McGuireWoods Kazakhstan LLP about protection of generally known brands in Central Asia countries

/McGuireWoods Kazakhstan LLP, January 9, 06/ - As a rule a well-known trademark is a mark (sign) used as a trademark, or a trademark that has become widely known due to the mass circulation of goods bearing the trademark and/or as a result of heavy advertising of such goods. Pursuant to the provisions of Article 6bis of the Paris Convention on the Protection of Industrial Property dated 20th of March 1883 (to which Kazakhstan and other republics of Central Asia are parties), a well-known trademark shall be protected if recognized as such by the country's competent authority. KAZAKHSTAN In Kazakhstan well-known trademarks are protected as prescribed in the provisions of the Paris Convention on the Protection of Industrial Property, Law #456-I of 26 July 1999 'On Trademarks, Service Marks and Appellation of Origin', and the Procedures for the Recognition of a Trademark (Service Mark) as Well-Known in the Republic of Kazakhstan (hereinafter referred to as the "Procedures"), approved by Order #133 issued by the Chairman of the Committee for Intellectual Property Rights under the Ministry of Justice of the Republic of Kazakhstan on August 15, 2002 (hereinafter referred to as the "Committee"). The advantages of well-known marks protection are as follows: - a well-known trademark is protected in Kazakhstan irrespective of the type of goods and services in relation to which it has been recognized as well-known; - there is no need to register a trademark in the course of regular registration procedure for it to be recognized as well-known; - it is possible to cancel the registration of a trademark that is identical or confusingly similar to a well-known trademark with respect to any goods or services within five years of its registration. - the owner of a well-known mark has the right to prohibit the use of his well-known trademark with regard to any goods and services. If a mark is not recognized as well-known its owner cannot protect it against unfair use and registration as a trademark in relation to the goods that are not homogeneous. Presently under consideration with the Committee are applications seeking recognition as well-known for trademarks owned by The Coca-Cola Company, Yerevan Brandy Company and Zhanna Trading House LLP. 1. Filing an Application Under the Procedures for a trademark to be recognized as well-known its owner shall file an application with the Committee and documents evidencing the trademark's well-known status. Actual information confirming the fact that the trademark in question is a well-known one should be based on the results of a consumer poll covering no less than six cities in the Republic of Kazakhstan. The total number of respondents should be no less than three thousand. Aside from the poll results, the following information may also serve as a confirmation of the fact that a trademark is well-known: - on the intense use of the trademark in the Republic of Kazakhstan; - on the heavy advertising of the trademark; - on the volumes of sales of goods bearing the trademark; - on the annual average number of consumers of the goods bearing the trademark; - on the value of such trademark; - on the degree of awareness about the trademark in question - locally, regionally, and globally; - whether the trademark has been registered abroad. 2. Consideration of Applications Under the Procedures the Committee shall have two months of the filing of an application to check the availability of necessary documents and inform the applicant of the acceptance/rejection of the application and publish information on the application for third parties to know and challenge it, if necessary. Three months after the publication the Committee shall examine the application and study all attached materials confirming the fact that the trademark is well-known. Then the Committee shall examine the application for six months, and either turn it down or recognize the trademark as well- known. Where the owner of a trademark produces evidence the actual date of the trademark's becoming well-known may be recognized as the date of recognizing the trademark as well-known. 3. Period of Validity The owner of a well-known trademark shall be given a certificate which is valid for ten years. Each time the certificate may be extended for another ten years. KYRGYZSTAN The principal provisions of the Kyrgyzstan legislation related to the protection of well-known trademarks are similar to those of the corresponding Kazakhstan legislation. A well-known trademark is protected not only in connection with goods that made this trademark well-known but also with regard to any goods and services. In Kyrgyzstan for a mark to be recognized as well-known an application is to be filed with the Board of Appeals under the Patent Office of the Kyrgyz Republic. A mark shall be recognized as well-known based on (i) an application of the person concerned filed with the Board of Appeals; and (ii) an opposition of any person filed with Board of Appeals against a decision issued by the expert commission or against the registration of a trademark. Where the trademark seeking recognition as well-know is in contradiction with a registered trademark, an opposition shall be filed with Board of Appeals no later than five years of the date of an official publication on the registration of the contested trademark. An application to recognize a trademark as well-known shall be considered within four months of its receipt. Criteria of recognition of a mark as well-known: - it is recognized by its actual and/or potential consumers in the Kyrgyz Republic of that kind of goods to which such trademark is applied, or by the persons, who participate in the provision of channels of distribution of those goods, to which such trademark is applied, or the business circles, having to do with those types of goods to which the trademarks is applied. At the same time the idea of goods quality is to be associated with the trademark in its home country or on the world market; - it has a high distinctive ability either inherent or acquired as a result of intensive use; - the trademark is widely used and advertised in the Republic or on the world market; - it has a commercial value acquired as a result of a long and intensive use in the Republic or on the world market. In Kyrgyzstan it is not required to submit a polling confirming that the trademark is well-known. Where the Board of Appeals decides to recognize a trademark as well- known, the Patent Office issues a certificate and publishes information in the official bulletin within one month. The validity of the certificate is perpetual. Recognised as well-known in the Kyrgyz Republic are Opal and Stewardess Trademarks owned by the BulgarTabak Company. UZBEKISTAN The principal provisions of the Uzbekistan legislation pertaining to the protection of well-known marks are similar to those of Kazakhstan and Kyrgyzstan except that the Uzbekistan legislation does not provide for a well- known mark to be protected against infringements with respect to other goods and services. A trademark is recognized as well-known by the Board of Appeals of the Uzbekistan Patent Office. Under the Regulations on the Submission and Examination of Appeals with the Board of Appeals at the State Patent Office of the Republic of Uzbekistan, an appeal and the documents attached thereto shall have on them facts evidencing the well-known status of the trademark. The following documents are regarded as such proof: - on the intense use of the trademark in the Republic of Uzbekistan; - a list of populated localities where goods bearing the trademark are sold; - on the volumes of sales of goods bearing the trademark; - on the method of using the trademark including advertising and presentations at fairs or shows of products and/or services bearing the trademark; - on the countries where the trademark has become widely known; - on the results of an opinion poll conducted by a specialist organization with account of the recommendations of the Patent Office. Appeals shall be considered within four months of the date it is received by the Board of Appeals. A decision issued by the Board of Appeals shall be sent to the applicant and other persons concerned and published in the Patent Office's Official Bulletin within five days of the decision date. TAJIKISTAN Under Law #456 of 23 December 1991 'On Trademarks, Service Marks and Appellation of Origin', and the Rules for the Drafting, Submission and Examination of an Application for Registration of a Trademark and Service Mark, approved by Order #08-од133 issued by the National Patent and Information Centre of the Republic of Tajikistan on May 20, 2002, no marks identical or confusingly similar to "trademarks of other persons protected by international treaties to which the Republic of Tajikistan is a party, namely, trademarks recognized in the Republic of Tajikistan as well-known, protected pursuant to the provisions of Article 6bis of the Paris Convention...". Accordingly, well-known trademarks are granted protection. However, there still no procedure for recognizing a trademark as well-known. TURKMENISTAN So far there is no procedure for recognizing a trademark as well-known. However, like in Tajikistan, well-known trademark are granted protection. Such a procedure is thought to be in place in early 2006. At present a mark may be recognized as well-known in the case of a conflict of a trademark seeking recognition as well-known and a trademark identical or similar to it. In such a case the existing Regulations on the Patent Commission of Appeals at the Turkmenistan Patent Office allow for the possibility of recognizing a trademark as well-known. For a trademark to be recognized as well-known its owner is expected to submit the following documents: - an analysis of the use of the trademark in the world; - information on the volumes of sales and advertising costs on the results of the economic activity of the trademark's owner; - information on the volume of goods/services bearing the trademark supplied/provided in the country and abroad; - any other information that might be useful for the Commission of Appeals when considering an opposition. SMIRNOFF trademark owned by UDV North America, Inc. of USA is reported to have been found well-known in Turkmenistan in the above manner. In detail: McGuireWoods Kazakhstan LLP mwk@mcguirewoods.com Information agency of the financial markets IRBIS broadcasts this material according to the agreement achieved with McGuireWoods Kazakhstan LLP. [2006-01-09]