IP Legislation Has Undergone Changes

Interested NGOs, representatives of foreign investors in Kazakhstan1 and patent attorneys have campaigned for amendments to the IP legislative acts of the Republic of Kazakhstan in order to reduce the amount of time it takes to register a trademark; to simplify the procedure for registration of IP rights transfer agreements; and to make the regulation in general more "user-friendly" for titleholders. As a result, the Law on Amendments to Certain Legislative Acts of the Republic of Kazakhstan on the Issues of Legal Regulation in the Area of Intellectual Property was adopted with effect from 20 April 2015.

Exhaustion and parallel import

The Trademark Law now establishes a regional principle of 'exhaustion'. This change is related to the harmonization of the national legislation with the provisions of the Agreement on the Eurasian Economic Union (EAEU). A number of actions in respect of a product, which has been lawfully introduced into civil circulation in the EAEU by a trademark owner itself or upon its consent, does not constitute an infringement of the exclusive right to the trademark. Prior to the adoption of the amendments, the trademark law provided for a national principle of exhaustion, which was contrary to the obligations of the Republic of Kazakhstan under the EAEU Agreement.

The regional (as well as the national) principle of exhaustion implies that it is not possible to import, without the permission of the trademark owner (parallel import), a trademark product into the EAEU, but deprives the trademark owner of the right to subsequently control the circulation of the product in the Union's territory.

On 11 March 2015, it was proposed at the meeting of the working group of the Eurasian Economic Commission to develop exceptions from the regional principle of exhaustion of trademark rights for certain categories of goods in the territory of the EAEU. If these amendments are adopted, in exceptional cases the international principle of exhaustion of rights will be in effect and the parallel import of goods into the EAEU will be allowed. According to some media, parallel imports could be allowed in respect of pharmaceuticals, medical products and automotive parts.

Simplified registration of assignment and licensing agreements

The Singapore Treaty on the Law of Trademarks 2006 came into force for the Republic of Kazakhstan on 5 September 2012. It allows for simplified procedures for amending trademark registrations, registering...