Trademark Protection in Kazakhstan’s Digital Marketplace

At the same time, according to paragraph 4 of Article 4 of the Law of the RK ‘On trademarks, service marks, geographical indications and appellations of origin of goods’ the owner of a trademark has the exclusive right to use and dispose of the trademark belonging to him in respect of the goods and services specified in the certificate. No one may use a trademark protected in the Republic of Kazakhstan without the consent of the owner. 

  

Non-compliance with intellectual property rights may entail serious consequences. According to the legislation of the Republic of Kazakhstan, civil (Articles 9 and 1032 of the Civil Code of the Republic of Kazakhstan), administrative (Article 158 of the Code of the Republic of Kazakhstan ‘On Administrative Offences’ and criminal (Article 222 of the Criminal Code of the Republic of Kazakhstan) liability is provided for illegal use of a trademark. 

  

Trademark law provides clear protection against the sale of counterfeit goods, if these goods are counterfeit, they can and should be fought - they not only cause losses to bona fide importers, but also spoil the image of the original goods. However, preventing the unauthorized sale of authentically branded goods is not so straightforward. 

  

On the other hand, ‘grey’ products are products that come from unofficial and unauthorised brand sellers and individuals and sold by someone other than the official distributors. If the goods are original but bought in other countries cheaper than they are sold here, then their importation could be considered as a parallel importation, and such sales may take away a part of the market from legitimate importers. 

  

Unauthorized resellers may obtain authentic products in a variety of ways: through purchase overseas, at clearance, as returns, through liquidation sales, or from distributors that are not authorized to make such sales but do so nevertheless.  

  

Hundreds of thousands of goods bearing trademarks registered in the name of foreign legal entities are sold in Kazakhstan. However, sales are made without obtaining licences or entering into direct agreements with rights holders allowing the importation of these goods into Kazakhstan. Goods are simply purchased abroad and brought into the country, both original “grey” goods and counterfeit goods. 

  

It is not uncommon for there to be no official representatives (importers/dealers, etc.) in Kazakhstan, and goods are purchased abroad and imported for sale or resale in Kazakhstan under contracts with different companies.  It is not possible for an importer to obtain import authorisation or purchase goods in Kazakhstan from the owner of the Trademark or its representative. 

  

Unauthorized resellers put the authentic brand at risk by mistreating the products or providing subpar customer service or fail to handle, store and ship the products with the degree of care demanded of authorized sellers to protect the brand’s reputation in the marketplace, as a result consumers may believe the reseller to be an extension of the authentic brand’s legitimate business operation. 

  

It is recommended that manufacturers establish written agreements with authorized sellers that restrict sales to end-users only, prohibiting sales to other resellers, such that unauthorized resellers have no legitimate way of obtaining any significant amount of product. 

  

Trademark can be included in the customs register of intellectual property objects and stopped at the border on the grounds of its counterfeitability.  In this case, the sign of counterfeiting may be the fact that it is imported not by a legal importer, but by any other company or individual entrepreneur. 

  

In order to prevent parallel imports, the owner of the Trademark should (i) register the Trademark, (ii) include it in the customs register, and the Kazakh partners of this owner should conclude with him at least a direct contract authorising the import of this product into Kazakhstan, or, which is highly recommended, a licence agreement on the use of the Trademark in Kazakhstan. 

  

To further protect the rights of right holders to intellectual property objects, the authorised body shall maintain the Customs Register of Intellectual Property Objects of the Republic of Kazakhstan (hereinafter – CRIPO) and ensure its publication, including on the Internet resource of the authorised body. Inclusion of a trademark in the CRIPO is an effective way to protect your goods from counterfeiting and parallel import (importation of goods without the permission of the right holder). 

  

If the trademark of the right holder is included in the CRIPO, then when importing counterfeit goods into the territory of Kazakhstan, the representatives of customs authorities notify the right holder of the mark about the violation of his rights. Thus, the Right Holder of the trademark gets an opportunity to prevent the importation of counterfeit goods into the Kazakhstan market. 

  

The term of protection shall be established by the customs authorities when including intellectual property objects in the unified customs register of intellectual property objects or the customs register, taking into account the term specified by the right holder in the application, as well as the validity of the documents attached to the application, but may not be more than two years from the date of inclusion in such registers. ​