Trademarks grounds for refusal and other issues

Trademarks: grounds for refusal and other issues

Absolut ground for refusal The below elements of Point 1 Art. 6 can be disclaimed if do not occupy dominating position • that have become the customary designation for goods of a particular type (пп. 1 ст. 6); • that are symbols or terms in common use (пп. 2 п. 1 ст. 6); • that specify the type, quality, quantity, properties, function or value of the goods, or the place and time of their manufacture or sale (пп. 3 п. 1 ст. 6) • that having direct descriptive and (or) associative connection with goods and services filed (пп. 6 п. 1 ст. 6) Examples Джип (Jeep) Аэробус (Airbus) Лего (LEGO) Тетрапак (Tetra Pak) COLGATE 360° PRO INTERDENTAL (toothbrushes) “ 360°” and “PRO” and “INTERDENTAL” are disclaimed (пп. 2 и пп. 3 п. 1 ст. 6) Чаша со змеей для медицины • COLGATE ВОССТАНОВЛЕНИЕ ЭМАЛИ И ЗДОРОВЬЕ ДЕСЕН (toothpaste) ВОССТАНОВЛЕНИЕ ЭМАЛИ И ЗДОРОВЬЕ ДЕСЕН – is disclaimed (пп. 3, пп. 6 п. 1 ст. 6). Например, слова «люкс» , «супер» .

Absolut ground for refusal Marks forbidden for registration Examples • that are inaccurate or liable to mislead as to the product or its producer, including geographical indications liable to mislead as to the place of product manufacture (пп. 1 п. 3 ст. 6) • • that formally indicate the real place of product manufacture, but give a wrong impression that the product originates from another territory (пп. 2 п. 3 ст. 6) that are or include geographical indications identifying mineral waters, wines or hard liquors, to designate such products not originating from this place or where a translation is used or a sign is accompanied by such expressions as "type" or "style" or something like that (пп. 3 ст. 6) that are contrary to the public interest, humanitarian principles or morality (пп. 4 п. 3 ст. 6) • • • «Сливочный кофе» with respect to bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions (пп. 1 п. 3 ст. 6) Use of Chinese characters in trademarks • Масло вологодское, Тульский пряник, Пармезан, шампанское • Strong language, pictures of smoking people

• Those signs may not be registered as trademarks that reproduce armorial bearings, flags or emblems of States, abbreviated or full names of international organizations, official signs or hallmarks of control, warranty or assay, Olympic symbol, decorations and other honorary signs as well as signs that are confusingly similar to such signs. NB: Such signs may be used as unprotected elements, provided that there is a consent for this of a competent authority or the owner thereof.

Relative ground for refusal Marks identical or confusingly similar to the following are not registered: • trademarks registered in the Republic of Kazakhstan earlier in the name of other person for goods or services of the same type; • trademarks that are well known in the Republic of Kazakhstan for goods and services of any type; • signs in respect of which an application for registration has been filed previously with Kazpatent in the name of a third party for goods and services of the same type, (excepting those withdrawn); • appellations of origin protected in the Republic of Kazakhstan, except where they can be incorporated as unprotected elements in a trademark registered in the name of a person authorized to use the said appellation of origin. • Theoretically this does not prevent registration identical marks in the name of one and the same person • Trademarks registered as well-known • Filed applications • МИНЕРАЛЬНАЯ ВОДА "КАРАЧИНСКАЯ“, ЕССЕНТУКИ № 4

Examples of similar marks MONSTER (МР 651256)

Priority of trademarks • • The priority of a trademark shall be determined by the filing date of the application in National Inst. for IP. The priority of a trademark may be determined by the filing date of the first application for the trademark in a State party to the Paris Convention for the Protection of Industrial Property provided that National Inst. for IP receives the application within six months following the said date. The priority of a trademark affixed to a product displayed at officially recognized international exhibitions may be determined by the date as from which the product in question was on public display at the said exhibition (exhibition priority), provided that National Inst. for IP receives the application within six months following the said date In case of a divided application the priority of each of them shall be determined by the priority date of the first application Multiple priority – different priority can be established with respect to particular goods and services in application

International classification of goods and services

Relative ground for refusal The following marks are not registered: • industrial designs protected in the Republic of Kazakhstan in the name of other persons on condition that they have priority; • titles of known literary, scientific or artistic works, or artistic works or parts of such works, that are protected by copyright; • surnames, forenames, pseudonyms and names derived therefrom, and portraits and likenesses, where the reproduction of those elements infringes the non-pecuniary personal rights of the persons concerned, or theirs or successors in title, or where those elements form part of the historical and cultural heritage of the Republic of Kazakhstan and are reproduced without the consent of the competent authority.

Period of protection of a trademark • 10 years from the date of filing with unlimited times of extension. • Extension is made during the last year of protection