Comment to Article 158. Illegal use of someone else's trademark, service mark, appellation of origin or brand name The Code of the Republic of Kazakhstan on Administrative Offences
Illegal use of someone else's trademark, service mark, or appellation of origin, or confusingly similar designations for similar goods or services, as well as illegal use of someone else's brand name, except in cases involving the exhaustion of the exclusive right to the trademark, if these actions do not contain signs of a criminal offense, -
entail a fine on individuals in the amount of twenty, on small businesses or non-profit organizations - in the amount of thirty, on medium-sized businesses - in the amount of forty, on large businesses - in the amount of eighty monthly calculation indices, with confiscation of goods containing an illegal image of a trademark, service mark, appellation of origin or confusingly similar designations for similar goods or services.
Note. Counterfeit goods confiscated in accordance with this Article are subject to destruction in accordance with the procedure provided for in Article 795 of this Code, except in cases where the introduction of such goods into circulation is necessary in the public interest and does not violate the requirements of the legislation of the Republic of Kazakhstan on consumer protection (provided that the illegally used trademark or similar trademark is removed from the goods and their packaging). confusingly, they are notations).
The commented article establishes administrative liability for the illegal use of someone else's trademark, service mark, appellation of origin or brand name.
The offender is brought to administrative responsibility under the commented article only if there are no signs of a criminally punishable act in the offender's actions. Otherwise, offenders - individuals or officials of a legal entity - are subject to criminal liability for the illegal use of a trademark in accordance with the norms of the Criminal Code. In this regard, an initially unlawful act of a person for the illegal use of another's trademark, service mark, appellation of origin or brand name should be checked by law enforcement agencies for the presence or absence of signs of a criminal offense and grounds for bringing the perpetrator to criminal responsibility.
The generic object of the offense provided for in Article 158 of the Administrative Code is the procedure established in the legislation of the Republic of Kazakhstan and protected by the state for conducting business in the Republic of Kazakhstan.
The direct object of the offense provided for in Article 158 of the Administrative Code is the procedure established by the legislation of the Republic of Kazakhstan and protected by the state for using a trademark, service mark, appellation of origin or brand name when selling goods, works, and services on the territory of the Republic of Kazakhstan.
According to clause 8) of Article 1 of the Law of the Republic of Kazakhstan dated July 26, 1999 No. 456-I "On Trademarks, Service Marks and Appellations of Origin of Goods", a trademark, service mark is a designation registered in accordance with the cited Law or protected without registration by virtue of international treaties in which the Republic participates Kazakhstan, which serves to distinguish the goods (services) of some legal entities or individuals from similar goods (services) of other legal entities or individuals.
The designation of the place of origin of goods, according to paragraphs 11) of Article 1 of the above-mentioned Law, is understood to mean a designation representing or containing the name of a country, region, locality, locality or other geographical indication, as well as an indication derived from such an appellation and made known as a result of its use in relation to goods, special properties, the quality, reputation or other characteristics of which are mainly related to its geographical origin, including the characteristic natural conditions and (or) human factors.
According to Clause 2 of Article 38 of the Civil Code, a corporate name is the name of a legal entity that is a commercial organization after its registration. A legal entity has the exclusive right to use a brand name. A person who unlawfully uses someone else's brand name, at the request of the owner of the right to the brand name, is obliged to stop using such a name and compensate for the losses caused.
Data on the state registration of legal entities and the brand name of commercial organizations are included, as required by paragraph 2 of Article 42 of the Civil Code, in the National Register of Business Identification Numbers.
Trade names, trademarks and other means of individualization of products, according to Clause 2 of Article 115 of the Civil Code, relate to property benefits and rights (property), and therefore the legal regime of property and its legal protection is fully applied to them.
The subjects of the offense provided for in Article 158 of the Administrative Code are individuals and legal entities-business entities that illegally use someone else's trademark, service mark, appellation of origin or brand name in their business activities.
The subjective side of the unlawful acts provided for in Article 158 of the Administrative Code for individual offenders is characterized by guilt in the form of intent or negligence. The guilt of a person is revealed by his mental attitude towards the illegal acts committed by him and their harmful consequences.
The subjective side of offenses, the subjects of which are legal entities, is not subject to determination due to the existence of a legal requirement to establish guilt as a condition for bringing to administrative responsibility, only in relation to individuals. According to the legislation of the Republic of Kazakhstan on administrative responsibility, legal entities are administratively liable for the mere fact that they have committed an illegal act or omission, for which administrative liability is provided for in the Administrative Code, without taking into account the guilt of the officials of the legal entity who committed this act.
The objective side of the offense provided for in the commented article is characterized by the commission by a person of illegal (and for individuals – also guilty) actions, expressed in the illegal use of someone else's trademark, service mark or appellation of origin, or confusingly similar designations for similar goods or services, as well as the illegal use of someone else's brand name.
Under the use of a trademark or appellation of origin, according to clause 9) art. 1 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Names of places of Origin of Goods", means the placement of a trademark or an appellation of origin on goods and in the provision of services for which they are protected, on their packages, manufacture, application, import, storage, offer for sale, sale of goods with a trademark designation. a mark or appellation of origin, its use in signage, advertising, printed products or other business documentation, as well as their other introduction into circulation.
Accordingly, such use should be considered illegal if the person using the trademark (service mark), appellation of origin or brand name does so without the consent and knowledge of the owner (rightholder) of the trademark (service mark), brand name and without any legitimate grounds and properly executed title documents. documents.
The owner (rightholder) of a trademark or the owner of the right to use an appellation of origin, in accordance with clauses 10) of Article 1 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellations of Origin", is a natural or legal person who has the exclusive right to a trademark or the exclusive right to use an appellation of origin in accordance with with the cited Law.
By virtue of the direct indication in the commented norm, cases of trademark use related to the exhaustion of the exclusive right to a trademark are not considered an offense.
The offense provided for in the commented article is considered to have been committed at the moment when the violator:
1) unlawfully placed someone else's trademark (service mark) or someone else's appellation of origin on his goods and services or on their packages,
2) has unlawfully manufactured, applied, imported, stored, offered for sale, sold goods with the illegal designation of another's trademark (service mark) or another's name of the place of origin of the goods, as well as
3) illegally used them in his signage, advertising, printed products or other business documentation, or otherwise illegally introduced them into circulation.
The composition of an administrative offense provided for in Article 158 of the Administrative Code is formal. To bring to administrative responsibility for its commission, it is not necessary to establish the fact that the offender caused material damage to the state, organization or citizen.
An administrative penalty in the form of a fine has been imposed for committing an offense under Article 158 of the Administrative Code.
The amount of the fine for committing an offense under Article 158 of the Administrative Code is differentiated depending on the legal status of the offender, and if the offender is a business entity, it also depends on which category of business entities he belongs to. In this regard, the body bringing the offender to administrative responsibility must first establish the legal status of this person and the category of entrepreneurship to which he belongs before bringing a person to justice.
Depending on the legal status of the offender and the business category to which he belongs, the amount of the fine is:
- for individuals – 20 MCI;
- for small businesses or non–profit organizations - 30 MCI;
- for medium–sized businesses - 40 MCI;
- for large business entities – 80 MCI.
Also, as a punishment for committing an offense provided for in the commented article, its sanction provides for the confiscation of goods containing an illegal image of a trademark, service mark, appellation of origin or confusingly similar designations for similar goods or services (if any). Confiscation is a mandatory punishment along with a fine and cannot but be applied at the discretion of the body imposing the penalty.
As a general rule, provided for in the note to the commented article, counterfeit goods confiscated in accordance with the commented article are subject to destruction in accordance with the procedure provided for in Article 795 of the Administrative Code.
The exception to this general rule, according to the note to the commented article, is cases when the introduction of confiscated goods into circulation is necessary in the public interest and does not violate the requirements of the legislation of the Republic of Kazakhstan on consumer protection. At the same time, a prerequisite for the introduction of confiscated goods into circulation is the preliminary removal from the goods and their packaging, at the request of a note to the commented article, of an illegally used trademark or a designation confusingly similar to it.
The administrative penalty under the commented article is imposed on the offender only by the court, since the case of an administrative offense, for which the law provides for a sanction in the form of confiscation, must be considered in court.
Officials of state revenue bodies and judicial authorities have the right to draw up protocols on administrative offenses provided for in the commented article.
Scientific and practical commentary to the Code of the Republic of Kazakhstan on Administrative Offences (article-by-article) from the Author's team:
Bachurin Sergey Nikolaevich, Candidate of Law, Associate Professor – chapter 48 (co-authored with E.M. Khakimov);
Gabdualiev Mereke Trekovich, Candidate of Law – Chapters 11, 21, 22, 23;
Zhusipbekova Ainur Maratovna, M.yu.n. – chapter 13 (co-authored with Karpekin A.V.); chapters 33, 39 (co-authored with Seitzhanov O.T.);
Karpekin Alexander Vladimirovich, Candidate of Law, Associate Professor – chapter 13 (in collaboration with Zhusipbekova A.M.);
Korneychuk Sergey Vasilyevich – chapters 2; chapter 6 (co-authored with O.T. Seitzhanov, E.M. Khakimov); chapter 8; chapter 25 (co-authored with E.M. Khakimov); articles 457-470, 488, 488-1, 491-506; chapters 28, 30, 52;
Ilya Petrovich Koryakin, Doctor of Law, Professor – Chapter 49;
Kisykova Gulnara Bauyrzhanovna, Candidate of Law – chapter 20;
Omarova Botagoz Akimgereevna, Candidate of Law – chapters 17; chapter 18 (co-authored with B.A. Parmankulova); chapters 26, 31; chapter 32 (co-authored with B.A. Parmankulova);
Parmankulova Bayan Askhanbaevna – chapter 18 (co-authored with Omarova B.A.); chapters 19, 32 (co-authored with Omarova B.A.); chapter 43 (co-authored with Tukiev A.S.);
Podoprigora Roman Anatolyevich, Doctor of Law, Professor - Chapter 24, articles 489, 489-1, 490;
Porokhov Evgeny Viktorovich, Doctor of Law – Chapters 14, 15, 16, 29, articles 471-475;
Seitzhanov Olzhas Temirzhanovich, Candidate of Law, Associate Professor, – chapter 4; chapter 5 (co-authored with E. M. Khakimov); chapter 6 (co-authored with S.V. Korneychuk, E.M. Khakimov); chapter 9; chapter 10 (co-authored with B.E. Shaimerdenov, V.V. Filin); chapter 33 (co-authored with Zhusipbekova A.M.); chapter 36 (co-authored with Shaimerdenov B.E.); chapter 39 (co-authored with Zhusipbekova A.M.);
Smyshlyaev Alexander Sergeevich, PhD. – chapters 38, 40, 42, 43-1 (co-authored with A.S. Tukiev); chapter 44;
Aslan Sultanovich Tukiev - Candidate of Law, Associate Professor – chapters 1, 3, 35; chapters 38, 40, 42, (co-authored with A.S. Smyshlyaev); chapter 43 (co-authored with B.A. Parmankulova); chapter 43-1 (co-authored with A.S. Smyshlyaev); chapter 44-1 (co-authored with Shipp D.A.); chapter 45; 46 (co-authored with Shipp D.A.); chapter 47;
Filin Vladimir Vladimirovich, Candidate of Law, Associate Professor – Chapter 10 (in collaboration with O.T. Seitzhanov, B.E. Shaimerdenov);
Yerzhan Maratovich Khakimov, M.yu.n. – chapter 5 (co-authored with O.T. Seitzhanov); chapter 6 (co-authored with O.T. Seitzhanov, S.V. Korneychuk); chapter 7; chapter 25 (co-authored with S.V. Korneychuk); chapters 34, 41; chapter 48 (co-authored with S.N. Bachurin); chapter 53;
Shaimerdenov Bolat Yerkenovich, M.yu.n., – chapter 10 (co-authored with O.T. Seitzhanov, V.V. Filin); chapter 12; articles 476-487, 507-509; chapter 36 (co-authored with O.T. Seitzhanov); chapters 37, 50, 51.
Shipp Denis Alekseevich – chapters 44-1, 46 (in collaboration with A.S. Tukiev).
Date of amendment of the act: 01.01.2020 Date of adoption of the act: 01.01.2020 Place of acceptance: 100050000000 Authority that adopted the act: 103001000000 Region of operation: 100000000000 NPA registration number assigned by the regulatory body: 5 Status of the act: new Sphere of legal relations: 029000000000 / 028000000000 / 029002000000 / 028004000000 / 029001000000 / 026000000000 / 001000000000 / 001008000000 / 030000000000 The form of the act: COMM / CODE Legal force: 1900 Language of the Act: rus
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