Trademarks Filing and Prosecution Kyrgyzstan
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 Kyrgyzstan 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 Kyrgyzstan IP Office. In Kyrgyzstan, trademark protection is granted according to the provisions of Law of the Kyrgyz Republic “On Trademarks, Service Marks and Appellations of Places of Origin of Goods” Version of the Law of the Kyrgyz Republic of February 27, 2003 #46
Trademark in Kyrgyzstan 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 | State Agency of Intellectual Property and Innovation under the Cabinet of Ministers of the Kyrgyz Republic (Kyrgyzpatent) |
| 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 simply Notarized Power of Attorney. |
| Prosecution process | Filing, preliminary examination, registration, Examination of the declared designation, publication, registration, renewal |
| Registration term | 10 years from the date of application. |
| Renewal term | 10 years |
Trademark searches in Kyrgyzstan
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 Kyrgyzstan can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Kyrgyzstan 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 Kyrgyzstan.
Filing trademark applications in Kyrgyzstan
A person may file multi-class or single class trademark application in Kyrgyzstan.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Kyrgyzstan
Ordinary trademark applications filed in Kyrgyzstan are applications without claiming any priority. Multi class trademark applications may also be filed in Kyrgyzstan. 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 Kyrgyzstan /Convention trademark applications Kyrgyzstan:
A priority trademark application may be filed in Kyrgyzstan. A priority trademark application should be filed in Kyrgyzstan 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 Kyrgyzstan within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Kyrgyzstan follows the nice classification of classes. Intellectual property office of Kyrgyzstan 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 Kyrgyzstan
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 9. Absolute grounds for refusal of registration
- The following designations are not registered as trademarks:
- not possessing distinctiveness;
- descriptive, in particular, consisting only of the elements:
- used to designate the type, quality, quantity, properties, composition, purpose, value of goods, as well as the time, place of origin, place and method of their production or sale;
- which have come into general use to designate goods of a certain type:
- which are generally accepted symbols and terms in relation to goods for which it is proposed to use such symbols or terms as signs;
- representing a form of goods that is determined solely or mainly by the property or purpose of the goods;
- representing international non-proprietary names medicinal products;
- containing the full or abbreviated name of the Kyrgyz Republic and words and combinations formed on its basis;
- identical or similar to the point of confusion with the official names and images of cultural heritage sites of the peoples of the Kyrgyz Republic or world cultural or natural heritage sites
- consisting only of elements that represent state coats of arms, flags and other state emblems, official and abbreviated names of states, abbreviated or full names of international organizations, their coats of arms, flags and other emblems, official control, guarantee and assay marks, seals, awards, banknotes and other insignia or designations similar to them to the point of confusion.
- The elements specified in paragraphs 1-4 of Part 1 of this Article shall be included as unprotected elements in a trademark if they do not occupy a dominant position in it.
The elements specified in paragraphs 3-5 of Part 1 of this Article shall be included as unprotected elements in a trademark if there is consent to this from the relevant competent authority or the copyright holder
The list of cultural and natural heritage sites of the Kyrgyz Republic, as well as the procedure for granting consent for the inclusion in a trademark of the elements specified in paragraphs 3 and 4 of Part 1 of this article, shall be determined by the Cabinet of Ministers.
- The provisions of paragraphs 1 and 2 of Part 1 of this Article shall not apply to designations that:
- on the date of filing the application acquired distinctiveness in as a result of their use on the territory of the Kyrgyz Republic;
- consist only of the elements specified in paragraphs 1-2 of Part 1 of this articles and forming a combination that has distinctive properties.
- Registration as trademarks or their elements is not permitted. designations:
- that are false or likely to mislead the consumer regarding the product, its place of origin or its manufacturer;
- representing or containing an indication of the place of origin wines or strong alcoholic beverages protected by international treaties that have entered into force in accordance with the legislation of the Kyrgyz Republic, if such designations are intended for wines or strong alcoholic beverages that do not originate from the specified places, and also formally indicate the true place of production of the goods, but give the erroneous impression that the goods originate from another territory;
- contrary to public interests, principles of humanity and morals.
Article 10. Other grounds for refusal of registration
- Designations that are not allowed to be registered as trademarks are: identical or similar to the point of confusion:
- with trademarks previously registered or applied for registration in the Kyrgyz Republic in the name of another person in relation to similar goods and having an earlier priority;
- with registered trademarks in the Kyrgyz Republic names – in relation to identical or similar types of activities or goods or services that have an earlier priority;
- with trademarks of other persons protected by international treaties that have entered into force in accordance with the legislation of the Kyrgyz Republic, in relation to similar goods and having an earlier priority;
- with well-known trademarks recognized in the Kyrgyz Republic, in relation to any goods from a date earlier than the priority date of the declared designation. The criteria for the well-known status of a trademark in the Kyrgyz Republic and the procedure for recognizing it as well-known are established by the Cabinet of Ministers;
- with the names of works of science, literature and art known in the Kyrgyz Republic, characters from them or quotations, works of art or fragments thereof without the consent of the copyright holder, if the rights to the relevant work arose before the priority date of the registered trademark;
- with the surname, first name, pseudonym and designations derived from them, portraits and facsimiles of famous persons without the consent of such persons, their heirs, and in the event that these designations are the property of the history and culture of the Kyrgyz Republic, without the permission of the Cabinet of Ministers;
- with an industrial design, the right to which in the Kyrgyz Republic belongs to another person, if the industrial design has an earlier priority compared to the trademark applied for registration;
- with geographical indications or appellations of origin of goods protected in accordance with this Law, except in cases where they are included as unprotected elements in a trademark registered in the name of a person who has the right to use such geographical indication or name of the place of origin of the goods.
- Registration of a designation that is similar to the point of confusion with a trademark, trade name or industrial design specified in paragraphs 1-3 and 7 of Part 1 of this Article shall be permitted subject to the provision of written consent from the owner of such trademark, trade name or industrial design, which cannot be withdrawn.
- Designations that are identical or similar to the point of confusion with the name of a selection variety protected in the Kyrgyz Republic may not be registered as trademarks in relation to similar goods.
- On the grounds provided for in this article, legal protection is also not granted to trademarks registered in accordance with international treaties that have entered into force in accordance with the legislation of the Kyrgyz Republic.
Trademark Opposition in Kyrgyzstan
If the preliminary examination is successful, the authorized government agency will publish information about the submitted trademark applications on its official website. The list of information and the procedure for its publication are determined by the authorized government agency.
Within three months from the date of publication of the application, any person has the right to submit an objection in writing containing arguments about the non-compliance of the declared designation with the requirements established by Articles 9 and 10 of the Law.
Trademark registration in Kyrgyzstan
The mark will be registered for a period of 10 years from date of application, and the registration certificate is issued.
Trademark Renewal in Kyrgyzstan
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.