Significant Amendments To The Legislation On Intellectual Property

Kazakhstan - Recently the State has been taking significant steps to attract foreign investment into the country, including through changes in the legislation. Interested NGOs, representatives of foreign investors in Kazakhstan—the European Business Association of Kazakhstan (EUROBAK) and the American Chamber of Commerce (AmCham)—and patent attorneys repeatedly have brought up the point that legislative acts of the Republic of Kazakhstan need to be amended to reduce the amount of time it takes to register a trademark; to simplify the procedure for transferring the rights to IP; and to make the regulation in general more "user-friendly" for titleholders. As a result, the Law on Amendments to Some Legislative Acts of the Republic of Kazakhstan on the Issues of Legal Regulation in the Area of Intellectual Property (the "Law") was signed by the President of the Republic of Kazakhstan on 7 April 2015. The Law came into effect on 20 April 2015. Below are the most significant amendments introduced by the Law regarding trademarks.

Exhaustion of rights and parallel import

The Trademark Law now establishes a regional principle of exhaustion of trademark rights. This change is related to the harmonization of the national legislation with the provisions of the Agreement on the Eurasian Economic Union (EAEU). The regional principle of exhaustion of rights means that a number of actions in respect of a product, which has been lawfully introduced into civil circulation in the territory of the member states of EAEU by the holder of the title to a trademark or upon its consent, is not an infringement of the exclusive right to that trademark. Prior to the adoption of the amendments, the Trademark Law provided for the national principle of exhaustion of rights, which was contrary to the obligations of the Republic of Kazakhstan in the framework of the EAEU Agreement. The regional (as well as the national) principle of exhaustion of rights means that parallel import into the territory of the EAEU is impossible, but it deprives the holder of the title to the trademark of the right to further control the distribution of the product in its territory.

Please note that on 11 March 2015, at the meeting of the Working Group of the Eurasian Economic Commission on the issue of exhaustion of rights, it was proposed to develop exceptions from the regional principle of exhaustion of trademark rights for certain categories of goods in the territory of the EAEU. In case of...