How to register a trademark (Bolotov Yuri, Bolotov & Partners LLP)

How to register a trademark

(Bolotov Yuri, Bolotov & Partners LLP)

 

When registering a trademark it is necessary to take into account that a brand, a logo and a trademark become trademarks only after their state registration. The registration procedure entitles to prohibit other companies from using a trademark or any other confusingly similar signs. However, this applies only to those goods and services (and in some cases also to so-called «correspondent» goods and services), which are specified in the certificate of registration.

Stage 1. We determine the brand of the company and search for an analog

When a brand is developed, it is necessary to conduct a search related to availability of registration of this brand or similar (confusingly similar) brand in the name of other company. The search can be ordered with the National Institute of Intellectual Property (NIIS) or through one of the patent attorneys who have a database of registered trademarks. Now NIIS conducts searches for trademarks within a month, in an expedited term within two weeks. Search is a paid procedure as it includes all trademarks registered and published in the State Register, as well as filed applications for the registration of trademarks. The search conducted by patent attorneys takes 1-2 days, but it is conducted only in relation to the registered trademarks, which were published in official NIIS newsletters. The search report shall not include data on applications for trademarks and trademarks that have already been registered, but have not yet been published. If urgent registration of trademarks is required, it is possible to conduct search through such databases. If the developed trademark or a confusingly similar one is already registered, it is necessary to create a new one.

Stage 2. Filing an application to register a trademark

In order to file an application it shall be necessary to collect and submit the following information and documents:

1. Information about the applicant:

a) full name;

b) the legal address;

c) a copy of the certificate of state (re) registration of an applicant or a certificate of registration received on the portal of the electronic Government egov.kz;

 

2. 15 (fifteen) reproductions of the claimed designation (size 8x8 cm). Reproductions are provided in the color combination in which protection of the trademark is requested.

3. The list of goods that the company shall produce and the services it shall provide. It is necessary to determine the class to which goods and services will be classified in accordance with the current edition of the International Classification of Goods and Services (ICGS).

Stage 3. Paying the state fee and filing of documents

It is necessary to pay the official fee for the reception and examination of the claimed designation and attach a receipt for this payment to the application. The more goods and services a company delivers to the market, the more classes need to be specified. The final fee depends on the number of classes of the ICGS specified in the application.

Having collected all the documents, it is necessary to fill out an application (the forms are provided by the NIIS), and file it with the NIIS. Currently, there is an option to file an electronic application for the registration of a trademark through the NIIS website.

Conclusion:

As practice shows, the registration procedure for trademarks in Kazakhstan takes about 12 months. After filing an application with the NIIS, about a month after and, if the application successfully passes the formal examination stage, experts forward a notice of acceptance of this application for consideration.

Then, based on the results of the full examination, in 10 months from the date of filing the application, experts forward an expert opinion on the registration of the trademark, and the representative of the company pays the fee for registration of the trademark. Further, in another 1 to 2 months from the date of payment for registration, information on the registration of a trademark is recoded with the State Register and NIIS forwards a trademark owner a notice related to registration, which is valid for 10 years from the date of filing the application. Registration can be extended for the next 10 year period unlimited number of times.

Bolotov Yuri, Bolotov & Partners LLP

Questions about registration of a trademark can be forwarded to the e-mail address: [e-mail] or by phone [phone].