Overview Of Court Practice Related To The Settlement Of Disputes On The Protection Of Intellectual Rights

In this article we have tried to analyse the court practice in application of legislation in the realm of intellectual property, particularly in respect to trademarks, trade names and patents.

Nowadays, disputes on protection of intellectual rights in Kazakhstan are less common than in the USA and other European states. The majority of cases are heard in Almaty and Nur-Sultan courts.

Trademarks

In Kazakhstan judicial protection of trademark rights is more resorted to than protection of any other subjects of intellectual property. The most common infringement of trademark rights is unlawful use of another's trademark without the consent of the owner; or the use of such designation, which is similar to the extent of confusion.

Proving illegitimacy of trademark use in the court is not overly complicated as the judge can personally witness visual infringements without having to refer to experts by simply comparing the original and disputed goods. In some circumstances in order to establish the similarity to the extent of confusion a respective examination is carried out. Accredited judicial experts analyse the extent of similarity and provide their opinion in percentage. If a number of matching features exceed 87,5%, it is then admitted that the similarity is confusing. Thus, when the fact of infringement is proved the court brings the wrongdoer to civil liability.

However, in practice recovery of damages as one of the measures of civil liability were rarely awarded because documents could not always support the amount of damage. In 2018 the concept of compensation replaced the instrument of damage recovery for infringement of trademark rights. Now if the court admits the facts of infringement the rightsholder can claim for compensation rather than recovery of damage. The amount of compensation is decided at the discretion of the court and is based on the following criteria:

- nature of the infringement;

- market price homogeneous (original) goods, which bear the confusingly similar trademark or designation with the consent of the owner.

Introduction of the right to compensation for the infringement of trademark rights has a beneficial impact on effectiveness of protection of the rightsholders. In our practice there already had been a positive experience in recovering compensation for infringement of exclusive rights of the rightsholder. We represented a foreign pharmaceutical company in a civil case on eliminating the infringement of exclusive rights to the trademark and destruction of counterfeit goods. As a...