A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Kazakhstan IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Kazakhstan IP Office. In Kazakhstan, trademark protection is granted according to the provisions of Law No. 456 of July 26, 1999, on Trademarks, Service Marks and Appellations of Origin, Kazakhstan.
Trademark in Kazakhstan may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Directorate General of Intellectual Property (DGIP) |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | YES |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and a Simply signed Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Kazakhstan
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Kazakhstan can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Kazakhstan to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Kazakhstan.
Filing trademark applications in Kazakhstan
A person may file multi-class or single class trademark application in Kazakhstan.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Kazakhstan
Ordinary trademark applications filed in Kazakhstan are applications without claiming any priority. Multi class trademark applications may also be filed in Kazakhstan. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Kazakhstan /Convention trademark applications Kazakhstan:
A priority trademark application may be filed in Kazakhstan. A priority trademark application should be filed in Kazakhstan within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Kazakhstan within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Kazakhstan follows the nice classification of classes. Intellectual property office of Kazakhstan uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Kazakhstan
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal.
Article 6. Absolute grounds, excluding the registration of a trademark
1. The registration of trademarks, consisting exclusively of designations that cannot be distinguished, shall not be allowed, which are:
1) in universal use for designation of goods of a particular kind;
2) generally accepted symbols and terms;
3) indicating to the kind, quality, quantity, properties, function, value of goods, as well as the place and time of their manufacture or sale;
4) excluded by the Law of the Republic of Kazakhstan dated 12.01.2012 No. 537-IV (shall be enforced upon expiry of ten calendar days after its first official publication);
6) having a straight narrative, and (or) an associative link with the goods or services for designation of which they are used;
These designations may be used as unprotected elements of a trademark, if they do not occupy a dominant position therein.
- The designations, reproducing the national state emblems, flags and emblems, abbreviations and full names of international organizations and their coats of arms, flags and emblems, official control, warranty or hall marks, stamps, Olympic symbols, awards and other distinctions, and the designations that are similar to them to the point of confusion shall not be registered as trademarks.
Such designations may be used as unprotected elements, if the designation does not consist of only one of them and if there is consent of the competent body or the owner on their use.
2) The designations that are:
- false or liable to mislead about the good or its manufacturer, including the names of geographical units that can be misleading as to the place of production of goods;
- formally indicating to the true place of production, but give a wrong impression that he good comes from another territory;
- representing or containing the names of geographical units, identifying mineral water, wine or spirits, to refer to such goods not originating from this place, and if the translation is used, or the designation is accompanied by expressions such as “kind”, “type”, “style” or similar;
- contrary to the public interest and the principles of humanity and morality shall not be allowed to register as trademarks and their elements.
Trademark Opposition in Kazakhstan
As of 21 August 2022, an opposition procedure for trademarks has been introduced in Kazakhstan. Any interested person, within one month from the date of publication of the mark in the Official Bulletin, has the right to file an objection to the expert organization against registration of the declared designation as a trademark on the grounds provided for in Articles 6 and 7 of this Law.
Trademark Registration in Kazakhstan
After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.
Trademark Renewal in Kazakhstan
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.