Russia continues to adopt countermeasures against the sanctions imposed on Russia. One of the most recent countermeasures concerning intellectual property rights is the Decree-Law of March 2022 which legalized parallel import of certain goods into Russia.
Trademarking in Central Asia
The second episode in our spring 2021 IP webinar series looked at Kazakhstan, Kyrgyzstan, Turkmenistan and Tajikistan. Here we summarize the most important takeaways for protecting trademarks in the region.
For more than 2000 years, the area that covers Kazakhstan, Kyrgyzstan, Turkmenistan and Tajikistan has been crisscrossed by trade routes between Asia and Europe.
Today, these countries are important markets in their own right, often receiving goods and services from China as part of its Belt and Road Infrastructure project. In this competitive environment – where counterfeit goods are not uncommon – IP protection is essential.
“Any company operating in this region should pay careful attention to protecting intellectual property rights and trademarks, as infringements can leak across from other parts of Asia,” says Trademark Attorney and Papula-Nevinpat Partner, Annikki Hämäläinen.
While the details and requirements of applying for IP protection differ between each of the four countries, there are important similarities too.
Power of attorney is always required, trademark applications must be filed in the local language, and foreign applicants have to act through local patent attorneys. All four countries follow the latest edition of the Nice Classification and allow a single trademark to be filed across multiple classes.
New applications in Kazakhstan are examined within 10 days of filing and published within 15 days. After seven months, an application is either accepted or office action is required.
“As Kazakhstan has two official languages – Kazakh and Russian – trademarks in Latin and Cyrillic are considered identical, so you can file a single application for both,” says Hämäläinen. “Marks should be submitted in exactly the way they will be used. For example, if you want to use a logo in a specific color, it should be filed in that color and not just in black or white.”
Trademarks in Kazakhstan can only be opposed once they have been registered. There is no published database of applications and thus no opportunity for opposition at the application stage. The only option is to wait for registration, after which there is a period of five years for any opposition action.
“There are now discussions in Kazakhstan around this particular part of the process, but it’s hard to estimate when any changes would be taken into practice,” says Hämäläinen.
“Another important thing to know about Kazakhstan is that you need to renew your trademark every 10 years, and prove that it is still widely recognized,” she says. “This means conducting opinion polls, gathering evidence and submitting documentation to the patent office. It’s a challenging and expensive process.”
Registration in Kyrgyzstan typically goes smoothly, although at 12-15 months it is on the lengthier side. However, there is an option for companies to pay official additional fees that reduce the process to nine months or less.
International and national registrations enjoy equal protection, although national ones may be approved more quickly. Cancellation actions due to non-use will be considered by the court, but are costly and the burden of proof lies on the plaintiff.
“Kyrgyzstan closely follows the Nice Classification, which was in our benefit when arguing against an office action towards registering the mark ‘Lmax’,” says Hämäläinen.
“The reason for the office action was that the trademark ‘LIMAX’ had already been registered,” she says. “But we argued that the marks are used in completely different fields of business and thus regular consumers will not be misled. The examiners agreed with us and the mark ‘Lmax’ was registered.”
Applications in Turkmenistan are typically approved within 12 months. Formal requirements are strict and court cases are very rare.
The country amended its trademark law in 2019 with some significant changes. Among these is the introduction of new grounds for refusal of names included in the World Health Organization’s list of pharmaceuticals.
“Of note in Turkmenistan is that the patent office can provide assistance in infringement cases. This is not common in the other Central Asian countries,” says Hämäläinen. “After sending a cease-and-desist letter, you can approach the patent office and they will invite representatives from customs, the police, and other official parties.”
The registration process in Tajikistan is slow – often lasting up to 24 months. Formal requirements are extremely strict, including mandatory power of attorney and the use of official company stamps. All information must be typed into applications. Other than a signature, no handwriting is permitted at all – not even to state the place and date of signing.
“In Tajikistan, it is difficult to register letter combinations that have no meaning, such as the international trademark ‘AGC’, for example,” says Hämäläinen. “The reason being that the patent office considers these kind of trademarks to be non-distinctive.”
“We also had some challenges around registering the marks ‘Black Shield’, ‘Black Bay’ and ‘Black Bay Fifty-Eight’ in Class 14 for watches and jewelry. The challenge came from the fact that ‘Black Star’ is a popular Russian brand in the same category, but we challenged the ruling and eventually all three marks were registered.”