Illegal use of a trademark

Illegal use of a trademark in Kazakhstan constitutes a violation of the Trademark Law, with various types of liabilities provided for such violations, as we will discuss below. Nevertheless, individuals and organizations often unlawfully use someone else’s trademark. This frequently occurs not intentionally but due to ignorance of the law and rules regarding trademarks. Many simply don’t realize that even a common picture on the internet could be protected by copyright.

However, the law is the law, and if the trademark owner discovers the unlawful use of their trademark, they have every right to hold the infringer accountable. Let’s delve deeper into this interesting topic.

Legal Protection of Trademarks A trademark or service mark is a designation registered in accordance with the Law or protected without registration under international treaties involving the Republic of Kazakhstan, serving to distinguish the goods (services) of one legal or natural person from similar goods (services) of other legal or natural persons.

Legal protection of trademarks in Kazakhstan is provided based on their registration. The exclusive right to use a trademark in any manner not contrary to the law belongs to the person in whose name the trademark is registered (the rights holder).

Thus, without the rights holder’s permission, the use of a trademark is prohibited.

Use of a Trademark The use of a trademark is recognized in any of the following activities:

using the trademark in the provision of services; manufacturing; application; importation; storage; offering for sale; selling goods bearing the trademark; use in signs, advertisements, printed materials, or other business documents; as well as any other introduction into commerce.

Illegal use of a trademark in Kazakhstan also includes the unauthorized use of a designation similar to the extent of confusion in public telecommunication networks (on the internet and other media resources), including social networks.

In accordance with the 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 rights holder (owner) through a license agreement. In this case, the use of the exclusive right to a trademark will not be considered a violation.

In this regard, illegal use of a trademark is grounds for legal action.

Liability for illegal use of a trademark: Administrative Liability In accordance with Article 158 of the Code of the Republic of Kazakhstan “On Administrative Offenses,” the unauthorized use of someone else’s trademark, service mark, or indication of the origin of goods or similar designations to the extent of confusion for homogeneous goods or services, as well as the unauthorized use of someone else’s trade name, except in cases related to the exhaustion of the exclusive right to a trademark, if these actions do not constitute elements of a criminal offense, entails a fine:

for individuals in the amount of 20 MRP; for small business entities or non-commercial organizations – in the amount of 30 MRP; for medium-sized business entities – in the amount of 40 MRP; for large business entities – in the amount of 80 MRP, with the confiscation of goods containing an illegal representation of a trademark, service mark, indication of the origin of goods, or similar designations to the extent of confusion for homogeneous goods or services.

Civil Liability According to Articles 1032 of the Civil Code of the Republic of Kazakhstan and 44 of the Law, a person unlawfully using a trademark or similar designations to the extent of confusion is obliged to:

immediately cease the violation and compensate the owner of the trademark for any losses incurred.

Criminal Liability The illegal use of someone else’s trademark, service mark, trade name, geographical indication, or indication of the origin of goods or similar designations for homogeneous goods or services, if this act causes significant damage:

is punishable by a fine of up to 80 MRP; corrective labor in the same amount; engagement in public works for up to 80 hours; or arrest for up to 20 days.

Practice:

Our client, the owner of a combined trademark in the food service industry, discovered a violation of their rights.

A competitor of our client registered an identical verbal trademark in the entertainment and car wash industry, not in the food service sector. However, they used a similar combined trademark to the extent of confusion to provide services in cafes and restaurants, thereby misleading consumers.

The court of first instance decided to satisfy our client’s claim; however, the defendant filed an appeal.

Lawyers from our company represented the client’s interests in the appellate court and ensured the enforcement of the first instance court’s decision regarding monetary compensation, the prohibition of using a similar confusing trademark, and the dismantling of the signage.