How to register a trademark in Kazakhstan

Many entrepreneurs have the mistaken belief that in order to start their own business and sell goods or provide services, it is enough to register a company and obtain a license (if necessary). At the same time, they miss other important points, one of which is trademark registration.

According to Kazakh legislation, a trademark is a designation used to distinguish the goods/services of legal entities or individuals from the same goods/services of other legal entities or individuals. The owner has the exclusive right to use and dispose of his trademark in respect of the goods and services specified in the certificate and no one has the right to use the trademark protected in the Republic of Kazakhstan, without their consent. The term of legal protection of a trademark is 10 years from the date of submission of the application with the right of prolongation an unlimited number of times.

It is necessary to know that trademark registration is carried out through the authorized body – the National Institute of Intellectual Property (NIIP RSE) of the Ministry of Justice of the Republic of Kazakhstan. The registration procedure takes about 8-9 months and comprises the following stages:

1. Formal examination – this takes 10 working days. In the course of formal examination, NIIP RSE checks the correctness of the application and availability of the documents required by legislation. In the result of formal examination, notification on admission or rejection in admission of application is sent to the applicant. In accordance with the latest amendments, trademark applications are published in the weekly Trademark Gazette, that allows third parties to get information on the submitted for registration trademark applications.

2. Substantial examination – is conducted within 7 months from the date of submission of the application. In the result of substantial examination, the authorized body shall send an expert opinion on registration or refusal to register a trademark. In case of a positive decision, the applicant shall pay the trademark registration fee. In case of a negative decision of the expert authority, the applicant has the right to file an opposition and defend his right to register a trademark.

3. Registration and publication of the registered trademark – this stage takes 1-2 months from the date of the decision on trademark registration. The information shall be entered into the State Register of Trademarks and published in the official Bulletin.

In order to reduce the risk of refusal to register a trademark, before submitting an application, the applicant may carry out a preliminary check of its designation – a search for identity and similarity with the previously registered/applied for registration trademarks. If, as a result of the check, previously registered or submitted for registration trademarks, preventing registration of a designation has not been found, the applicant may proceed with the drafting and filing the trademark application.

The application shall be submitted online using the official website of NIIP RSE www.kazpatent.kz. in the form of an electronic document through the Personal Account, certified by an electronic digital signature.
The Application should contain:
• Name and address of the applicant;
• Images of the sign in png format;
• The list of goods and services for which the trademark is supposed to be used according to the International Classification of Goods and Services (ICGS).
The following documents shall be attached to the application:
• Power of Attorney – in case of filing the application through a representative. Foreign applicants should apply for registration through a registered Kazakh patent attorney.
• Document confirming payment of the state duty.