On June 20, 2022, Kazakhstan adopted a series of amendments to several intellectual property laws introducing significant changes in the field of intellectual property, including the introduction of GI protection. The changes will come into effect on August 21, 2022.
Geographical indications and designations of origin
An important novelty is the introduction of GI protection. A GI is defined as an indication identifying certain products as coming from a certain geographical area, where certain qualities, reputations or other characteristics of the products can be essentially attributed to their geographical origin. At least one stage of production, which substantially influences the quality, reputation or characteristics of the product, must take place in the territory in question.
It is already possible to register signs and names geographically linked to Kazakhstan as appellations of origin (AO). The main difference between a GI and an AO is the AO’s stronger link to its place of origin – all product steps must take place in the specified geographical area. Other than that, the registration process and other requirements to obtain GI or AO protection are the same. It is also possible to transform an IG application into an AO application and vice versa.
A GI can be registered by several persons, jointly or independently; the right to use a GI belongs to each registrant. The legislation also provides for the registration and use of foreign SGIs, if they are protected in the country of origin.
An application for registration of a GI or AO or the right to use an existing GI or AO must be filed with the Kazakh Intellectual Property Office and must contain the following:
- Representation of the claimed GI or AO;
- Details of the applicant(s), including their location(s) or place(s) of residence;
- Product Description;
- Details of the place of origin or production of the goods, including geographical boundaries;
- Description of the specific characteristics of the product and its connection with the production area – description of the quality, reputation and/or other characteristics, including the raw material used for production (physical, chemical, microbiological, etc.) which is mainly determined by its geographical origin;
- Information on the production process and the storage and transportation of the product, if this has a significant impact on the formation and preservation of the characteristics of the product;
- If the production is based in Kazakhstan, a document issued by a local authority confirming that the applicant produces the goods in a certain geographical area, as well as documents confirming that the quality, reputation and/or other characteristics of the goods are essentially attributable to their geographical origin; and
- Proof of payment of the official fee (to be determined) and, if the applicant is filing through a representative, a copy of the power of attorney form.
GI and AO applications and accompanying documents must be submitted in Kazakh or Russian. If the documents are submitted in another language, the translation into Kazakh or Russian must be submitted within one month from the date of submission of the application.
The Kazakh IPO will conduct a review within three months from the date of filing the application. Registrations of GIs and AOs are valid for an unlimited period, while a certificate granting the right to use an already registered GI or AO is valid for 10 years from the date of filing the application and can be extended for an unlimited number of 10-year periods.
The deadline for formal examination of a trademark application has been extended from 10 working days to one month from the date of filing the application. The duration of the substantive examination remains seven months from the date of filing of the application.
The time limit for the OPI to register changes to registered marks has been reduced from one month to 10 working days. The time period within which the IPO must notify trademark holders of registered changes has also been significantly reduced, from two months to five working days.
Currently, marks that do not distinguish the goods or services of one person from those of another are denied protection on absolute grounds. The only way to avoid a refusal is to impose a disclaimer on a non-distinctive element if it does not occupy the dominant position in the mark. According to the amendments, such elements will not bar registration if distinctiveness through use was acquired before the filing date of the application.
The amendments introduced an opposition procedure for trademarks as well as for AOs and GIs. Along with pending trademark applications, information on pending GI and AO applications will also be published weekly on the IPO website. Any interested person may file with the IPO an opposition on absolute or relative grounds against the pending applications within one month from the date of publication of the application. The IPO will then notify the applicant of the objection(s) received within five working days. The applicant may then respond in writing within three months from the date of notification. The IPO will then issue a decision after reviewing both the objection(s) and the applicant’s response. This decision must be taken before the end of the substantive examination, ie within seven months from the date of filing of the application. It is not possible to extend time limits in opposition proceedings.
Currently, patents cannot be granted for inventions that are, among other things, considered contrary to the public interest and to the principles of humanity and morality. The list of non-patentable inventions has been expanded to include the following:
- Human cloning methods and human clones;
- Methods that alter the genetic integrity of human embryonic cells; and
- Use of human embryos for commercial, military and industrial purposes.
Once the amendments enter into force, it will be possible to submit proof of payment of the patent application filing fee within two months from the date of filing of the application. Currently, proof must be submitted at the time of filing.
With regard to industrial designs, the initial period of validity has been reduced from 15 years to 10 years. However, the term of protection may be extended for additional periods of five years up to three times, for a total maximum term of 25 years from the filing date of the application. Currently, the initial validity period of 15 years can only be extended once for five years.
An unregistered industrial design that meets the requirements of novelty and originality can be protected for three years from the date it was made available to the public in Kazakhstan. An unregistered industrial design or model which has been disclosed to a third party under express or implied conditions of confidentiality shall not be deemed to have been made public. Unregistered industrial design rights can be enforced in court.