Commentary on Article 222. Unlawful Use of a Trademark of the Criminal Code of the Republic of Kazakhstan

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1. Unlawful use of another person's trademark, service mark, trade name, appellation of origin of goods, or designations similar thereto for homogeneous goods or services, if this act has caused major damage, —

shall be punishable by a fine in an amount of up to eighty monthly calculation indices, or corrective labor in the same amount, or engagement in community service for a period of up to eighty hours, or arrest for a period of up to twenty days.

2. Unlawful use of warning marking in relation to a trademark or appellation of origin of goods not registered in the Republic of Kazakhstan, if this act has caused major damage, —

Note. A person who commits an act provided for by this Article for the first time shall be exempt from criminal liability in the event of voluntary compensation for the damage.

With the development of the institution of intellectual property, the content of which is characterized by copyrighted developments, the use of individual programs, trademarks and the latest computer technologies, the protection of intellectual property through various legislative instruments is recognized as important. Piracy, counterfeit products and plagiarism are obstacles to the modernization of society.

The public danger of the criminal misdemeanor under consideration lies in the substantial economic damage that prevents authors and trademark owners from fully realizing their achievements, receiving corresponding income and developing production. In addition, such instruments of the market mechanism as fair competition and respect for the rights and legitimate interests of other owners are violated. Unfair competition leads to the predominance in the market of low-quality goods and, at times, goods that are dangerous to the life and health of citizens.

The object of the criminal misdemeanor is public relations governing the right to fair competition and the right to use a trademark.

National legislation on trademarks is based on the provisions of the Paris Convention for the Protection of Industrial Property of March 20, 1883, which classifies trademarks, service marks, trade names and indications of the places of origin of goods as objects of industrial property protection (Part 2 of Article 1).

The Law of the Republic of Kazakhstan dated July 26, 1999, “On Trademarks, Service Marks and Appellations of Origin of Goods” regulates relations arising in connection with the registration, legal protection and use of trademarks, service marks and appellations of origin of goods in the Republic of Kazakhstan. In accordance with Subparagraph 8) of Article 1 of this Law, a trademark and a service mark are designations registered in accordance with the aforementioned Law or protected without registration by virtue of international treaties to which the Republic of Kazakhstan is a party, serving to distinguish the goods (services) of certain legal entities or individuals from homogeneous goods (services) of other legal entities or individuals.

An appellation of origin of goods is a geographical indication used to designate a product whose special properties are exclusively or mainly associated with the place of its production, including natural conditions and (or) human factors.

Legal protection of trademarks, service marks and appellations of origin of goods in the Republic of Kazakhstan is carried out on the basis of their registration in accordance with the procedure established by the aforementioned Law, as well as without registration by virtue of international treaties of the Republic of Kazakhstan.

The right to a trademark is certified by a certificate. The trademark owner has the exclusive right to use and dispose of the trademark belonging to them in respect of the goods and services specified in the certificate.

No one may use a trademark protected in the Republic of Kazakhstan without the permission of its owner (Article 4 of the Law).

The subject matter of the criminal offense under Part 1 of Article 222 of the Criminal Code of the Republic of Kazakhstan includes:

trademark — a designation registered in accordance with the established procedure and intended to distinguish, respectively, the goods of certain legal entities or individuals from homogeneous goods of others. It is assigned to goods of a material nature — physical items;

service mark — a mark used to distinguish the services of one enterprise from the services of all other enterprises. In the Law of the Republic of Kazakhstan “On Trademarks, Service Marks and Appellations of Origin of Goods” and the Civil Code of the Republic of Kazakhstan, the terms “trademark” and “service mark” are used as equivalent categories;

trade name — a means serving to distinguish one commercial organization from other commercial organizations;

appellation of origin of goods — the name of a country, populated locality, area or other geographical object used to designate a product whose special properties are exclusively or mainly determined by natural conditions or other factors characteristic of that geographical object, or by a combination of natural conditions and such factors. An appellation of origin of goods may be the historical name of a geographical object.

The objective side of the criminal misdemeanor consists in the unlawful use of another person's trademark, service mark, trade name, appellation of origin of goods or designations similar thereto for homogeneous goods or services.

The use of a trademark, service mark, trade name or appellation of origin of goods is recognized as their application to goods and (or) their packaging, use in advertising, printed publications, on signs, during the display of exhibits at exhibitions and fairs, as well as any other introduction thereof into civil circulation.

According to Subparagraph 9) of Article 1 of the above-mentioned Law, the use of a trademark or appellation of origin of goods means the application of a trademark or appellation of origin of goods to goods and in the provision of services in respect of which they are protected, and (or) their packaging, the manufacture, application, import, storage, offering for sale and sale of goods bearing the designation of a trademark or appellation of origin of goods, application on signs, in advertising, printed materials or other business documentation, as well as any other introduction thereof into civil circulation.

The unlawful use of a trademark includes:

use of another person's trademark without the permission of its lawful owner;
use of a trademark on goods whose quality is lower than the quality of the goods of the trademark owner.

The use of an appellation of origin of goods consists in its application in advertising, on packaging, in prospectuses, invoices, forms and other documentation related to the introduction of goods into economic circulation.

The use of an appellation of origin of goods is unlawful in the following cases:

when there is no certificate of registration of the given appellation, even if the genuine place of origin of the goods is indicated;
when the appellation is used in translation or in combination with such expressions as “kind”, “type”, “imitation”, etc., as well as when a similar designation is used for homogeneous goods that is capable of misleading consumers regarding the place of origin and special properties of the goods;
when the name of a geographical object identical or confusingly similar to a registered appellation of origin of goods is used without registration in respect of homogeneous goods;
when appellations of origin of goods that constitute or contain the names of geographical objects identifying mineral waters, wines or strong alcoholic beverages are used to designate goods that do not originate from that place, even if the actual place of origin of the goods is indicated, or a translation is used, or the designation is accompanied by expressions such as “kind”, “type”, “style” or other similar expressions.

Alienation, other transactions involving the assignment of the right to use an appellation of origin of goods, and the granting of the right to use an appellation of origin of goods on the basis of a license agreement are not permitted.

Part 2 of Article 222 of the Criminal Code also provides for criminal liability for the unlawful use of warning marking in relation to a trademark or appellation of origin of goods not registered in the Republic of Kazakhstan, if this act has caused major damage.

The act provided for in Part 2 of the commented Article differs from the act provided for in Part 1 in terms of the subject matter of the criminal offense, which is warning marking in relation to a trademark or appellation of origin of goods not registered in the Republic of Kazakhstan.

In accordance with Article 20 of the Law, the owner of a trademark certificate may place warning marking next to the trademark in the form of the Latin letter R or verbal designations indicating that the designation being used is a trademark registered in the Republic of Kazakhstan. Warning marking makes it possible to distinguish domestic goods from foreign goods.

By their legal structure, the acts provided for in Parts 1 and 2 of Article 222 of the Criminal Code are material offenses. The criminal misdemeanors shall be considered completed from the moment major damage is caused. According to Subparagraph 38) of Article 3 of the Criminal Code, major damage shall mean damage caused to an individual in an amount exceeding two hundred times the monthly calculation index, or damage caused to an organization or the state in an amount exceeding two thousand times the monthly calculation index.

From the subjective side, the criminal misdemeanors provided for in Parts 1 and 2 of Article 222 of the Criminal Code are committed intentionally. The person is aware that they are unlawfully using another person's trademark, service mark, trade name, appellation of origin of goods or designations similar thereto for homogeneous goods or services, as well as unlawfully using warning marking in relation to a trademark not registered in the Republic of Kazakhstan; they foresee the possibility or inevitability of causing major damage to an individual, organization or the state as a result thereof and desire this outcome or consciously allow it to occur.

The subject of the criminal misdemeanor may be any sane individual who has reached the age of sixteen.

The unlawful use of a trademark combined with the unlawful use of objects of copyright or related rights, appropriation of authorship, or infringement of rights to inventions, utility models, industrial designs, selection achievements or topographies of integrated circuits entails qualification of the act under the aggregate of this Article and Articles 198 and 199 of the Criminal Code, depending on the nature of the act.

If, as a result of the unlawful use of another person's trademark, service mark, trade name, appellation of origin of goods or designations similar thereto for homogeneous goods or services, as well as the unlawful use of warning marking in relation to a trademark or appellation of origin of goods not registered in the Republic of Kazakhstan, the damage caused is not major, the act committed by the guilty person shall be qualified under Article 158 of the Code of Administrative Offenses.

The acts provided for in Parts 1 and 2 of Article 222 of the Criminal Code are classified as criminal misdemeanors.

Commentary of 2021 to the Criminal Code of the Republic of Kazakhstan by Isidor Shamilovich Borchashvili, Honored Figure of Kazakhstan, Doctor of Law, Professor, Academician of the Kazakhstan National Academy of Natural Sciences, Member of the Scientific Advisory Councils under the Constitutional Council of the Republic of Kazakhstan and the Supreme Court of the Republic of Kazakhstan, Member of the Working Group on Reform of the Law Enforcement System under the Security Council of the Republic of Kazakhstan, Honored Employee of the Ministry of Internal Affairs of the Republic of Kazakhstan.

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Article 222. Illegal use of a trademark, service mark, trade name, geographical indication and appellation of origin of the Criminal Code of the Republic of Kazakhstan, the Criminal Code of the Republic of Kazakhstan

Article 222. Illegal use of a trademark, service mark, trade name, geographical indication and appellation of origin of the Criminal Code of the Republic of Kazakhstan, the Cr...