Law of the Kyrgyz Republic on Trademarks, Geographical Indications and Appellations of Origin of Goods entered into force

Registration of trademarks
Well-known trademarks
Consequences of failure to use the trademark
Disposal of the right to the trademark
Termination of trademark protection
Appellations of origin of goods and geographical indications
Transitional provisions

Registration of trademarks

The new law provides for new (electronic) forms of communication between the applicant and the patent office. It is allowed to submit a 3D image of the claimed designation in electronic format.

The restriction on the possibility to register a trademark only by individuals engaged in entrepreneurial activities has been removed.

The restriction on the registration of visually indistinguishable, sound and olfactory marks has been removed.

An additional ground for refusal to register a trademark has been introduced, namely a conflict with sites of cultural or natural heritage.

When registering designations that initially have no distinctiveness as trademarks, the new law allows taking into account the distinctiveness acquired as a result of using the designation.

A new ground for refusal to register a trademark has been introduced, namely a conflict with an earlier name of a selection invention.

The previous law did not provide for a possibility to file an application for a trademark in a foreign language. The new law provides for such a possibility and establishes the requirement to attach a translation into the state or official language to such an application.

It is possible to submit divisional applications while keeping the priority of the original application.

It is allowed to claim multiple priority under an application on the basis of several first applications filed in the Paris Convention countries.

A procedure for resolving the conflict between applications of different applicants with the same filing date has been established.

Publication of information about applications and the possibility for third parties to submit, within 3 months after the publication of the application, oppositions against registration (soft opposition), which are to be considered during the examination of the claimed designation, is provided for.

Some deadlines and procedure for their counting, extension and restoration have been changed:

• Deadline for submitting materials on request has been increased from 2 to 3 months, but it is to be counted from the request sending date and not from the date of its receipt. The deadline for extending the deadline for responding to a request has been increased from 6 to 12 months. No valid reasons are required to extend this deadline. It is possible now to restore the missed deadline for responding to a request;
• Deadline for conducting an examination of the claimed designation has been reduced from 12 to 7 months;
• Deadline for responding to a preliminary refusal has been increased from 2 to 3 months, but it is to be counted from the preliminary refusal sending date and not from the date of its receipt. In addition to the extension, it is also possible to restore the missed deadline for responding to a preliminary refusal;
• Deadline for filing an appeal against a decision to refuse to register has been increased from 2 to 3 months, but it is to be counted from the date of sending the decision, not from the date of its receipt. The deadline for consideration of an appeal has been reduced from 4 to 3 months, and the deadline for challenging a decision taken on an appeal in court has been reduced from 6 to 3 months. To restore the missed deadline for challenging the decision of the examination, it is not required, as before, to have valid reasons for missing this deadline;
• Deadline for paying the registration fee has been increased from 2 to 3 months, but it is to be counted from the date of sending a decision on registration and not from the date of its receipt; - Deadline for issuing a certificate for a trademark has been significantly reduced (more than three times).

The permissible changes that can be made to the registration do not mention changes to individual elements of the mark, which was allowed under the previously applicable law, although the list of permissible changes formulated in the new law is non-exhaustive.

Well-known trademarks

Any identical or confusingly similar trademark of another person, not only the one intended for homogeneous goods, may prevent recognition as well-known.

Protection of well-known marks has been extended to all goods and services without any additional conditions. Previously, the protection of a well-known trademark for non-homogeneous goods was subject to the condition that the use of this trademark by another person for non-homogeneous goods would be associated by consumers with the holder of the exclusive right to the well-known trademark and could infringe upon his legitimate interests.

Consequences of failure to use the trademark

It is now possible to postpone the countdown date of the 3-year period of non-use when transferring the right to the trademark by way of succession: the beginning of the countdown is postponed to the transfer registration date.

A mandatory pre-trial procedure for resolving a dispute over the non-use of the trademark has been introduced. First, a person interested in terminating the protection of an unused trademark must contact the owner of this trademark proposing to either refuse the mark by submitting a relevant application to Kyrgyzpatent or transfer the trademark to this person. If within two months it is not possible to agree with the trademark owner, the interested person may, within one month after that, turn to the court asking to terminate the registration early.

Disposal of the right to the trademark

The terms and conditions of the licensing agreement regarding the quality of the goods and control over it have changed. The previous law required mandatory control by the licensor and required the licensee to ensure that the quality of the licensed goods is not lower than that of the licensor. The new law made control a right, not a duty, of the licensor, and the quality of the goods must comply with the requirements established by the licensor.

The joint liability of the licensor and the licensee for the requirements imposed on the licensee as the manufacturer of the goods has been established.

The range of licensees who may be granted the right to use the trademark containing protected geographical indications or appellations of origin of goods has been limited. The licensee shall have the right to use such a geographical indication or appellation of origin of goods.

Termination of trademark protection

The right holder's lack of the status of an individual entrepreneur is no longer a reason to invalidate the registration. However, given the transitional provisions of the new law, it can be assumed or supposed that the provisions of the old law will apply to the old registrations, and therefore they can be challenged for violation of previously established requirements, including related to the subject of law.

The deadline for consideration of an appeal against the trademark has been reduced from 4 to 3 months. The deadline for challenging a decision, taken on the appeal, in court has been reduced from 6 to 3 months.

Termination (early) of the trademark protection is allowed only based on the court’s decision. Previously, in case of liquidation of a legal entity or termination of entrepreneurial activities by an individual owner, the registration was to be terminated by the decision of Kyrgyzpatent.

Termination of entrepreneurial activities by the trademark owner is no longer a reason to terminate the trademark registration. However, given the transitional provisions of the new law, it can be assumed or supposed that the provisions of the old law will apply to the old registrations, and they can be terminated due to the cessation of business activities by the owner being an individual.

A new ground for terminating the trademark registration by a court decision has been introduced, namely recognition under the established procedure of actions related to the registration of this trademark or a designation similar to it as abuse of right or unfair competition.

There is a one-year ban on registration of the terminated trademark in the name of another person, if the protection has been terminated due to its expiration, due to the death of the owner or liquidation of the owner being a legal entity, as well as due to the owner's waiver of the trademark.

Appellations of origin of goods and geographical indications

Along with the appellation of origin of goods, protection of a similar subject matter — a geographical indication — has been introduced.

Additional grounds are provided for to prevent the granting of protection to the appellation of origin of goods: if the claimed designation is capable of misleading the consumer with respect to the goods or their manufacturer or is similar to an earlier trademark or to the name of a plant variety or animal breed, if there is a danger of misleading the consumer; or if the goods in respect of which a geographical indication or appellation of origin of goods is claimed do not meet the requirements established by the law with regard to their properties or place of manufacturing.

Associations (unions) whose members act on the basis of the articles of association and carry out production activities in respect of the relevant goods may register a geographical indication or appellation of origin of goods. At the same time, it is not clear from the new law whether the possibility of registering geographical indications or appellations of origin of goods by separate individuals or legal entities remains.

Under the conditions established by law, the right to use an already registered geographical indication or appellation of origin of goods may be subsequently granted to any individual or legal person who meets the requirements established by the law.

The possibility of filing an application for a geographical indication or appellation of origin of goods in electronic form is provided for.

The list of documents under the application for a geographical indication is more extensive than the application for an appellation of origin of goods.

The articles of association of the group (apparently referring to an association or union) is specified as one of the documents under the application for a geographical indication or appellation of origin of goods.

The deadline for responding to a request in case of examination of an application for a geographical indication or appellation of origin of goods is now counted not from the date of request receipt by the applicant but from the date of its sending by the office. No valid reasons are required to extend this deadline.

The period during which the applicant can make changes to the application has been increased (now changes can be made until a decision is taken on the application), but a fee is to be paid for any change. Previously, changes could be made free of charge, but only within one month after filing the application.

The law has established a period for conducting a preliminary examination — 1 month from the application filing date.

Publication of information on applications for geographical indications and appellations of origin of goods and the opportunity for third parties to submit an appeal declaring the non-compliance of the claimed designation with the requirements to the geographical indications and appellations of origin of goods during the consideration of the application is provided for. An appeal is to be considered when conducting an examination of the claimed designation.

Period for filing an appeal against a decision to refuse to register has been increased from 2 to 3 months, but it is to be counted from the date of sending the decision to an applicant, not from the date of its receipt. The deadline for consideration of an appeal has been reduced from 4 to 3 months, and the deadline for challenging a decision taken on an appeal in court has been reduced from 6 to 3 months.

The law defines the cases of illegal use of the geographical indications and appellations of origin of goods by persons entitled to use them: use in respect of goods that do not have the necessary properties or are produced outside the relevant territory.

The period for consideration of an appeal by third parties against the granting of protection to the geographical indication or the appellation of origin of goods has been reduced from 4 to 3 months, and the period for challenging a decision made on it in court has been reduced from 6 to 3 months.

Under the new law, the protection of the geographical indication and appellation of origin of goods and the validity of the relevant certificate may be early terminated through the courts only.

The list of protection methods and penalties in case of illegal use of a trademark, geographical indication and appellation of origin of goods has been significantly expanded.

In particular, instead of a compensation of damages for infringement of the right to a trademark, geographical indication or appellation of origin of goods, the right holder is entitled to claim a compensation within the amount established by the law or in the double amount of the value of the counterfeit goods or rights of use.

A wide range of measures has been envisaged to secure a claim for infringement of the rights to a trademark, geographical indication and appellation of origin of goods, including the arrest of tangible media, equipment and materials, the prohibition on the relevant actions in information and telecommunications networks, if such tangible media, equipment and materials or such actions are assumed to infringe the exclusive right to a trademark, geographical indication and appellation of origin of goods.

Transitional provisions

In accordance with the transitional provisions, applications filed before the entry into force of the new law are to be considered under the previously applicable law on trademarks.

Disputes already under consideration and disputes in connection with the registration of trademarks and appellations of origin of goods under a previously applicable law are also to be considered under the previous law.