IP developments in Central Asia

All these countries were a part of the former USSR. At present, the total population of this area exceeds 60 million. The biggest and most economically developed country in this area is Kazakhstan; Uzbekistan is the most populated.

The intellectual property (IP) laws of these countries were created at the beginning of the 1990s. Initially the relevant laws were very similar to Russian legislation. Over the course of time, the legislation developed and acquired some national speci c characteristics. But generally, the IP laws still share common traits.

These countries are members of many international treaties on IP, including the following:

• Paris Convention of the Protection of IP;

• Madrid Protocol Concerning the International Registration of Marks (Kazakhstan, Kyrgyzstan and Uzbekistan are also parties of the Madrid Agreement);

• Patent Cooperation Treaty;

• Eurasian Patent Convention;

• Nice Agreement Concerning the International Classification of Goods and Services;

• Strasbourg Agreement Concerning the International Patent Classification;

• Locarno Agreement Establishing an International Classification for Industrial Designs;

• Berne Convention (Turkmenistan is not a member of this treaty).

Trademarks

The laws of the Central Asia countries provide no rights to unregistered trademarks. Trademark registrations are granted on a first come, first served basis. The trademark examination is composed of formal and substantive examination. The formal examination verifies whether the application meets the formal requirements.

This is followed by the substantive examination, which verifies whether the mark complies with the requirements for registration of a trademark. The substantive examination of a trademark includes examination on the basis of ‘absolute’ grounds for refusal (descriptiveness, lack of distinctiveness and so on) as well as on the basis of ‘relative’ grounds, ie, prior trademark rights.

The process of registration in Central Asia takes no less than one year. However, in some countries, for example, Turkmenistan, this process may take several years.The trademark legislation in these countries does not include a possibility to oppose a trademark application during examination. However, after registration, any interested party may file a cancellation action against such a trademark on the basis of its prior rights and other grounds for cancellation.

Furthermore, a trademark registration may be cancelled on the basis of non-use. The relevant terms for non-use requirement are different in these countries and may be three or five years starting from the date of trademark registration.

In Turkmenistan, the non-use requirement is a new provision of law, having been established only in November 2008. It became possible to cancel a trademark registration on the basis of non-use only in November 2011. A trademark registration in Turkmenistan is valid for 10 years from the date of registration.

In other countries in Central Asia, a trademark registration is in force for 10 years from its  filing date. In the  final year of validity of a trademark registration and within six months of its expiration, a trademark owner may renew the registration for the next 10 years.

Patents

All the countries in Central Asia are members of the Eurasian Patent Convention (EPC). This treaty provides the possibility of obtaining patent protection through Patent Cooperation Treaty (PCT) procedures by designating the Eurasian Patent Office (EPO) in the PCT application, or directly through the EPO. A patent through the EPO may be obtained within two years.

Certainly, an applicant may obtain national patents in the countries of the Central Asia, but most foreign applicants prefer to use procedures under the EPC for obtaining patents in these countries. Patent criteria in Central Asia are very similar, namely worldwide novelty, inventive step and industrial applicability. It is important to note the procedure of obtaining an ‘innovation’ patent, stipulated in Kazakhi Patent Law.

In Kazakhstan, an applicant may obtain an innovation patent instead of a normal patent. The innovation patent is granted on the basis of a formal examination of an application as well as performing a patent search within Kazakhi patents only. As a result, the applicant obtains an innovation patent which is granted to him at ‘his own risk’. However, the owner of this innovation patent has the same legal rights as an owner of the normal patent.

Recent amendments

The most important recent amendments to IP law have come into force, or are on their way to becoming effective, in Kazakhstan. Kazakhstan recently became a member of the Eurasian Customs Union, together with Russia and Belarus.  The general direction of the integration of these three countries is to create a common economic space and to format a single customs territory.

At present, the agreement on the common customs register of objects of IP has been ratified and is now in force. Furthermore, in December 2010, Kazakhstan, Russia and Belarus signed an agreement on the common principles of regulation for protection of IP rights. 

This agreement is not yet ratified, but the process of its ratification has been initiated. According to the agreement, goods may circulate within the borders of these three countries without any barriers. The agreement contains the regional principle of the trademark rights exhaustion in the territory of these three countries.

Moreover, at present the parties are developing a new treaty related to common trademark registration procedures in the territory of the customs union.

This draft simplifies the procedure for obtaining trademark and service mark registration for any applicants in the territories of member countries, allowing the filing of a single trademark application in any national patent office. Then the office of origin will coordinate the process of examining this single application by all other national offices and a single certificate will be granted.

General principles of obtaining trademark protection in this draft are similar to the relevant provisions stipulated for European trademarks. We also expect significant amendments to the IP legislation of Kazakhstan in 2012, but details were unavailable at the time of writing.