remains seven months from the application filing date.
The time limit for the IPO to record changes to registered trademarks has been reduced from one month to 10 working days. The deadline within which the IPO has to notify trademark holders of recorded changes has also been substantially reduced, 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 non-distinctive element if it does not occupy the dominant position in the mark. Under the amendments, such elements will not represent an obstacle to the registration if distinctiveness through use was acquired prior to the application’s filing date.
The amendments have introduced an opposition procedure for trademarks as well as for AOs and GIs. Along with pending trademark applications, information on pending GI and AO applications will also be published weekly on the IPO’s website. Any interested person can file an objection on absolute or relative grounds against pending applications with the IPO within one month from the application publication date. The IPO will then notify the applicant of the received objection(s) within five working days. The applicant can then respond in writing within three months from the notification date. The IPO will then issue a decision after considering both the objection(s) and the applicant’s response. This decision must be made before substantive examination is completed, which is within seven months from the application filing date. It is not possible to extend any time limits in opposition proceedings.
Currently, patents cannot be granted for inventions that are, inter alia, considered contrary to the public interest and principles of humanity and morality. The list of non-patentable inventions has been expanded to include the following:
- Human cloning methods and human clones;
- Methods that modify the genetic integrity of human embryo cells; and
- Use of human embryos for commercial, military and industrial purposes.
Once the amendments enter into force, it will be possible to submit a proof of payment of the patent application filing fee within two months from the application filing date. Currently, a proof must be submitted at the time of filing.
With respect to industrial designs, the initial term of validity has been reduced from 15 years to 10 years. However, the protection term can be extended for additional five-year periods up to three times, for a total maximum term of 25 years from the application filing date. Currently, the initial 15-year validity period can only be extended once for five years.
An unregistered industrial design that meets the novelty and originality requirements may be protected for three years from the date it was first made available to the public in Kazakhstan. An unregistered industrial design that has been disclosed to a third party under explicit or implicit conditions of confidentiality will not be deemed to have been made public. Unregistered industrial design rights can be enforced in courts.
By: Aliya Madiyarova
For more information, please contact Aliya Madiyarova at our Kazakhstan office.