Intellectual property (trademark) disputes

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Intellectual property (trademark) disputes

10 January 2024

Intellectual property (trademark) disputes

According to art.961 of the Civil Code of the Republic of Kazakhstan

1. The objects of intellectual property rights include:

1) the results of intellectual creative activity;

2) means of individualization of participants in civil turnover, goods, works or services.

2. The results of intellectual creative activity include:

1) works of science, literature and art;

2) performances, productions, phonograms and broadcasts of broadcasting and cable broadcasting organizations; 3) inventions, utility models, industrial designs;

4) breeding achievements;

5)Integrated circuit topologies;

6) undisclosed information, including production secrets (know-how);

7) other results of intellectual creative activity in cases stipulated by this Code or other legislative acts.

3. The means of individualization of participants in civil turnover, goods, works or services include: 1)brand names;

2)trademarks (service marks);

3) names of places of origin (indications of origin) of goods;

4) other means of individualization of participants in civil turnover, goods and services in the cases provided for by this Code and legislative acts.

One of the main issues that immediately arise when considering the topic of the communication is the question of the relationship between the concepts of "intellectual property law" and "copyright".

According to the dictionaries, "copyright is a section of civil law that regulates relations related to the creation and use of works of science, literature and art," and "intellectual property is a conditional collective term that includes copyrights and rights related to various types of industrial property. The Civil Code also considers these concepts (Special part). Section 5 of the Civil Code of the Republic of Kazakhstan is called "Intellectual Property Law" and includes chapters 49 to 56.

According to clause 1 of Article 972 of the Civil Code of the Republic of Kazakhstan

1. The objects of copyright are:

1) literary works;

2) dramatic and musical-dramatic works;

3) screenplays;

4) works of choreography and pantomime;

5)musical compositions with or without text;

6)Audiovisual works;

7)paintings, sculptures, graphics and other works of fine art;

8)works of applied art;

9) works of architecture, urban planning and landscape art;

10) photographic works and works obtained by methods similar to photography;

11) maps, plans, sketches, illustrations and three-dimensional works related to geography, topography and other sciences;

12) computer programs;

13) other works.

According to Article 976 of the Civil Code, the holder of exclusive copyright may use the copyright protection mark, which is placed on each copy of the work and necessarily consists of three elements, to notify about his rights.:The Latin letter "C" in a circle; the name(s) of the holder of exclusive copyrights and the year of the first publication of the work.

In accordance with Article 971 of the Civil Code, copyrights arise due to the fact that the intellectual creative work of the author (co-author) and the objective form of works of science, literature and art, the types of which are listed in Article 972 of the Civil Code, Article 7 of the Law of the Republic of Kazakhstan "On Copyright and Related Rights" dated 06/10/1996.

Example: So, Oleg Anatolyevich Chubenko filed a lawsuit against Seitenovubaurzhanukalashevich, a third party who did not declare independent claims of the Department of Justice of the Aktobe region to recognize the illegal use of illustrations, the obligation to stop using illustrations and recover compensation for copyright infringement, indicating that he is the owner of exclusive rights to the copyright object - illustrations from 3 books, packaging and logos of "Zerek". According to the plaintiff, he should have received remuneration in the amount of 10% of the total profit for his author's work. For 2 years, from October 2011 to October 2013, the plaintiff worked on the creation of a game development kit "Zerek", media advertising materials. However, as the plaintiff became aware, in 2012, the defendant did not include the plaintiff in the founders of ZEREKLTD LLP, as promised, while, despite this, the plaintiff continued to work on books and was engaged in technical support of a working website in the hope of paying royalties from the defendant. However, the defendant, without the consent of the copyright holder, used these illustrations and alienated the product of the Zerek game development kit, in the amount of 1,000 sets in a network of children's goods stores.

By the decision of the court of Aktobe, Aktobe region, dated 03.02.2014, the claim was denied on the following grounds. According to clause 1 of Article 9 of the Law of the Republic of Kazakhstan dated 06/10/1996 No. 6-1 "On Copyright and Related Rights", it is determined that copyright in a work of science, literature and art arises by virtue of the fact of its creation. Registration of the work, other special design of the work, or compliance with any formalities are not required for the creation and exercise of copyright.

To notify about their exclusive property rights, the author and (or) the copyright holder has the right to use the copyright protection mark, which is placed on each copy of the work and necessarily consists of three elements: the Latin letter "C" in a circle; the name(s) of the owner of the exclusive copyright and the year of the first publication of the work. The author, in order to certify personal non-property rights to an unpublished work, as well as the copyright holder, in order to confirm possession of exclusive property rights to the work at any time during the term of copyright protection or the validity of relevant agreements, has the right to register them in official registers. Registration is carried out by the authorized body in accordance with the procedure established by this Law.

It was reliably established in court that ZEREKLTD LLP was established on 04/12/2012, which is confirmed by the certificate of state registration. It follows from the case file that the defendant Seitenov B., upon announcement, accepted O. Chubenko as the plaintiff's designer, which the plaintiff does not refute, as well as the fact that the defendant paid monthly remuneration to the plaintiff in the amount of 50,000 tenge, and subsequently 70,000 tenge. The plaintiff's work was done at home. During the development and creation of the Zerek set, the defendant involved actors of the Alakai theater, a screenwriter, a linguist, and the Temirkazyk recording company, as confirmed by the explanations of witnesses Kadyrbaev A.M., Aitzhanov S.M., and Kaldena G.N.

The children's books "ZEREK" presented in court show the presence of the "ZEREK" logo and the Latin letter (C) copyright protection mark in the circle, as well as the name of the owner of the exclusive copyrights owned by "ZEREKLTD" LLP.

According to trademark certificate No. 42366, the ZEREK logo belongs to ZEREKLTD LLP, the founder and directors of which are Seitenov B. The presence of these marks in the book complies with the requirements of art.14 of the SAM "On trademarks ...", respectively, according to paragraph 4 of art.4 of the said Law, the exclusive right to use and dispose of only the trademark owner is granted, the goods and services indicated in the certificate, therefore, no one can use the trademark protected in the Republic of Kazakhstan without the consent of the owner.

According to clause 1 of Article 965 of the Civil Code, clauses 1, 2 of Article 31 of the Law "On Copyright and Related Rights", exclusive intellectual property rights, unless otherwise provided by this Code or other legislative acts, may be transferred by their rightholder in whole or in part under a contract to another person. They are also transferred by way of universal succession by inheritance and as a result of the reorganization of the legal entity-the rightholder.

The transfer of exclusive rights should not restrict the exercise of authorship and other non-proprietary rights. The terms of the agreement on the transfer or limitation of such rights are invalid.

According to clause 2, clause 3, Article 7 of the Law of the Republic of Kazakhstan "On Copyright and Related Rights", collections (encyclopedias, anthologies, databases) and other composite works that represent the result of creative work in terms of the selection and (or) arrangement of materials. Composite works are protected by copyright regardless of whether the works on which they are based or which they include are objects of copyright.

By virtue of paragraph 1 of Article 11 of the above-mentioned Law, the author of the collection and other composite works (the compiler) owns the copyright to the selection and (or) arrangement of materials representing the result of creative work (compilation) carried out by him.

The compiler enjoys copyright provided that he respects the rights of the authors of each of the works included in the composite work. The copyright of the compiler does not prevent other persons from independently selecting and/or arranging the same materials for the creation of composite works.

In accordance with clause 4 of Article 6 of the Law, copyright does not apply to ideas, concepts, principles, methods, systems, processes, discoveries, facts.

According to clauses 1, 2 of art.35 of the Law "On Copyright and Related Rights", the subjects of related rights are performers, producers of phonograms and broadcasting and cable broadcasting organizations. The producer of a phonogram, broadcasting and cable broadcasting organizations shall exercise the rights provided for in this chapter, within the limits of the rights obtained under an agreement with the performer, as well as the author of a work recorded on a phonogram or transmitted on the air or by cable.

So, Enzhanov N.M. he filed a lawsuit with the NGO "Kazakhstan Society for the Management of Performers' Rights" for providing information on the amounts of royalties received, for notifying users of the exclusion of objects of related rights, of which he is the copyright holder, by sending an official written notification to users, explaining the requirements that he is the copyright holder of phonograms in performed by Akylbekazhemen, the Muzart group, E.Shaimanov, M.Aralbai, B.Mustafayev, the Duet "Zhan", Zhanna Nurzhanova and Nurash (pseudonym), produced by him under the brand of the studio "ACD records" on the basis of license agreements and agreements on the assignment of property rights, and is also the copyright holder of copyright and related (performing) rights to works, performances and phonograms under these agreements.

On the basis of licensing agreements, he owns all the rights of the producer of phonograms, as well as the exclusive rights of performers in terms of reproducing them on media with subsequent sale, as well as by renting, with subsequent broadcast on cable TV, etc.

However, these rights were not provided to them for the collective management of the defendant NGO "COPI". On July 25, 2012, they sent an application to the defendant with a list of phonograms attached on CD discs, which are subject to exclusion from the list of permissions granted by this organization to all its users (reproduction, distribution, transmission via cable and on the air). In the application, he indicated that he should be paid the remuneration due, in accordance with the distribution he had made over the past three years, but the defendant, under various pretexts, delayed the consideration of his application on the merits, in particular, required the provision of contracts in a notarized form. 23.10.2012 he again appealed to the defendant with an application for payment of remuneration for 2009, in which he indicated that the supporting documents of the copyright holder were posted in the registers on the website of the NGO "Performers of Kazakh Songs", which manages his property rights.

He also asked the defendant to notify all its users about the exclusion of objects of related rights to musical works owned by the plaintiff, but the defendant did not comply. As a result, all users who have concluded contracts with the defendant continue to use the phonograms and transfer the amounts to the defendant, whereas, in his opinion, they should transfer them to his address, since he is the copyright holder of the phonograms. By the decision of the Bostandyk district Court of Almaty dated 17.06.2014 in satisfaction of the claims of Enzhanov N.M asked the defendant to notify all its users about the exclusion of objects of related rights to musical works owned by the plaintiff, but the defendant did not comply. As a result, all users who have concluded contracts with the defendant continue to use the phonograms and transfer the amounts to the defendant, whereas, in his opinion, they should transfer them to his address, since he is the copyright holder of the phonograms. By the decision of the Bostandyk district Court of Almaty dated 17.06.2014 in satisfaction of the claims of Enzhanov N.M. it was refused, which he did not agree with, having filed an appes refused, which he did not agree with, having filed an appeal.

In dismissing the claim of N.M. Enzhanov, the court of first instance pointed out that the plaintiff had not provided evidence confirming his right to receive information about the amounts of royalties received from users (specifically for each) for the requested musical works. The board recognized the above conclusions of the court as justified.

The producer of a phonogram, broadcasting and cable broadcasting organizations shall exercise the rights provided for in this chapter, within the limits of the rights obtained under an agreement with the performer, as well as the author of a work recorded on a phonogram or transmitted on the air or by cable.

By virtue of clause 5 of Article 35 of the above-mentioned Law, unless proven otherwise, the producer of a phonogram is a natural or legal person whose name or designation is indicated on the phonogram and (or) the case containing it.

According to clauses 1, 2 of art.31 of the above-mentioned Law, the author's property rights specified in art.16 of the Law may be assigned in whole or in part, and may also be transferred for use under an author's agreement on the transfer of exclusive rights or under an author's agreement on the transfer of non-exclusive rights.

Any assignment of property rights must be formalized by a written agreement signed by the author and the person to whom the property rights have been assigned.

The copyright agreement on the transfer of exclusive rights authorizes the use of a work in a certain way and within the limits established by the agreement only to the person to whom these rights are transferred, and gives such person the right to prohibit such use of the work to other persons.

The right to prohibit the use of a work by other persons may be exercised by the author of the work if the person to whom the exclusive rights have been transferred does not protect this right.

As can be seen from the case materials, the plaintiff Enzhanov N.M., in support of his claims, presented to the court contractAs can be seen from the case materials, the plaintiff Enzhanov N.M., in support of his claims, presented to the court contracts concluded between the director of the studio "ACDRecords" IP Enzhanov N.M. and performers Akylbekzhemeney (aka Ondasynov AA), the Muzart group, E.Shaimanov, M.Aralbai, B.Mustafayev, the duo "Jean", by Zhanna Nurzhanova and Nurash. At the same time, Enzhanov N.M. is not the copyright holder as an individual, since contracts with performers were concluded on behalf of the studio "ACDRecords", represented by director Enzhanov N.M., or IP Enzhanov N.M. Contracts concluded with Enzhanov N.M. as an individual, it is not available. From the analysis of these agreements, it follows that under the agreements concluded with the performers Akylbekzhemeney, the Muzart group, E.Shaimanov, M.Aralbai, B.Mustafayev, the Duo "Zhan", Zhanna Nurzhanova and Nurash, the deadlines expired, the performers Akylbekzhemeney (aka Ondasynov AA), the Muzart group, E.Shaimanov, the Duo "Jean" has entered into agreements with the defendant.

The arguments of the complaint that the property rights of an individual entrepreneur formed in the coThe arguments of the complaint that the property rights of an individual entrepreneur formed in the course of his activity are automatically the property rights of a citizen in the person of N.M. Enzhanov are untenable and cannot serve as a basis for revoking a court decision, since according to Article 1 of the Law "On Private Entrepreneurship" an individual entrepreneur is a citizen of the Republic of Kazakhstan or an oralman who carries out individual entrepreneurship without forming a legal entity; individual entrepreneurship - this is an initiative activity of individuals aimed at generating income, based on the ownership of individuals themselves and carried out on behalf of individuals, at their risk and under their property responsibility.

In this controversial case, the executors transferred their rights to IP Enzhanov N.M. for the latter to carry out entrepreneurial activities, but not as an individual to Enzhanov N.M. to protect their interests.

The law does not provide for the automatic transfer of IP rights to an individual without the consThe law does not provide for the automatic transfer of IP rights to an individual without the consent of the performers themselves. By the resolution of the Appellate judicial board dated 08.08.2014, the decision of the Ostandyk district Court of Almaty dated 17.06.2014. left unchanged.

The right to an invention, utility model, industrial design

According to art.991 of the Civil Code:

1. The rights to inventions are protected by an innovative patent or a patent, and for a utility model and an industrial design – by a patent.

2. An invention that is granted legal protection is recognized as a technical solution that is new, has an inventive level and is industrially applicable.

3. A utility model, which is granted legal protection, recognizes the constructive implementation of means of production and consumer goods, which is new and industrially applicable.

4. An industrial design, which is granted legal protection, is recognized as an artistic and design solution of a product that determines its appearance and is new and original.

5. The requirements for an invention, utility model, industrial design, which give rise to the right to obtain an innovation patent and a patent, and the procedure for their issuance by an authorized state body, are established by a legislative act.

6. The list of non-patentable technical solutions, constructive designs of means of production and consumer goods, and artistic and design solutions for products is determined by legislative acts.

In accordance with Article 15 of the Patent Law, the patent holder has the right to demand protection of his exclusive rights by the methods specified in paragraph 2 of Article 15 of the Law. As follows from Article 33 of the Law, disputes concerning the violation of the exclusive right to use a protected object of industrial property and other proprietary rights of the patent holder are subject to judicial review.

Any person who uses a protected object of industrial property in contradiction with the law is considered a violator of the exclusive right of the patent owner (violator of the security document). In this case, the unauthorized use of the protected method is recognized as a violation of the exclusive right of the patent holder (violation of the security document).

Example: Thus, Murat Nikolaevich Tleugaliev filed a lawsuit against Energia Plus LLP for the protection of the infringed exclusive intellectual property right, stating that M.N. Tleugaliev and E.A. Inoyatov are the patent holders of the industrial property "Method of chipping natural stone blocks".

This method is p method is protected by the patent for invention No. 26097. Information on the grant of an innovative patent for invention No. 26097 was published in Bulletin No. 9 dated 09/14/2012. The invention relates to methods for the extraction of block stone and can be used in stone mining and stone refining enterprises.

By the decision of the Oktyabrsky district Court of Karaganda dated 04/24/2014. the claim of Tleugaliev M.N. is satisfied. The court's conclusions are motivated by the following. Tleugaliev M.N. and Inoyatov E.A. are the patent holders of the industrial property "Method of chipping blocks of natural stone". This method is protected by the patent for invention No. 26097. According to Article 11 of the Patent Law of the Republic of Kazakhstan, the patent holder has the exclusive right to use the protected object of industrial property at his discretion.

The exclusive right to use protected objects of industrial property by the patent holder during the period of validity of the security document, starting from the date of publication in the official gazette of information on the issuance of this security document. Information on the grant of a patent for invention No. 26097 was published in Bulletin No. 9 dated 09/14/2012.

The formula of the invention protected by the patent is as follows: a method for chipping natural stone blocks, including drilling boreholes along the line of the planned block separation, placing wedges in the boreholes, chipping the block periodically by shock loading wedges, characterized in that in one period the wedges are shock loaded along the entire line of the planned block separation, and the time between each previous and The subsequent loading of the wedges is 0.1-2.0 hours.

The method is implemented as follows: the block being split off from the massif is outlined with long or short holes, depending on the strength, physical and mechanical properties and other features of the rock: a wedge-cheek system is placed at the mouth of each hole, then the wedges are struck simultaneously at all or at the interval necessary for the worker to move from hole to hole: after exposure of 0.1- 2.0 hours, the shock loading cycle of the wedges is repeated. As follows from article 15 of the Law, any person who uses a protected object of industrial property in contradiction with the law is considered a violator of the exclusive right of the patent owner (violator of the security document).

In this case, the unauthorized use of the protected method is recognized as a violation of the exclusive right of the patent holder (violation of the security document). Article 11 of the Law provides that a protected method is recognized as applicable if the method uses each feature of the invention listed in an independent claim, or an equivalent feature known as such in the field of technology at the date of commencement of use. The defendant, Energia Plus LLP, produces facing stone on the basis of a contract dated 12/28/2000. No. 006 at the Arshalinsky deposit of facing monzodiorites, which is located in the territory of the Abaysky district of the Karaganda region.

During the execution of the specified contract, the defendant uses a method of chipping natural stone blocks, protected by the above-mentioned innovative patent. The working project "Construction of a quarry for the extraction of facing stone at the Arshalinsky deposit" states that several technological schemes and methods are planned to be used at the quarry of the Arshalinsky deposit to separate monoliths of blocks from the array: borocline, thermoburocline, drilling and blasting, using explosive destructive means.

The passport for stone mining, approved by the defendant's first supervisor, confirms that stone mining is currently being carried out by the defendant using the borocline method.

From the description of the borocline method of stone extraction indicated in the working draft and passport, it follows that it uses each feature of the invention listed in the independent claim clause of the innovation patent, or an equivalent feature. The method used by the defendant is a method protected by the innovative patent for the invention of the plaintiff No. 26097.

At the hearing, the expert, Deputy Director for Scientific Work of GeoMark Scientific and Engineering Center LLP, Candidate of Technical Sciences Gabaidullin R.I. explained that the provision of art.11 (paragraph 2) of the Patent Law of the Republic of Kazakhstan provides that "the product is recognized as containing a protected invention or utility model, and the protected method is recognized as applicable if the product it contains, and the method uses each feature of the invention, utility model, listed in an independent claim, or an equivalent feature known as such in the field of technology at the date of use. "

The case materials objectively show that all the signs of the claimant's innovative patent were used by Energia–Plus LLP in the borocline method of stone mining and, thus, Energia-Plus LLP. The use of the "Borocline method of stone extraction" violates the patent rights of the patent holders Inoyatov E.A. and Tleugaliev N., an innovative patent for the invention "Method of chipping blocks of natural stone."

According to Article 6 of the Patent Law of the Republic of Kazakhstan, an invention is granted legal protection if it is new, has an inventive level and is industrially applicable. An invention is considered new if it is unknown from prior art information. An invention has an inventive level if it does not explicitly follow from the prior art information for a specialist. Prior art information includes any information that became publicly available in the world prior to the priority date of the invention. When establishing the novelty of an invention, information on the state of the art shall also include, subject to their earlier priority, applications filed in the Republic of Kazakhstan for inventions and utility models (other than those withdrawn) and inventions and utility models patented in the Republic of Kazakhstan.

Technical solutions in any field related to a product (device, substance, stamp of a microorganism, cell culture of plants or animals), a method (the process of performing actions on a material object with the help of material means), as well as the use of a known product or method for a new purpose or a new product for a specific purpose are protected as inventions.

Since the court found that the use of the "Borocline method of stone extraction" violates the patent rights of the patent holders Inoyatov E.A. and Tleugaliev N., an innovative patent for the invention "Method of chipping blocks of natural stone", the court satisfied the claims of the latter in full.

According to Article 7 of the Patent Law of the Republic of Kazakhstan, paragraph 3 of Article 991 of the Civil Code of the Republic of Kazakhstan, legal protection of a utility model is provided if it is not only industrially applicable, but also new. In accordance with Article 23 of the Law, a novelty mark is assigned when a utility model patent is granted at the risk and responsibility of the patent author.

Thus, Zerecon LLP filed a lawsuit against DigitalORB LLP to prohibit the use of the object under patent No. 594 for the utility model "Automated Vehicle Control System" without an issued license and to recover compensation in the amount of 50,000 calculated indicators (73,600,000 tenge). He motivates his claims by the fact that according to the patent with priority dated 26.06.2009. he is the owner of this industrial property, but the defendant uses the utility model without his consent.

By the decision of the specialized interdistrict Economic Court 38 of Almaty dated 24.09.2012, the claims were denied.

Court costs in the amount of KZT 3,104,600 were collected from the plaintiff in favor of the defendant. In the appeal, the plaintiff of Zerecon LLP requested that this decision be reversed and a new decision be made to satisfy the claim, pointing to the court's failure to comply with the requirements of Part 1 of Article 219 of the CPC RK; violation of the requirements of Articles 16, 16 of the CPC RK, since the court did not evaluate the following documents: the report of the RSE "NIIS" dated 15.07.2011, the conclusion Siyatov V.Ya., an industry specialist, to the conclusion of the RSE "NIIS" dated 31.01.2012, to the written consultation of Lupiychuk E.I., to the conclusion No. 5969/7291 of the patent examination dated 17.07.2011. It is also stated that the court should not have taken into account what was not patented before the priority date of the plaintiff's patent, referring to patent No. 734.

According to the plaintiff, the defendant had no right to fulfill contract No. 11 with CentrAlmatygortrans LLP without acquiring a license from the plaintiff. He considers the violation of his rights to be a proven fact because the defendant used all the essential features of his utility model when performing the work. By the decision of the Board of Appeal dated 26.02.2014, the above decision was left unchanged, while the courts established the following.

The defendant has been the author of the GuideJet software package since 2006, which the plaintiff has not denied. Since that period, it has been publicly known since it was sold to several customers. The complex consists of 6 computer programs, therefore, according to Articles 961 and paragraphs 1-12 of Articles 972 of the Civil Code of the Republic of Kazakhstan, it is an object of copyright. From clause 4.1 of the terms of reference to the agreement between the customer CentrAlmatygortrans and the contractor DigitalORB LLP, it follows that the defendant undertook to supply the GuideJet software package as an information and analytical system. The fact of the installation of this particular complex during the execution of the work by the plaintiff was not disputed and is confirmed by the testimony of the customer's representative Khamraev, acts of completed work.

According to Article 7 of the Patent Law of the Republic of Kazakhstan (hereinafter referred to as the Law), paragraph 3 of Article 991 of the Civil Code of the Republic of Kazakhstan, legal protection of a utility model is provided if it is not only industrially applicable, but also new. In accordance with Article 23 of the Law, a novelty mark is assigned when a utility model patent is granted at the risk and responsibility of the patent author. The plaintiff was granted patent No. 594 for the utility model "Automated vehicle Control System". Based on paragraph 4 of Article 5 of the Law, the scope of legal protection is determined by its formula.

By the decision of the specialized interdistrict Economic Court 38 of Almaty dated 24.09.2012, the claims were denied.

In paragraph 43 of the Instruction of the Ministry of Justice of the Republic of Kazakhstan dated 04/23/2010 "on the preparation, registration and consideration of an application for a patent for a utility model," it is stated that the claim clause is a generic concept from which the presentation of the formula begins, and consists of a restrictive part that includes essential features of the utility model that coincide with the 39 features of the closest analogue, and a distinctive part that includes essential features that distinguish the essential the model is from the closest analog.

After the restrictive part, the phrase "different in that ..." is introduced. Thus, the novelty of the essential features in the patent formula No. 594 is determined by the plaintiff in those of them that are indicated after the sentences "differing in that....". However, all the matching features of the plaintiff's information and analytical system, such as a server containing a database connected via data buses and control with the operating system, a data sorting module, an administrator's ARM, and the ability of the server and ARM to access the Internet, were used by the defendant in his GuideJet software package (which the plaintiff did not deny), but back in 2006.

The case materials reliably established that the defendant performed the work in the interests of the customer in accordance with his own patent. That is, the work performed is equivalent to patent No. 734. In such circumstances, the board concluded that the essential features related to the information and analytical system of the plaintiff cannot be legally protected due to the lack of novelty in them.

Regarding the vehicle terminal, the panel concluded that the materials available in the case established the absence of identity of the internal device of the TR-600 product with the essential features of such a terminal described in the claimant's utility model formula. The technical description of the TR-600 product does not include a coprocessor, a memory block for it, as well as a peripheral equipment block that includes acceleration and weight sensors. These components were not found during the inspection of the product by specialist Shabelnikov. These components were not found during the examination No. 1796 dated 05.04.2013, appointed by the board of the Almaty City Court.

As can be seen from the descriptive part of the report, neither specialist Artyukhin nor specialist Skvortsov found these sensors. The latter did not detect the coprocessor either, only indicating that "with a higher degree of probability" one of the components can be considered to perform the functions of a coprocessor, which is clearly insufficient for a categorical conclusion in this part.

In order to comply with the instructions of the supervisory board dated 06/20/2012, the court of first instance questioned patent attorney Troitskaya N.I., who confirmed the defendant's arguments and explained that she had compiled a comparative analysis of both utility models. At the same time, they turned out to be not identical to each other on the above grounds. For all other essential features of terminals of both models, there is no dispute between the parties. Consequently, clarifying the question of how exactly the defendant could have violated the plaintiff's rights is related to clarifying the question of the presence or absence of these four independent components in the TR-600 terminal, or equivalent (equivalent) to them.

The Board considered that in this case, the manufacturer's technical description should serve as acceptable and reliable evidence of the absence or presence of any components. In addition, if the internal structure of the TR-600 product were identical to the essential features of the plaintiff's patent, then in this case they would not be subject to legal protection due to the lack of a sign of novelty, since the plaintiff did not prove its priority in this part over the product of the Taiwanese company GlobalSat.

Due to the requirements of clause 6 of Article 12 of the Patent Law of the Republic of Kazakhstan, the defendant's actions cannot be considered a violation of the plaintiff's rights, since he used a commercially available means - ready-made devices of the "TR600" type manufactured by the state of Taiwan, GlobalSat company, which is only one link of the legally protected intellectual property object.

According to art.15 of the Civil Procedure Code of the Republic of Kazakhstan, the parties choose their position, ways and means of defending it independently during civil proceedings.

The court is completely exempt from collecting evidence. When making the decision by the court of the 1st instance, the requirements of Articles 219-221 of the CPC of the Republic of Kazakhstan and the Regulatory Decree of the Supreme Court of the Republic of Kazakhstan "On Judicial Decision" dated 07/11/2003 were fully complied with.

Trademark

In accordance with art.1024 of the Civil Code:

1. Legal protection of a trademark is granted on the basis of its registration or without registration on the basis of international treaties to which the Republic of Kazakhstan is a party. A trademark (service mark) is a verbal, pictorial, three-dimensional or other designation registered or protected without registration by virtue of an international agreement, which serves to distinguish goods or services of one person from similar goods and services of other persons. If the trademark (service mark) of one legal entity or an individual engaged in entrepreneurial activity turns out to be identical or confusingly similar to the brand name of another legal entity and, as a result of such identity or similarity, may mislead consumers, the provisions provided for in paragraph 4 of Article 1020 of this Code shall apply.

2. Designations whose registration as a trademark is not permitted, the procedure for registration of trademarks, termination of their validity and recognition of registration as invalid, as well as cases in which legal protection of unregistered trademarks may be permitted, are determined by legislative acts on trademarks.

3. The right to a trademark is certified by a certificate.

According to paragraph 2 of Article 43 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellations of Origin of Goods" (hereinafter referred to as the ZoTZ), the illegal use of a trademark entails civil, administrative and criminal liability. Civil liability for the illegal use of a trademark is primarily regulated by art.1032 of the Civil Code of the Republic of Kazakhstan and Chapter 12 of the ZoTZ.

As a result of the introduction of counterfeit (falsified) products (services) into civil circulation, the rights and interests of trademark holders (service marks) are violated, the state and consumers are harmed, and the conditions for filing an application and registering trademarks are determined in each country of the Union by its national legislation. A mark duly registered in any country of the Union is considered to be independent of marks registered in other countries of the Union, including the country of origin.

According to art.6-quinquies (D) of the Paris Convention, no one can avail himself of the provisions of this article if the mark for which protection is sought is not registered in the country of origin.

Thus, the Eurasian Council of Certified Accountants and Auditors filed a lawsuit with the Intellectual Property Rights Committee of the Ministry of Justice of the Republic of Kazakhstan to declare unlawful and revoke the decisions of the Appeal Board dated December 24, 2013 on the cancellation of registration for the Eurasian Council of Certified Accountants and Auditors of the combined and verbal CIPA trademarks according to certificates No. 18756. and 18757 dated 08/9/2005 in relation to the 16th, 35th, 36th and 41st classes of the MCTU with priority dated 04/01/2005.

By the decision of the specialized interdistrict Economic Court of Astana dated July 28, 2014. The application has been partially satisfied.

The decision of the Board of Appeal of 12/24/2013 on the cancellation of the registration of the combined and verbal trademarks "CIPA" for the plaintiff, with priority from 04/01/2005, was recognized as unlawful and canceled, etc.

The case materials established that on 05.12-2001, an Association of Legal Entities was established in the form of the International Council of Certified Public Accountants and Auditors (ISBA) association, which included a number of legal entities from Kazakhstan, Russia, Ukraine, Kyrgyzstan, Uzbekistan and Tajikistan engaged in accounting and auditing activities.

The main purpose of the Association's establishment and activities under the charter (paragraph 2.1) is to promote the development and enhancement of the status of the accounting and auditing profession, the introduction and use of international professional standards and professional ethics developed by the International Federation of Accountants (IFB) and the Committee on International Accounting Standards (IASB). 04/01/2005 The applicant submitted applications No. 30672 and No. 30673 to the National Institute of Intellectual Property for registration with the CIPA Association of Combined and Verbal Trademarks in respect of classes 16, 35, 36 and 41 of the International Classification of Goods and 44 Services (hereinafter ICTS), providing a list of services (type of activity) related to accounting and auditing activities. On 08/09/2005, the above-mentioned CIPA trademarks were registered with the applicant. 22.07.2013 CertifiedInternationalProfessionalAccountantsExaminationNetwork, Inc. (US) has filed objections with the Board of Appeal against the registration of the said CIPA combined and verbal trademarks for the applicant. 24.12.2013

The Board of Appeal issued a decision to cancel the registration of these collective trademarks. According to art.6-septies of the Paris Convention, the owner of the mark has the right, subject to the conditions provided for in paragraph, to prevent the use of the mark by an agent or representative, unless he has consented to such use."

Based on the above, the Appeals Board concluded that the objections filed against the trademarks protected in the plaintiff's name had been satisfied.

Article 6 of the Paris Convention states that the conditions for filing an application and registering trademarks are determined in each country of the Union by its national legislation.

The Court concludes that when registering trademarks for the applicant, the legislation of the Republic of Kazakhstan in force at that time was not violated.

The contested decisions of the authorized body indicate that a third party did not give permission to the Association to register the CIPA trademark in Kazakhstan in the name of the Association, while the Appeals Board referred to Article 6-septies of the Paris Convention for the Protection of Industrial Property of 03/20/1883, which states that the trademark owner has the right, subject to the conditions, to prevent the use of the mark by an agent or representative, unless he has consented to such use."

At the same time, it was established at the hearing that a third party could not issue a permit to the applicant, who was established in March 2002, since he himself was registered much later than the Association, namely in June 2002. Also, it was impossible to grant permission from a third party, since at the time of registration of the disputed trademarks in Kazakhstan (08/09/2005), the third party was not the copyright holder of its own trademarks abroad (in the USA). Further, in October 2005, a third party issued an international registration for the CIPA combined trademark.

The Association became the copyright holder of disputed trademarks in Kazakhstan much earlier – in August 2005, i.e. this indicates that at the time of trademark registration in Kazakhstan, there were no other registrations of the same name in the United States. Thus, the court found that the right of priority for both national and international trademark registration, 45 The Association is the first Company compared to a third party, CertifiedInternationalProfessionalAccountantsExaminationNetwork, Inc.

In the dispute that has arisen, a third party points to the trademark "CIPA" registered by the US patent authority in the United States of America, however, the protection and protection of the rights of the American copyright holder is carried out only in the United States in accordance with national legislation. It should also be noted that the applicant does not violate the rights of a third party in the United States, since he does not use his trademarks in the United States and does not introduce them into the civil circulation of this state.

According to art.6-quinquies (D) of the Paris Convention, no one may avail himself of the provisions of this article if the mark for which protection is sought is not registered in the country of origin.

Part 2 of Article 2 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellations of Origin" stipulates that if an international treaty ratified by the Republic of Kazakhstan establishes rules other than those contained in this Law, the rules of the international treaty shall apply. In accordance with paragraph 16 of Annex 26 of the ratified Treaty on the Eurasian Economic Union, which has been in force since 01.01.2015, the regional principle of exhaustion of exclusive trademark rights is applied in the territories of the member States.

In accordance with paragraph 7 of Article 19 of the Law of the Republic of Kazakhstan "On Trademarks", the use of this trademark by other persons in relation to goods that were put into civil circulation on the territory of the Republic of Kazakhstan directly by the copyright holder or with his consent is not a violation of the exclusive right to a trademark.

In accordance with clause 1, clause 1, Article 7 of the Law "On Trademarks, Service Marks and Names of Places of Origin of Goods", designations that are identical or confusingly similar to trademarks registered in the Republic of Kazakhstan with an earlier priority in the name of another person in relation to similar ones are not subject to registration as trademarks. goods and services.

According to Article 968 of the Civil Code of the Republic of Kazakhstan, the exclusive right to the result of intellectual creative activity or a means of individualization exists regardless of the ownership of the material object in which such a result or means of individualization is expressed.

The relations arising from the import of goods lawfully produced and sold in compliance with the rights of the trademark owner on the territory of another state and imported into the Republic of Kazakhstan by an importer who did not conclude a license agreement with the trademark owner fall under the concept of "parallel import" and are not prohibited by the legislation of the Republic of Kazakhstan.

Jurisdiction and jurisdiction over Intellectual property Disputes

Disputes in the field of intellectual property can be considered by courts of general jurisdiction, specialized economic inter-district courts and arbitration courts. In the field of rights to trademarks, service marks and appellations of origin, the courts, in accordance with their jurisdiction, mainly consider disputes.:

- violation of the exclusive right to a trademark;

- early termination of the legal protection of a collective mark as a result of its use on goods that do not have uniform qualitative or other uniform characteristics;

- on the conclusion and execution of a license agreement and an agreement on the transfer of the exclusive right to a trademark (agreement on the assignment of a trademark);

- illegal use of the appellation of origin, etc. (Article 45 of the Trademark Law).

In the field of patent law, courts consider disputes:

- about the authorship of an invention, utility model, industrial design;

- on the establishment of the patent holder;

- violation of the exclusive right to an invention, utility model, industrial design;

- on the conclusion and execution of agreements on the transfer of an exclusive right (assignment of a patent) and license agreements for the use of an invention, utility model, industrial design;

- on the right of pre-use;

- on the right of post-use;

- on the amount, term and procedure for payment of remuneration to the author of an invention, utility model, industrial design in accordance with the Patent Law;

- on the amount, term and procedure for payment of compensation provided for by the Patent Law;

- other disputes related to the protection of rights certified by a patent (Article 31 of the Patent Law).

According to Part 1 of Article 30 of the Civil Procedure Code of the Republic of Kazakhstan, disputes between legal entities and citizens engaged in entrepreneurial activity without forming a legal entity and having the status of an individual entrepreneur are considered in specialized interdistrict economic courts.

Thus, the economic court may consider cases in the field of copyright arising from copyright agreements, as well as non-contractual obligations, but on condition that the copyright holder is a legal entity or an entrepreneur without the formation of a legal entity.

In accordance with Part 2 of Article 24 of the CPC, among the cases that are subordinate to specialized economic courts and in which citizens who are not individual entrepreneurs can participate, corporate disputes that arise between business companies and partnerships and their participants can be identified.

For example, if a dispute arises between an individual and a joint-stock company regarding the contribution to the authorized capital of exclusive rights to objects of copyright or related rights, then this dispute should be considered by a specialized economic court. In the event that a corporate dispute is connected with a claim arising from an employment relationship, for example, regarding the rights to an official work, the court separates the claims, if possible.

The Economic court hears a corporate dispute, while the court of general jurisdiction hears a labor dispute. In the event that separation of claims is not possible, the case is subject to review and resolution in a court of general jurisdiction.

All disputes on recognition of authorship can be considered only by courts of general jurisdiction, since under Kazakh law, authors can only be individuals. Disputes in which at least one of the parties is an individual and the claim is not related to his business activities are considered in courts of general jurisdiction. The jurisdiction of cases before courts of general jurisdiction is determined by the method of excluding cases under the jurisdiction of specialized economic courts.

31 of the CPC, the jurisdiction of copyright disputes is determined at the defendant's place of residence, and if the defendant is a legal entity, then at the location of the body or property of the legal entity.

Jurisdiction may be determined by the parties in the contract.

The following example is typical in this regard. NGO "Kazakhstan Copyright Society" filed a lawsuit against JV Coca-Cola Almaty Bottlers LLP to recover compensation for copyright infringement.

By the definition of 10.11.2014 The claim of the NGO "Kazakhstan Copyright Society" was returned due to the lack of jurisdiction of the district court No. 2 of Almaly district of Almaty and the need to apply to the specialized interdistrict economic court of Almaty.

At the same time, the definition is motivated by the fact that, according to art.30 of the CPC of the Republic of Kazakhstan, specialized inter-district economic courts consider civil cases on property and non-property disputes, the parties to which are citizens engaged in business activities without forming a legal entity, legal entities, with the exception of cases provided for in subparagraphs 3.4 of part 1, Parts 2 and 3 of Articles 28, 29 of the CPC RK.

In this case, it can be seen from the filed claim that the dispute arose between two legal entities, therefore, this claim is not under the jurisdiction of the district court No. 2 of Almaly district of Almaty.

Thus, the plaintiff of the NGO "Kazakhstan Author's Society" filed a lawsuit in the interests of an individual, G.M. Moldanazarov, while he asks the court to collect and charge the collected amount of compensation to the NGO "Kazakhstan Author's Society" for subsequent payment to the author, G.M. Moldanazarov.

56 of the Civil Procedure Code of the Republic of Kazakhstan, in cases provided for by law, state and local government bodies, organizations or individual citizens may file a lawsuit in court to protect the rights, freedoms and legally protected interests of others at their request, as well as public or state interests.

And in accordance with art.48 of the CPC, the plaintiff and the defendant are the parties in the civil process. Plaintiffs are citizens and legal entities who have filed a claim in their own interests or in whose interests the claim is filed.

The parties (plaintiff and defendant) in civil proceedings are persons whose substantive dispute is considered and resolved by the court. From the operative part of the filed claim, it can be seen that the NGO "Kazakhstan Copyright Society" asks to recover compensation from the defendant JV "Coca-Cola Almaty Bottlers" LLP for copyright infringement in favor of the author Moldanazarov G.M. and to charge the collected amount of compensation to the NGO "Kazakhstan Copyright Society" for subsequent payment to the author Moldanazarov G.M. At the same time, the basis for filing and suing the court is the agreement concluded between Moldanazarov GM and NGO KazAK dated 31.10.2011, under the terms of which the latter fully transfers all its rights to a legal entity to protect its copyrights.

The plaintiff specifically indicates the need to recover compensation for copyright infringement in favor of a legal entity for subsequent payment to the author Moldanazarov G.M., taking into account the amount of deductions. 68 According to the Charter of the NGO "Kazakhstan Copyright Society", the Company's activity is to assist authors and copyright holders in the implementation and protection of their property rights on a contractual basis, including on the basis of powers provided by foreign collective management organizations, assistance in the transfer of rights to use copyright objects, registration and deposit of such objects.

The above indicates that the filed claim is beyond the jurisdiction of a court of general jurisdiction, and in accordance with subclause 2, clause 1, Article 154 of the CPC, the judge returns the application if the case is not within the jurisdiction of this court. The Appeals board agreed with these conclusions of the court and left the ruling unchanged.

Payment of state duties related to intellectual property ( on trademarks)

According to clauses 2, 3, Part 1, Article 541 of the Tax Code, plaintiffs in disputes over authorship are exempt from paying state duties; authors are exempt from claims arising from copyright and related rights, from the right to an invention, utility model, industrial design, as well as from other intellectual property rights.

It follows from this provision that other copyright holders, except for the authors themselves – individuals whose creative work created the work, are not exempt from paying state duty, which primarily concerns legal entities.

When considering cases in specialized inter-district economic courts, the plaintiff pays a state fee in the amount provided for by the Tax Code, including for claims for recovery of funds, regardless of whether payments provided for in the copyright agreement, damages caused, income received by the violator or compensation are collected.

Despite the fact that the amount of compensation is determined by the court, the initial price of the claim for recovery of funds in accordance with Articles 102, 103 of the CPC is determined by the plaintiff, from which the state fee is paid.

Subsequently, the amount of compensation may be increased by the plaintiff or the court.

Laws and regulations

- Section 5 of the Civil Code of the Republic of Kazakhstan "Intellectual Property Law", which includes chapters 49 to 56.

- The Law of the Republic of Kazakhstan "On Copyright and Related Rights" dated 06/10/1996, with subsequent amendments.

- The Customs Code of the Republic of Kazakhstan, articles 411-414.

- The Code of Civil Procedure, chapters 3 and 27.

- The Code of the Republic of Kazakhstan on Administrative Offences, art.145.

- The Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellation of Origin" dated July 26, 1999.

- The World Copyright Convention of 09/06/1952, signed in Geneva. The USSR joined in 1973, and Kazakhstan is a member of the Convention by way of succession.

- The Convention establishing the World Intellectual Property Organization (WIPO) dated 07/14/1967, as amended on 10/02/1979, signed in Stockholm, Kazakhstan has been a member of WIPO since 1992.

- The Berne Convention for the Protection of Literary and Artistic Works, signed in 1996, the Law of the Republic of Kazakhstan on Accession to this Convention dated November 1998.

- Convention on the Protection of the Interests of Producers of Phonograms from the Illegal Reproduction of Their Phonograms dated 29.10.1971, signed in Geneva, Kazakhstan joined on the basis of the Law of the Republic of Kazakhstan dated 07.06.2000.

- The Madrid Agreement on the International Registration of Marks (Stockholm Act of 1967, with amendments of 1979).

- Paris Convention for the Protection of Industrial Property dated 03/20/1883, Kazakhstan joined on 02/16/1993.

- "Rules for filing and considering objections in the Board of Appeal."

- "Regulations on the Board of Appeal", approved by the Order of the Minister of Justice of the Republic of Kazakhstan dated 04/23/2010 No. 81.

- Paris Convention for the Protection of Industrial Property of 03/20/1883 (as amended on 02.10.1979).

- Instructions to the Madrid Agreement on the International Registration of Marks dated 04/01/1992).

- Madrid Agreement on Sanctions for False and Incorrect Designations of Origin of Products dated 04/14/1891

- Nice Agreement on the International Classification of Goods and Services for Registration of Marks dated 06/15/1957

- Agreement on Trademark Laws dated 27.10.1994

- Agreement on Measures to Prevent and Suppress the Use of False Trademarks and Geographical Indications dated 06/04/1999

- The Minsk Agreement on Measures to Prevent and Suppress the Use of False Trademarks and Geographical Indications dated 06/04/1999.

- The Law of the Republic of Kazakhstan "On forensic expertise in the Republic of Kazakhstan".

- Regulatory Resolution of the Supreme Court of the Republic of Kazakhstan dated December 25, 2007 No. 11 "On the application by courts of certain norms of legislation on the protection of copyright and related rights."

Attention!

The Law and Law Law Firm draws your attention to the fact that this document is basic and does not always meet the requirements of a specific situation. Our lawyers are ready to assist you in drafting any legal document that suits your situation.

For more information, please contact a Lawyer/Lawyer by phone; +7 (708) 971-78-58; +7 (700) 978 5755, +7 (700) 978 5085.

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