Refusal to register a trademark in Kazakhstan is a common phenomenon, but most often it occurs when an application for registration is submitted by a legal entity or an individual on its own, without the involvement of a law firm. In such a case, it is easy to make mistakes even in the usual collection of documents, not to mention more complicated moments. For example, such as compliance with the claimed designation. That is why we recommend you to seek the services of our company rather than waste your time and nerves on registering a trademark yourself. In this way you will save time and money and will not get a refusal in trademark registration.
Grounds for refusal of trademark registration of the RK trademark
A trademark can be refused registration if following articles 6, 7 of the law “On Trademarks, Service Marks, Geographical Indications and Appellations of Origin” (hereinafter referred to as the Trademark Law).
The first reason for refusal of trademark registration is non-compliance of the submitted documents. After filing an application for trademark registration, a formal examination is conducted within one month from the date of filing. The formal examination checks:
- The content of the application;
- The presence of necessary materials for the examination;
- Date of priority;
- List of goods and services in accordance with the current edition of the Nice Classification.
The expert authority may request additional or clarifying information, without which it is impossible to conduct a formal examination. Therefore, it is important to properly prepare the application when submitting it, as the registration period may take more than a year or if there is no response to the examiner’s request, the proceedings will be terminated.
The second reason for refusal is non-compliance of the claimed designation. Verification of the designation takes place during the full examination. In the course of full examination the compliance of the applied designation with the requirements set out in Articles 6, 7 of the Trademark Law is checked.
According to Article 6 of the Trademark Law the absolute grounds excluding a trademark registration are listed:
- Designations that do not have distinctiveness or that consist only of elements:
- which are in common use for the designation of goods (services) of a certain kind;
- which are common symbols and terms;
- indicating the type, quality, quantity, property, purpose, value of goods, as well as the place and time of their production or sale;
- representing international non-proprietary names of medicines;
- having a direct descriptive link with goods or services for which they are used.
The above-mentioned designations may be used as unprotected elements of the trademark, if they do not occupy a dominant position in it.
- Symbols reproducing:
- State emblems, flags and emblems;
- abbreviated or full names of international organizations and their emblems, flags and emblems;
- official control, guarantee and assay stamps, seals, Olympic symbols, awards and other insignia;
- certification marks;
- designations similar to the degree of confusion with the above.
It is not allowed to register as trademarks or their elements designations:
- Designations that are false or likely to mislead as to the goods or their manufacturer, service or person providing the service, as well as names of geographical locations that are likely to mislead as to the place of production of the goods.
- Marks that formally indicate the true place of production of goods, but give the erroneous impression that the goods originate from another territory.
- Designations which represent or contain the names of geographic objects, identifying mineral waters, wines or spirits, to designate such goods not originating from a given place, as well as, if the translation is used or the designation is accompanied by such expressions as “kind”, “type”, “in style” or other similar
- Designations contrary in their content to the public interest, the principles of humanity and morality.
Other grounds for refusal of trademark registration in Kazakhstan:
To establish “other” grounds for refusal of registration of marks, trademark databases and filed applications for registration of trademarks are usually checked for identity and similarity to the point of confusion, as well:
- industrial designs protected in the Republic of Kazakhstan and registered with earlier priority;
- names of famous works of literature, science and art in Kazakhstan, famous works of art and their fragments in violation of copyrights
- surnames, names, pseudonyms and derivatives thereof, portraits and facsimiles in violation of personal non-property rights of these individuals, their heirs or assigns
- signs that are the property of the history and culture of Kazakhstan.
What to do upon refusal of trademark registration?
It is your full and inalienable right to appeal and contest refusal of trademark registration in Kazakhstan. You may file an opposition within 3 months after you have received the final conclusion from the expert body on refusal or partial refusal to register a trademark. The opposition will be considered by the Board of Appeals within four months from the date of its reception by the competent authority. But filing of opposition does not guarantee registration of trademark, it all depends on the ground of opposition.
How to file an opposition?
Before filing an opposition, you should assess the likelihood of successful resolution of the dispute. If the reason for refusal is another trademark that is similar to yours, you need to compare them, justify your point of view.
Content of the opposition:
- Information about the person who filed the opposition
- Trademark application number
- The arguments in favor of the applicant
- A copy of the payment document confirming the payment of the state duty for consideration of the dispute.
Practice
A client came to us to register the name of his language center “Language” (the name has been changed). He applied to the registration authority and 7 months later he was rejected based on the results of the examination. The reason of the rejection was the similarity with the earlier registered trademark “Language billiards”. It turned out that the same name had already been registered for the billiards club.
How did they manage to overcome the refusal? By efforts of our team the client has received the letter of consent from the owner of the billiard club for the registration of the trade mark for the language school.
According to article 7 of the Trademark Law, registration of a similar mark with the earlier registered trademark is possible with the written consent of the owner of the trademark.
Why did it work? Both companies are engaged in different spheres of activity. They were not competitors and did not interfere with each other on the market because they provided completely different services. Our team developed and implemented a strategy for obtaining such consent.
Conclusion
It is not uncommon for a business to face such an unpleasant problem as a refusal to register a RK trademark. And to minimize your risks we offer a preliminary search through open registers for similar or fully identical already registered trademarks. Since time is one of the most valuable resources, and the registration process is quite a long process. Save your time and money by trusting the experts in their business.