1.

Intellectual Property

How to Register a Trademark?

To register a trademark, you need to submit an application to the Republican State Enterprise on the right of economic management "National Institute of Intellectual Property" of the Committee on Intellectual Property Rights of the Ministry of Justice of the Republic of Kazakhstan (hereinafter referred to as RSE "NIIP").

The requirements for the trademark registration application are listed in Article 9 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks, Geographical Indications, and the Names of Places of Origin of Goods."

The examination of the application is carried out by RSE "NIIP" in stages:

- Preliminary examination

- 

Full examination (the deadlines for the examination are set by Article 11 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks, Geographical Indications, and the Names of Places of Origin of Goods").

The fees for legally significant actions related to trademark registration are established according to the "Prices for works and services provided by RSE 'NIIP,'" approved by the order of the director of RSE "NIIP" No. 241 нқ dated June 20, 2024.

2.

What Documents Are Required for Trademark Registration?

The requirements for a trademark registration application are established by Article 9 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks, Geographical Indications, and the Names of Places of Origin of Goods."

1.The application must relate to a single trademark.

2.The application must be submitted on a standard form and include:

1)A request for the examination of the designation, indicating the applicant’s name and its location or place of residence;

2)The designated trademark;

3)A list of goods and/or services according to the International Classification of Goods and Services.

3.The following documents must be attached to the application:

1)A document confirming the payment for the services of the expert organization conducting the examination (for both the preliminary and full examination). The payment amount is set in accordance with the legislation of the Republic of Kazakhstan;

2)A power of attorney, if the application is submitted through a representative;

The statute of a collective trademark (if applying for a collective trademark), which must include the name of the organization authorized to register the collective trademark in its name, the purpose of registering the trademark, a list of entities entitled to use the trademark, a list and the common qualities or other characteristics of the goods and services that will be designated by the collective trademark, conditions for its use, procedures for monitoring its use, and liability for violations of the collective trademark statute.

3.

Who Can Submit an Application for Trademark Registration?

The application is submitted by the applicant or their representative.

1.Applicant – a legal entity or an individual who submits an application for trademark registration (paragraph 5 of Article 1 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks, Geographical Indications, and the Names of Places of Origin of Goods").

2.Representative of the applicant – a patent attorney or another representative acting based on a power of attorney, executed in accordance with the requirements of Article 167 of the Civil Code of the Republic of Kazakhstan.

4.

What Are the Deadlines for Trademark Examination?

The examination deadlines are as follows:

1.Preliminary examination – within one month from the date of the application submission;

2.Full examination – within seven months from the date of the application submission.

5.

What Is the Timeframe for Accelerated Trademark Examination?

According to paragraph 3 of Chapter 2 of the Rules for Conducting the Examination of Applications for Breeding Achievements, Industrial Property Objects, Trademarks, Service Marks, Geographical Indications, Names of Places of Origin of Goods, and the Registration of Integrated Circuit Topologies, the accelerated examination for a trademark application includes:

Accelerated preliminary examination – within ten working days from the date of the application submission;

Accelerated full examination – within three months from the date of the application submission.

6.

What Documents Are Required for Submitting a Request for Accelerated Examination?

The application must include:

- A request for the examination of the designation, specifying the applicant’s name and its location or place of residence, as well as the designated trademark;

- A list of goods and/or services according to the International Classification of Goods and Services (ICGS).

The following documents must be attached to the application:

- A copy of the document confirming the payment for the examination service;

- A copy of the power of attorney, if the application is submitted through a representative;

- A petition for the accelerated examination (if requested). Along with the petition, the document confirming the payment for accelerated examination must be submitted.

If the document confirming the established payment is not provided, the petition will be considered not submitted, and the applicant will be notified within five working days from the application submission.

7.

How Long Does the Opposition to a Trademark Application Take?

According to paragraph 2 of Article 12 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks, Geographical Indications, and the Names of Places of Origin of Goods," if the application is accepted by the expert organization, a full examination is carried out. Based on the results of the examination, the applicant is sent an expert opinion on registration, partial preliminary registration, or preliminary refusal of the trademark.

The applicant has the right to submit a reasoned objection within three months from the date they receive the preliminary expert opinion regarding refusal or partial registration. Based on the results of reviewing the objection, the expert organization will issue a final opinion within three months from the date the objection is submitted.

8.

Does an Application for Accelerated Examination Have Priority?

An application for accelerated examination does not have priority over other applications with an earlier priority date. The priority is determined by the date of submission of the application to the expert organization or by the conventional priority, in accordance with the Paris Convention.

9.

Will the Payment for the Examination Be Refunded in Case of Refusal or Cancellation of the Trademark?

No, the request for accelerated examination is submitted by the applicant at their own risk. The payment is not refunded because the accelerated examination has been conducted. The existence of an application with an earlier priority is an independent circumstance, not dependent on the expert organization.

10.

What Is the Validity Period of a Trademark Certificate?

According to paragraph 1 of Article 15 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks, Geographical Indications, and the Names of Places of Origin of Goods," the trademark registration is valid for ten years from the date of submission of the application.

11.

What Are the Advantages of the International Trademark Registration System?

The Madrid System is a convenient and cost-effective mechanism for registering and managing trademarks worldwide. By filing a single international trademark application and paying one set of fees, you can seek protection in 130 countries. You can make changes, update, or expand your global trademark portfolio through a centralized system. The application process typically takes between 12 to 18 months.

12.

Where Should the International Application Be Filed?

The international application is filed with the office of the country of origin. The office verifies that the trademark in the international application exactly matches the basic registration or basic application, that the applicant of the international application is the same person as the owner of the basic registration or basic application, and that the list of goods and services in the international application corresponds to the list in the basic application or basic registration. After this, the international application is sent by the country’s office to the International Bureau.

13.

What Documents Are Required to Obtain a Patent for an Invention?

According to paragraph 2 of Article 17 of the Patent Law of the Republic of Kazakhstan, the application for an invention must include the following documents:

1)Application for the issuance of a protective document, indicating the inventors and the persons in whose name the protective document is requested, as well as their place of residence or location;

2)Description of the invention, revealing it with sufficient detail for a specialist in the relevant field to carry out the invention;

3)Patent claim, defining the object of the invention and expressing its essence. The claim must be clear, precise, and based on the description;

4)Drawings and other materials, if necessary for understanding the essence of the invention;

5)Abstract;

6)Power of attorney, if the application is being submitted through a representative;

7)Document confirming payment for filing the application, including for conducting the formal examination, in the established amount, as well as a document confirming the grounds for a reduction in the fee, which can be submitted along with the application or within two months from the application submission date. If the relevant payment is made, this period can be extended for no more than two months. If the payment documents are not submitted within the established period, the application will be considered not filed.

14.

What Documents Are Required to Obtain a Patent for a Utility Model?

According to paragraph 2 of Article 18 of the Patent Law of the Republic of Kazakhstan, the application for a utility model must include the following documents:

1)Application for the issuance of a patent, indicating the authors of the utility model and the persons in whose name the patent is requested, as well as their place of residence or location;

2)Description of the utility model, revealing it with sufficient detail for its implementation;

3)Utility model claim, expressing its essence and fully based on the description;

4)Drawings;

5)Abstract;

6)Power of attorney, if the application is submitted through a representative;

7)Document confirming payment for filing the application in the established amount, as well as a document confirming the grounds for a reduction in the fee, which can be submitted along with the application or within two months from the application submission date. If the relevant payment is made, this period can be extended for no more than two months. If the payment documents are not submitted within the established period, the application will be considered not filed.

15.

What Is the Timeframe for Examining a Patent Application for an Invention?

According to paragraphs 62 and 69 of the Rules, the patent registration process for an invention is carried out in stages by the expert organization:

1)Formal examination of the application is conducted within two months from the date of submission of the application to the expert organization.

2)Substantive examination of the application is conducted after the completion of the formal examination with a positive result and upon submission of the document confirming payment for the substantive examination, within thirteen months from the date of submission of the application to the expert organization.

16.

What Is the Timeframe for Examining a Utility Model Application?

According to paragraph 95 of the Rules, the examination of a utility model application is conducted within four months from the date of submission of the application to the expert organization.

17.

What Is the Duration of the Exclusive Right for an Invention?

The duration of the patent for an invention is established in paragraph 3 of Article 5 of the Patent Law of the Republic of Kazakhstan and is twenty years. This period is calculated from the date of filing the application.

18.

What Is the Duration of the Exclusive Right for a Utility Model?

The duration of the patent for a utility model is established in paragraph 3 of Article 5 of the Patent Law of the Republic of Kazakhstan and is five years. This period is calculated from the date of filing the application.

19.

From When Must the Patent Holder Pay for the Maintenance of the Protective Document?

The patent holder is required to pay annually for the maintenance of the protective document in force, with payment due on the date corresponding to the application filing date, according to paragraph 15 of Article 11 of the Patent Law of the Republic of Kazakhstan.

20.

How Is the International Application Submitted?

According to Paragraph 3 of the Rules for Processing Industrial Property Applications under the Patent Cooperation Treaty (PCT) and the Eurasian Patent Convention, the RSE "NIIP" performs the functions of the Receiving Office related to the receipt, verification, and forwarding of international applications.

As the competent Receiving Office, RSE "NIIP" accepts international applications in Russian or English. If the applicant chooses the Federal Institute of Industrial Property of the Federal Service for Intellectual Property, Patents, and Trademarks (FIPS) as the International Search Authority under Article 15 of the PCT, the international application must be filed in Russian. If the European Patent Office (EPO) is selected as the International Search Authority, the international application must be filed in English.

The international application is submitted to RSE "NIIP" in one copy, which must be suitable for direct reproduction.

RSE "NIIP" verifies the international application for compliance with the requirements of Article 11(1) and Article 14 of the PCT.

Upon successful verification of the international application, RSE "NIIP" establishes the international filing date and forwards the application to the International Bureau of the World Intellectual Property Organization (WIPO).

21.

Can Changes Be Made to the Claims of an International Application?

According to Article 19 of the PCT, the applicant has the right to amend the claims of the invention once, after receiving the International Search Report and a written opinion from the International Search Authority. Such amendments must be submitted to the International Bureau in the language in which the international application is published.

The deadline for submitting amendments under Article 19 to the International Bureau, according to Rule 46.1 of the PCT Guidelines, is two months from the date the International Search Report is sent by the International Search Authority or 16 months from the priority date, whichever expires later.

Further opportunities to amend the claims (as well as the description and drawings) are available to the applicant under Article 34 of the PCT during the international preliminary examination, if the applicant has requested an international preliminary examination.

Additionally, the claims may be amended according to Articles 28 and 41 of the PCT during the national phase.

In all cases, the proposed changes must not extend beyond what was originally disclosed in the international application at the time of its filing.

22.

What Documents Are Required to Obtain a Patent for an Industrial Design?

To obtain a patent for an industrial design, the applicant must submit a patent application to the expert organization. The application must contain the following documents:

1)Patent Application: This must be submitted in the state or Russian language, indicating the authors of the industrial design and the individuals to whom the patent is requested, as well as their place of residence or location.

2)Images of the Design: A set of images that are suitable for reproduction, providing a complete and detailed representation of the essential features of the industrial design.

3)Description of the Design: A description that explains the design, including its features.

4)Power of Attorney: If the application is filed through a representative, a power of attorney must be submitted.

Additionally, the application must include a payment confirmation for the submission of the application, including the payment for the formal examination.

23.

Can Multiple Industrial Designs Be Protected Under One Application?

Yes, it is possible to request protection for multiple industrial designs under one application, but there are specific requirements for unity, as outlined in Article 54 of the Rules for the Examination of Industrial Property Objects.

The application may relate to one industrial design or a group of industrial designs that are so closely related that they form a single creative concept. The unity of industrial designs is considered satisfied if:

- The images represent a single industrial design that is an artistic and constructive solution for one product, including the whole product, a standalone part of it, or a set of related items intended to be used together.

- The images represent a group of industrial designs that form a unified creative concept and are artistic and constructive solutions for the same product. These designs belong to the same subclass in the International Classification for Industrial Designs adopted by the Hague Agreement of 8 October 1968. One of the designs defines the overall appearance of the product, while the others define the appearance of the product's separate parts as visible in use.

- The images represent a group of industrial designs forming a unified creative concept that defines the overall appearance of the same product. The designs belong to the same class in the International Classification for Industrial Designs (Locarno Classification), and each design presents a variation of the product's appearance, but the main aesthetic and/or ergonomic features, determined by the variations, coincide (variations).

24.

How Can Legal Protection or Registration for an Original Design Be Obtained?

The author of an original design can choose legal protection either as:

- An Industrial Design under the Patent Law of the Republic of Kazakhstan.

- A Copyright under the Law of the Republic of Kazakhstan "On Copyright and Related Rights" (No. 6-I, June 10, 1996).

25.

What is Covered by Copyright?

According to Article 7 of the Copyright and Related Rights Law of the Republic of Kazakhstan, the following are considered objects of copyright:

1)Literary works;

2)Dramatic and musical-dramatic works;

3)Screenplay works;

4)Choreographic and pantomime works;

5)Musical works with or without text;

6)Audiovisual works;

7)Works of painting, sculpture, graphics, and other visual art works;

8)Applied art works;

9)Works of architecture, urban planning, design, and landscape art;

10)Photographic works and works created by methods similar to photography;

11)Maps, plans, sketches, illustrations, and three-dimensional works related to geography, topography, and other sciences;

12)Computer programs;

13)Other works.

Copyright protection for computer programs extends to all types of computer programs (including operating systems), which can be expressed in any language and form, including source code and object code.

Objects of copyright also include:

1)Derivative works (translations, adaptations, annotations, summaries, reviews, dramatizations, musical arrangements, and other adaptations of works of science, literature, and art);

2)Collections (encyclopedias, anthologies, databases) and other composite works that are the result of creative effort in the selection and/or arrangement of materials.

Derivative and composite works are protected by copyright, regardless of whether the works they are based on or which they include are also copyrightable.

26.

Which works are not subject to copyright?

The following are not considered objects of copyright:

Official documents (laws, court decisions, other texts of legislative, administrative, judicial, and diplomatic nature), as well as their official translations;

State symbols and signs (flags, coats of arms, orders, banknotes, and other state symbols and signs);

Works of folklore (folk art);

Reports of events and facts that have informational content.

27.

How to submit a copyright application?

Applications and the issuance of results for the state service "Inclusion of information and amendments in the State Register of Rights to Objects Protected by Copyright" are processed through the e-government portal - egov.kz and the official website of the service provider https://qazpatent.kz/ru, with the use of an electronic digital signature (EDS).

The form of service provision is electronic (online submission). Payment is made electronically via any bank card.

28.

Can a logo be registered as copyright?

According to paragraph 4 of Article 9-1 of the Law on Copyright and Related Rights of the Republic of Kazakhstan, information about rights to works that serve (or are intended) to distinguish the goods (services) of one physical or legal person from the identical goods (services) of another physical or legal person is not included in the Registry.

29.

What is the processing time for a copyright application?

Information and changes in the Registry are processed according to the procedure established by the authorized body within one working day after the receipt of the author's application, or based on a court decision that has entered into legal force.

30.

Can changes be made to the certificate?

Errors of a technical nature that do not alter the ownership, nature, or content of the information can be corrected in the Registry within one working day after the receipt of the author's application.

31.

What is the duration of copyright protection?

In the Republic of Kazakhstan, copyright lasts for the lifetime of the author and 70 years after their death. The right of authorship, the right to name, and the right to protect the reputation of the author are protected indefinitely.

32.

How to register an author’s contract?

Current legislation in the field of copyright does not provide for the registration of an author’s contract.

33.

What is meant by a licensing agreement?

A licensing agreement is a contract in which a party holding exclusive rights to an intellectual creation or a means of individualization (the licensor) grants another party (the licensee) the right to temporarily use the relevant intellectual property in a specified manner.

34.

What is meant by an exclusive license?

An exclusive license grants the right to use an intellectual property object without the licensor retaining the ability to use it and without the right to grant licenses to other parties.

35.

What is meant by an assignment agreement (transfer of exclusive rights)?

An assignment agreement is a contract where one party transfers its exclusive rights to an industrial property object, either fully or partially, to another party.

36.

What is the timeframe for the registration of the transfer/assignment of rights to industrial property objects?

The state service is provided within 10 (ten) working days from the date the physical or legal entity (the service recipient) submits the required documentation.

37.

What is needed for the termination of a license agreement, comprehensive business license agreement, or pledge agreement?

A license agreement, comprehensive business license agreement, or pledge agreement can be terminated by mutual consent of the parties or in accordance with the terms outlined in the agreement. The termination is registered after submitting an additional agreement or a statement requesting termination. The documents must be signed by both parties, and the termination date of the contractual obligations is indicated. The termination request can be submitted in any form.

38.

Where can I find the fees of RSE "NIIP"?

You can find the fees of RSE "NIIP" on the official website in the section "About Qazpatent," then "Fees"

39.

Where can I get consultation on intellectual property issues?

You can get information on intellectual property issues from the contact center of RSE "NIIP" by calling 8 (7172) 62-15-15 or 62-15-16.