New upcoming amendments and changes to the Law on Intellectual Property in the Republic of Kazakhstan

New upcoming amendments and changes to the Law on Intellectual Property in the Republic of Kazakhstan

On June 2, 2022, the Senate of the Parliament of the Republic adopted the law “On amendments and additions to certain legislative acts of the Republic of Kazakhstan on improving legislation in the areas of intellectual property and providing state-guaranteed legal assistance”.

According to the additions to the law, a new object of intellectual property is being introduced - a Geographical Indication. Legal protection of a geographical indication is provided on the basis of their registration in the manner prescribed by the Law of the Republic of Kazakhstan “On Trademarks, Service Marks, Geographical Indications and Appellations of Origin”, as well as by virtue of international treaties of the Republic of Kazakhstan. According to the law, a Geographical Indication is a designation that identifies a product originating from the territory of a geographical feature, a certain quality, reputation or other characteristic of which is largely related to its geographical origin. On the territory of a given geographical object, at least one of the stages of production of a product that has a significant impact on the formation of its characteristics must be carried out.

The second important change is the clause regarding the term of a patent for an industrial design, which is now ten years. However, the term of a patent may be extended by the Kazpatent at the request of the patent owner each time for five years. In this case, the total duration of the patent should not exceed twenty-five years from the date of filing the application.

In addition, the concept of "Unregistered industrial designs" is introduced. According to the law, now, an industrial design that meets the requirements of novelty and originality can be protected without registration and issuance of a patent for three years from the date when the industrial design was first made public (disclosed) in the Republic of Kazakhstan. An unregistered industrial design is considered new if no identical industrial design was made public (disclosed) before the date when the unregistered industrial design was first made public (disclosed).

It should be noted that an unregistered industrial design is considered to be made public (disclosed) for the first time if it was published, exhibited at an exhibition, used in trade or correctly communicated to circles specializing in this business sector operating in the Republic of Kazakhstan. An unregistered industrial design that is disclosed only to a third party on the terms of confidentiality, either stated or implied, is not considered to be made public.

The owner of an unregistered industrial design has the right to prevent the illegal use of his design by third parties only if the disputed use is the result of copying his unregistered industrial design. The disputed use shall not be considered to be the result of copying an unregistered industrial design if it resulted from independent work on another industrial design by the author, who can reasonably be considered to be a person who did not have knowledge of the published industrial design.

According to the amendments to the Law on Trademarks of the Republic of Kazakhstan, it became possible to file an objection to the registration of the claimed designation as a trademark with the Kazpatent after the publication of information about the trademark application, and not from the date of registration of the trademark as it was before.

The procedure for the examination of an application remains the same, and the examination of a trademark application is also carried out in stages:

1) preliminary examination - within one month from the date of filing the application;

2) full examination - within seven months from the date of filing the application, during which the compliance of the claimed designation with the requirements established by Articles 6 and 7 of the Law on Trademarks of the Republic of Kazakhstan is checked.

It should be noted that any interested person has the right to file an objection to the registration of the claimed designation as a trademark to the Kazpatent on the grounds provided for in Articles 6 and 7 of the Law on Trademarks of the Republic of Kazakhstan within one month from the date of publication of information about the application.

Now, the Kazpatent sends the applicant a notice of the objection(s) received (received) within five working days from the date of its (their) receipt with a copy of the filed objection(s) attached. The applicant has the right to express his written position regarding the filed (filed) objection (objections) against the registration of the claimed designation as a trademark within three months from the date of sending him the notification. When making a final decision on the application, the Kazpatent, taking into account the objection (objections) of the interested person (stakeholders) and the position of the applicant, issues an appropriate expert opinion.

Another change was made to Article 30 of the Patent Law of the Republic of Kazakhstan on the recognition of a Kazakhstan patent and (or) a Eurasian patent as invalid and early termination of their validity.” According to the new text, a Kazakhstan patent and (or) a Eurasian patent is invalidated in whole or in part on the basis of a court decision. In the event that the patent owner makes changes to the claims, description, drawings or image in the Kazakhstan patent and (or) the Eurasian patent, which will ensure the patentability of the invention, utility model or industrial design, the Kazakhstan patent and (or) the Eurasian patent shall be invalidated partially. The Kazakhstan patent and (or) the Eurasian patent, which have been amended, continue to be valid under the same numbers. 

And the last change was that the institute of patent attorneys representing the interests of applicants and right holders in the authorized body, Kazpatent and courts is being improved. According to the new text of the Law of the Republic of Kazakhstan "On advocacy and legal assistance", legal consultants will be included in the system of providing state-guaranteed legal assistance. Thanks to this, representatives of vulnerable segments of the population will have the opportunity to receive legal assistance free of charge.

After discussing the norms of the law, the deputies adopted the document in two readings. The bill has been sent for signature to the President of the Republic of Kazakhstan.