Article 21. Transfer of the exclusive right to a trademark and the right to use it under the Law on Trademarks, Service Marks, Geographical Indications and Appellations of Origin

Home / Laws / Article 21. Transfer of the exclusive right to a trademark and the right to use it under the Law on Trademarks, Service Marks, Geographical Indications and Appellations of Origin

1. The exclusive right to a trademark in respect of all or part of the goods (services) may be transferred under an assignment agreement.

The transfer of the exclusive right to a trademark is not allowed if it may cause misleading information about the product or its manufacturer.

2. In accordance with the terms of a license agreement, a comprehensive business license agreement, or another agreement (license agreement), any person who is not the owner (licensee) has the right to use a protected trademark with the permission of the owner (licensor).

The right to use a trademark may be granted in respect of all or part of the goods (services).

The licensee has the right to use the trademark throughout the territory of the Republic of Kazakhstan, unless otherwise provided in the contract.

The term of validity of the right to use a trademark may be extended in accordance with the terms of the contract or by concluding an additional agreement.

If the term is not specified in the contract, the validity period of the right to use the trademark is five years from the date of registration of this contract.

The license agreement must contain the following conditions::

1) maintaining the quality of goods (services) not lower than the quality of goods (services) of the trademark owner (copyright holder);

2) the right of the trademark owner (rightholder) to control the quality of their goods (services).

The transfer of the exclusive right to a trademark to another person does not entail the termination of the contract.

3. The exclusive right to a trademark in respect of all goods (services) and the right to use it may act as collateral.

4. The contracts and additional agreements referred to in this article are concluded in writing and are subject to registration in the State Register of Trademarks.

5. The transfer of an exclusive right or a license agreement is subject to registration within ten business days following the date of receipt of the application from the interested party to the agreement.

6. Failure to comply with the written form and/or registration requirement shall invalidate the contract.

Amendments to the State Register of Trademarks in connection with the termination of the contract or cancellation of registration on the basis of a court decision that has entered into force are carried out within one business day following the day of receipt of the application from the interested party to the contract.

Technical errors may be corrected in the registration information, without changing their affiliation, nature or content, within one business day from the date of receipt of the application of the interested person and subject to written notification to other interested parties to the contract.

7. The transfer of the right to a trademark shall be registered in the State Register of Trademarks in accordance with the procedure established by this Law.

8. The grounds temporarily preventing the registration of the transfer of the right to a trademark or the granting of the right to use it are:

1) the existence of a time limit for the restoration of the terminated exclusive right to a trademark;

2) submission of an incomplete package of documents or inconsistency of information in the submitted documents;

3) the information in the submitted documents does not correspond to the information contained in the State Register of Trademarks or in the register maintained in accordance with an international treaty ratified by the Republic of Kazakhstan.

9. If the grounds specified in paragraph 8 of this article are identified, a request for their elimination is sent to the applicant.

From the date of sending the request, the registration period is suspended for three months.

10. The grounds for refusal to register the transfer of the right to a trademark or grant the right to use it are:

1) expiration of the term for restoring the terminated term of the exclusive trademark right;

2) expiration of the time limit for the elimination of grounds temporarily preventing registration;

3) receiving an application for registration from a person who is not a party to the agreement;

4) absence of registration of the right to dispose of the exclusive trademark right;

5) misleading about the product or its manufacturer in the case of transfer of trademark rights;

6) the existence of obligations on the part of the party that prevent the granting of the right to use the trademark.

Termination of the exclusive right to a trademark entails termination of the license agreement.

The Law of the Republic of Kazakhstan dated July 26, 1999 No. 456.

This Law regulates relations arising in connection with the registration, legal protection and use of trademarks, service marks, geographical indications and names of places of origin of goods in the Republic of Kazakhstan.

President

Republic of Kazakhstan

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