Illegal use of a trademark in Kazakhstan is a violation of the Trademark Law and there are various types of liability for this, which we will discuss below. Despite this, people and organizations quite often illegally use someone else’s trademark. Most often this happens not intentionally, but due to ignorance of the law and the rules of treatment of trademarks. Many people simply do not think that even an ordinary picture on the Internet can be protected by copyright.
But the law is the law, and if the copyright holder discovers the illegal use of his trademark, he has every right to bring the offender to justice. Let’s take a closer look at this interesting topic.
Legal protection of a trademark
A trademark, service mark is a designation registered in accordance with the Law or protected without registration by virtue of international treaties to which the Republic of Kazakhstan is a party, which serves to distinguish goods (services) of certain entities or individuals from similar goods (services) of other entities or individuals.
Legal protection of trademarks in the Republic of Kazakhstan shall be granted on the basis of their registration. The person in whose name a trademark is registered (right holder) has the exclusive right to use the trademark in any manner not contrary to the law.
Thus, it is prohibited to use a trademark without the permission of the right holder.
Use of a trademark
The use of a trademark is any introduction of it into circulation:
- the use of the trademark in the provision of services;
- offering for sale;
- sale of goods bearing the trademark symbol;
- use in signs, advertisements, printed materials or other business documents;
- as well as other introduction of them into circulation.
- Illegal use of the RK trademark
Unlawful use of a designation confusingly similar in public telecommunication networks (on the Internet and other media resources), including social networks is also considered a violation of the exclusive right of a trademark owner.
In accordance with provisions of Articles 1029, 1030 of the Civil Code of the Republic of Kazakhstan and Article 21 of the Trademark Law, the right to use a trademark may be granted by the right holder (owner) under a license agreement. In this case, the use of the exclusive right to a trademark will not be considered a violation.
In this regard, the illegal use of a trademark is a ground for bringing to responsibility.
Liability for illegal use of a trademark:
In accordance with Article 158 of the Administrative Offenses Code of the Republic of Kazakhstan illegal use of another’s trademark, service mark or appellation of origin or similar to the point of confusion designations for similar goods or services, as well as illegal use of another’s company name, except for cases related to the exhaustion of the exclusive right to a trademark, unless these actions contain features of criminal offenses, shall entail a fine
- for individuals in the amount of 20 MCI;
- For a small business or non-commercial organization – 30 MCIs;
- For medium-size businesses – a fine of 40 MCIs;
- Large businesses – to the amount of 80 monthly notional units, with confiscation of goods that contain an illegal image of a trademark, service mark, appellation of origin or similar to the point of confusion symbols for similar goods or services.
- Civil liability
According to Article 1032 of the Civil Code of the Republic of Kazakhstan and Article 44 of the Law, a person who illegally uses a trademark or designations similar to the point of confusion with it is obliged
- immediately cease the violation and reimburse the owner of the trademark, the losses incurred.
Illegal use of another’s trademark, service mark, trade name, geographical indication and appellation of origin of goods or similar designations for similar goods or services, if this act has caused major damage
- shall be punishable by a fine of up to 80 MCI;
- Corrective labour in the same amount;
- involvement in community work for up to 80 hours;
- arrest for up to 20 days.
Client is the right holder of combined trademark in the sphere of public catering, who found the fact of infringement of his rights.
Our client’s competitor had registered the word trademark of the same name in the field of entertainment and carwash, not catering, but used a confusingly similar combined trademark for services in cafes, restaurants. Thus misleading consumers.
The court in the first instance decided to satisfy the claim of our client, but the defendant appealed.
Lawyers of our company represented the interests of the client in the court of appeal and ensured the enforcement of the judgment of the court of first instance for monetary compensation, prohibition of confusingly similar trademark and dismantling of the sign.