Kazakhstan’s Accession to the WTO: What Has Changed in Trademark Use?

The accession of the Republic of Kazakhstan (‘RK’) to the World Trade Organization (‘WTO’) on 27 July 2015 led to the introduction of Law No. 365-V of 27 October 2015, On Amendments to Some Legal Acts of the Republic of Kazakhstan in connection with the Accession to the World Trade Organization. The Law amends 11 legal acts. In this review, we would like to specifically refer to the matters of trademark use.

TRADEMARK USE

The use and protection of copyright and intellectual property, including trademarks, was one of the most important issues during the negotiations on Kazakhstan’s accession to the WTO. Thus, for the purpose of protection of trademarks from illegal use, amendments were made to the following legislative acts of the RK.

1. The Civil Code of the Republic of Kazakhstan (Special Part) dated 1 July 1999

A person unlawfully using a trademark must

•\tdestroy the goods, packaging of goods, appellations of origin, or designation similar to it to the point of confusion, with the exception of original goods with the trademark deposited by the owner of the right;

•\tremove the unlawfully used trademark, appellations of origin, or designation similar to it to the point of confusion from the goods and packaging of goods in the event that the introduction of such goods is necessary for the public benefit;

•\tremove the trademark or designation similar to it to the point of confusion from materials associated with the execution of works or the provision of services, including documentation, advertising, and signboards.

2. Code of the RK dated 18 September 2009, ‘On health of the people and healthcare system.

State expert organizations and state authorities in the sphere of the circulation of medicines, medical devices, and medical equipment are not permitted to disclose and use for commercial purposes the confidential information contained in the applications for state registration, materials of the medicines’ expertise, and the registration reports of medicines containing new chemical substances for six years from the date of state registration of the medicines without the consent of the applicants.

This does not apply

•\tto individuals or legal entities who have been issued a compulsory license for the use of the medicines in accordance with the Patent Law of the Republic of Kazakhstan;

•\tto the use, production, import, export, or distribution of medicines for non-commercial purposes;

•\ton the basis of a court decision.

3. Code of the Republic of Kazakhstan ‘On Administrative Offenses’ dated 5 July 2014

The confiscated goods are subject to being destroyed, except for the original goods with the trademark deposited by the owner of the right or in cases of necessity of their introduction for the public benefit. The possibility of transfer of confiscated goods to the owner of the right, at his request, is eliminated.

4. Patent Law of the Republic of Kazakhstan dated 16 July 1999

When an owner of the patent for an object of industrial property who has not used the object for three consecutive years receives an acceptable commercial offer and refuses to conclude a license agreement, any person may apply to the court for the issuance of a compulsory non-exclusive license upon the expiry of ninety days.

A compulsory non-exclusive license is issued

•\tif the need arises to ensure national security or Medicare;

•\tin case of abuse on behalf of a patent holder of exclusive rights or the promotion of or non-resistance to abuse of such exclusive rights by another person with his consent.

If a compulsory non-exclusive license was issued previously only for the internal needs of the Kazakhstani market, the medications have now been excluded. This means that in cases when such a compulsory non-exclusive license is sought for the export of medicines in accordance with international treaties of the Republic of Kazakhstan, the compulsory non-exclusive license is to be issued.

Information contained in this Client Update is of general nature and cannot be used as legal advice or recommendation. Please note that Kazakhstan is an emerging economy, and its legislation and legal system are in constant development. Should you have any questions or want to discuss matters addressed in this Client Update, please contact us.