Presentations and publications
Changes and amendments to IP related legal provisions associated with accession of the Republic of Kazakhstan to the WTO
On 27 October 2015, the President of the Republic of Kazakhstan signed the Law "On Introduction of Amendments to Certain Legislative Acts of the Republic of Kazakhstan Associated with Accession to the WTO" (the "Amending Law") which came into effect on 9 November 2015.
The Amending Law has introduced a number of major amendments to certain laws, though this Legal Alert will address only the changes and amendments to intellectual property legislation, including those changes:1. To the Civil Code
The provisions of the Civil Code were toughened up in relation to the obligations of those who infringe trademark rights. Amendments to the Civil Code demand that an infringer should destroy any goods and their packaging with an illegally used trademark, appellation of origin of goods or a confusingly similar designation, with the exception of genuine goods where the trademark has been applied by the trademark holder.
Additionally, an infringer now has to remove an illegally used trademark or confusingly similar designation of a trademark from any materials used for rendering services, including in any advertisements.
However, the Civil Code provides an exception from the above obligation, which is the following. If a trademark is used illegally, but the entry of goods is necessary for the public interest, then appellation of origin of goods or confusingly similar designation of a trademark must be totally eliminated without destruction of such goods.
Under the previous provisions, the infringer was obliged to destroy any images produced of the trademark and eliminate the illegally used trademark or confusingly similar designation of a trademark from the goods and its packaging.
2. To the Administrative Code
The provisions of the Administrative Code setting out the level of fines applicable were also toughened up and now demand that an infringer, in addition to paying a fine, must destroy the confiscated goods with illegally used trademarks, service marks, appellation of origin of goods or a confusingly similar designation of a trademark, except in relation to genuine goods where the trademark has been applied by the trademark holder.
Under the previous version of the Administrative Code, the same provision required for the confiscation of goods from an infringer in order to eliminate an illegally used trademark, service mark, appellation of origin of goods or confusingly similar designation of a trademark where destructions of the goods was not possible.
3. To the Code on People's Health and the Health Care System
The above Code has been augmented by additional provisions, according to which disclosure and commercial use of confidential information in relation to medicinal preparations with new chemical components is not permitted without the consent of an applicant within six (6) years from the date of registration of a medicinal preparation, except in the following circumstances:
• if a compulsory licence for use of the medicinal preparation was issued in the name of a physical or legal person in accordance with patent law; or
• if use, manufacture, import, export and circulation of such a medicinal preparation is for non-commercial purposes.
At the same time, disclosure and use of such confidential information without an applicant's consent is possible at the Court's discretion if:
a) supply of a medicinal preparation is insufficient for public demand within twelve (12) months from the date of registration in the Republic of Kazakhstan; or
b) there is a necessity to protect public health in the case of emergency situations or for purposes of national security; or
c) actions are identified which violate the provisions of competition legislation.
4. To the Patent Law
The provisions on the exclusive rights and obligations of a patent holder have been modified to introduce a use requirement.
From now on, if the holder of a patent for an industrial property article refuses to activate a licence within ninety (90) days from the date of a request containing satisfactory terms for such a licence, any interested party can file an application to the court seeking a compulsory non-exclusive licence, especially if such an article has not been used within any period of three (3) consecutive years preceding the filing date of such an application.
According to the Amending Law, a compulsory non-exclusive licence can also be issued in the following circumstances:
• when it is necessary for purposes of national security or the protection of public health care; or
• when a patent holder abuses its exclusive rights and there is an absence of resistance against such abuse by any third party in agreement with the patent holder.
The Amending Law contains detailed requirements for the issuance of compulsory nonexclusive licences in relation to semi-conductors, where such licences can only be issued exclusively for non-commercial use, for the satisfaction of state and public demands or for the purpose of changing a situation where the legal provisions on competition have been violated and recognised by a court as a breach.
5. To the Law "On Trademarks, Service Marks and Appellations of Origin"
The provisions on the obligations of an infringer were modified in such a way so to require the infringer not only to cease from any infringing activities and to compensate the owner of the trademark for losses incurred, but also to destroy the good and its packaging containing an illegally used trademark or confusingly similar designation, except in cases where genuine goods were imported with the trademark applied by a trademark holder. The law allows for the introduction of infringing goods into public circulation only in cases where their introduction is considered to satisfy the public interest, provided that an illegally used trademark or confusingly similar designation is eliminated from the good and its packaging.
The same provisions were further supplemented by a requirement that the infringer remove a trademark or confusingly similar designation from the materials used for rendering the services, including documentation, signboards and advertisements.
For further information on the above issues, please do not hesitate to contact Gulnara Ilyassova (email@example.com) at: +7 727 258 48 90.