Mikhailyuk, Sorokolat & partners offers the full range of legal services related to trademarks in Kazakhstan including trademark search, trademark registration, trademark renewal, recordal of assignment and license agreements, recordal of changes to applications and registrations, as well as representing clients in courts. We do our best to represent our clients' interests in the most efficient and cost-effective manner.
Requirements for trademark registration
According to the legislation of Kazakhstan, designations that are similar with or identical to the trademarks previously registered or applied for registration in respect of similar goods and/or services cannot be registered.
In order to determine whether there are any similar or identical registered trademarks or filed trademark applications that may be opposed to your mark at the examination stage, please use the online trademark search tool which is available on our website or contact us to order professional trademark search.The online trademark search in Kazakhstan
Information and documents needed for filing
- Name and address of the applicant;
- Prints of the trademark;
- List of goods and/or services in accordance with the Nice Classification;
- Certified copies of priority documents, if priority is to be claimed (may be filed to the Kazakh Trademark Office within two months from the filing date);
- Signed and stamped Power of Attorney, in case the stamp is not available POA must be notarized. Legalization is not required (may be filed to the Kazakh Trademark Office within two months from the filing date).
Trademark registration procedure
The Kazakh trademark application undergoes preliminary examination within about 1-2 months after filing. If the application meets filing requirements, corresponding notification is issued, after which the application passes to substantive examination, which is conducted within about 7 months. On condition that a trademark meets the requirements of protectability, the decision about registration is issued, which means that the official registration fee should be duly paid to the Trademark Office. The certificate of registration is issued within approximately 1 month after payment of the official fee. In case the substantive examination finds any obstacles for registration, a provisional refusal in trademark registration is issued, which may be appealed within further 3 months.
The smooth trademark registration procedure takes approximately 9 months in Kazakhstan.
Foreign applicants must be represented by a registered Kazakh trademark attorney
Possible oppositions and cancellation requests
Opposition period against trademark application is not stipulated in Kazakhstan. However, an informational letter containing arguments against trademark registration can be filed to the Trademark Office within the whole examination period, in order to draw examiner's attention to non-compliance of the applied mark with protectability requirements.
Interested parties may also file cancellation requests after trademark registration, namely:
- cancellation based on relative grounds may be filed to the Appeal Board within 5 years from registration;
- cancellation based on absolute grounds may be filed to the Appeal Board within the entire period of validity of the trademark;
- cancellation based on non-use may be filed to the Appeal Board. The grace period is 3 years from registration or prior to the date of filing cancellation.
Trademark validity and renewal
A trademark is valid for 10 years from the filing date and can be further renewed every 10 years. It is possible to apply for trademark renewal within 12 months before expiry of validity term. There is also a 6-month grace period which allows applying for a renewal after the deadline upon payment of stipulated fine. Reinstatement of a lapsed trademark (after expiration of grace period) is not possible.
Required documents: signed and stamped Power of Attorney.
Frequently asked questions
- Can I file a trademark application to Kazakhstan by myself?According to the Kazakh legislation, only citizens of the country may file trademark applications by themselves, foreign applicants should obligatory be represented by trademark attorneys registered in Kazakhstan.
- What are the grounds for refusal in trademark registration in Kazakhstan?A trademark is usually refused in registration if it is similar with or identical to earlier filed or registered trademarks in respect of the same or similar goods/services, as well as in case of lack of distinctiveness or misleading character of a mark.
- How can I conduct a trademark search prior to filing an application?You may order a service of a professional search or use our free online trademark search tool, where you can conduct a search by entering mark name and class number. Please consider the following information when checking the mark name:
— different variants of spelling of the word should be checked (HERMES — ERMES, HERMEZ, etc.);
— parts of the mark should be checked together and separately (MAXINORM — MAX, NORM);
— spelling of the word should be checked both in Latin and Cyrillic (Poker - Покер);
— meaning of the word should be checked in other languages (Dream — Мечта in Russian);
— synonyms and semantically similar words should also be checked (Big father — Big dad).
- Can a multi class trademark application be filed in Kazakhstan?Yes, according to the legislation of Kazakhstan you may file trademark applications with indication of any desired number of classes of the Nice Classification. Still please note that the amount of official fees depends on the quantity of classes.
- What is the cost of a trademark registration?The cost of a trademark registration in Kazakhstan depends on the number of classes in which the registration is required. Please contact us for more detailed information.
- Can a trademark registration procedure be accelerated in Kazakhstan?No, acceleration is not applicable in Kazakhstan. A standard trademark registration procedure usually takes about 9 months.
- What is a non-use cancellation?According to the legislation of Kazakhstan, a third party may file a request for total or partial cancellation of a mark that has not been used for a period of three consecutive years before the date of filing cancellation.
- How many times can a trademark be renewed in Kazakhstan?Trademarks in Kazakhstan may be renewed every 10 years as many times as needed upon payment of corresponding fee.
Please contact us for more information about trademark registration or quotation for filing and prosecution of a trademark application in Kazakhstan.