Trademarks well-known trademarks use of trademarks the RK

Trademarks: well-known trademarks, use of trademarks, the RK Mo. J Board of Appeal

The well-known marks The following marks may be recognized as well-known in the RK: - a trademark registered in the RK; - a trademark protected by virtue of international treaties (for example, Agreement on Eurasian Economic Union); - a designation used as trademark without legal protection in the RK.

Application for registration of a trademark An application shall contain: - Name, address of an applicant, address for correspondence; Data on protection of a trademark (registered, not registered, etc. ); Picture of a trademark (copies of a trademark shall be attached to an application); - Date from which a trademark is recognized well-known in view of an applicant; - Goods and services with respect to which a trademark is well-known. An application shall be accompanied by: - Information confirming well-known status; - Po. A (if an application is filed through a representative); - Receipt confirming payment of the state fee for registration of a trademark.

Information confirming well-known status - OBLIGATORY! Results of the Opinion poll conducted in the RK in six cities, regions, including Almaty and Astana. The amount respondents shall not be less than 3, 000 persons (not less than 500 persons in each region). The poll shall be conducted among ordinary consumers and specialists in certain sphere. Respondents shall respond particular questions. - OPTIONALLY! Information reflecting intensity of use, ways of use, volume of realization of goods and/or services, average amount of consumers, intensity of advertisement, amount of licensees (if any), registration of a mark all over the world and other information.

Procedure of recognition The procedure of recognition of trademarks as well-known includes the following steps: 1. The application is filed with the RK Ministry of Justice. 2. In 2 months from the date of filing of an application the RK Mo. J conducts preliminary examination of documents and: - Informs an applicant on acceptance of the application; - Publishes materials for acknowledgement by the public. 3. After 3 months from the date of publication, an application the Commission on Acknowledgement of Trademarks as Well-known (the “Comission”) of the RK Mo. J starts consideration of the application. 4. The RK Mo. J has 6 months to consider an application. 5. The RK Mo. J forwards the objections against acknowledgement of a trademark as well-known to an applicant. An applicant has the right to respond to such objections to the RK Mo. J. 6. The RK Mo. J by its Commission takes the decision with respect to an application to satisfy or deny the request of an applicant to acknowledge the trademark as well-known. NB: An applicant has the right to amend and supplement an application during the period of consideration of an application by the RK Mo. J.

Ground for refusal The trademark can be refused in recognition as well-known in the following cases: - There is not enough evidence confirming well-known-status of the trademark; - There is earlier registered identical or confusingly similar trademark protected in the name of an entity other than an applicant with respect to homogenous goods and/or services with the earlier priority that the date of acquisition of well-known status by a mark filed for recognition as well-known.

In case of recognition • The well-known trademark is recorded in the RK Register of Wellknown trademarks; • The Certificate of well-known Trademark is issued in the name of an applicant. - Period of validity of the certificate is 10 years from the date of acquisition of the well-known status. - It can be extended each 10 year in case of provision of evidence confirming well-known status. NB: The owners of trademarks which are identical or confusingly similar to a well-known trademark and registered before such trademark was recognized as well-known shall retain the right for their further use for as long as is specified by the authorized body but no less than for seven years.

Protection of the well-known trademark ceases the effect • When the registration certificate expires; • Due to court decision acknowledging the decision of the RK Mo. J on recognition of a trademark as well-known invalid; • Denunciation of a trademark; • Loss of the well-known status.

Well-known trademarks registered in KZ (16 marks) COCA-COLA FANTA SPRITE Халық Народный МАRLВОRО Halyk АРАРАТ КАЗКОММЕРЦ L&М ВОND SТRЕЕТ

Obligation to use of the trademark • The owner of the trademark shall be obliged to use the trademark. • Any interested party may submit to the Board of Appeal of the Mo. J a cancellation action against registration of a trademark in connection with its non-use continuously during THREE years from the date of registration or THREE years preceding the submission of the opposition. - The opposition may relate to all or part of goods specified in the certificate. - The Board of Appeal within six months deadline from the date of its receipt.

Transfer of the right to the trademark Assignment - - The trademark in whole or in part can be assigned. Form of the assignment agreement – registration with the National Institute for IP. The agreement enters into force from the date of registration. License - License can be exclusive and nonexclusive. - Form of the assignment agreement – registration with the National Institute for IP. NB 1: the license agreement ceases the effect when registration of the trademark ceases its effect. NB 2: assignment of the trademark does not lead to termination of the license agreement, except otherwise is stated by an agreement itself. - The agreement enters into force from the date of registration.

Registration of the assignment/license agreement • • • Documents to be filed for registration Procedure of registration Inquiries of the National Institute for IP Grounds for refusal in registration What is done after the registration

Termination of the trademark The registration of the trademark shall cease its effect: - on the expiration of the term provided by the Law; in case of liquidation of the legal entity or cessasion of activity by a natural person that owns the trademark; on renunciation in writing by the owner of the trademark; Invalidation action in case of non-use of the trademark or violation of the legislation in the process of registration of the trademark. The National Institute for IP makes an entry into the State Register of Trademarks concerning a cancellation of the trademark registration because of expiration of its term or its invalidation.

Invalidation of the trademark The registration of the trademark shall be deemed invalidated entirely or in part by the decision of the Board of Appeal or Court on the following grounds: - During the entire term of protection – if it was carried out in violation of requirements as established Articles 6 and 7, except for subparagraphs 1) – 3) of paragraph 1 of Article 7 of the Law. - During five years from the date of registration of trademark – if it was carried out in violation of requirements as established by subparagraphs 1) – 3) of paragraph 1 of Article 7 of the Law; - During the entire term of protection – on the basis of non-use.