On the Ratification of the Agreement on Measures to Prevent and Suppress the Use of False Trademarks and Geographical Indications

Home / RLA / On the Ratification of the Agreement on Measures to Prevent and Suppress the Use of False Trademarks and Geographical Indications

Law of the Republic of Kazakhstan dated May 4, 2001 No. 189

To ratify the Agreement on Measures to Prevent and Suppress the Use of False Trademarks and Geographical Indications, signed in Minsk on June 4, 1999.

President of the Republic of Kazakhstan

Officially certified text

Agreement * on measures to prevent and suppress the use of false trademarks and geographical indications

*(Entered into force on June 5, 2001 - Bulletin of International Treaties of the Republic of Kazakhstan, 2003, No. 5, art. 45)

Signed by: Republic of Azerbaijan, Republic of Armenia, Republic of Belarus, Georgia, Republic of Kazakhstan, Kyrgyz Republic, Republic of Moldova, Russian Federation, Republic of Tajikistan, Republic of Uzbekistan, Ukraine

notifications have been submitted:

Kyrgyz Republic - deposited on December 27, 1999;

Georgia - deposited on February 28, 2000;

Republic of Tajikistan - deposited on February 28, 2000;

Republic of Azerbaijan - deposited on July 4, 2000;

Republic of Kazakhstan - deposited on June 5, 2001;

Russian Federation - deposited on November 5, 2001;

Republic of Armenia - deposited on December 20, 2001;

Republic of Moldova - deposited on January 3, 2002;

The Republic of Belarus - deposited on June 29, 2004.

The notifications of ratification have been submitted:

Ukraine - deposited on December 28, 2000.

The Agreement entered into force for the States:

Georgia - June 4, 1999 (from the date of signing);

Republic of Uzbekistan - June 4, 1999;*

Kyrgyz Republic - December 27, 1999;

Republic of Tajikistan - February 28, 2000;

Republic of Azerbaijan - July 4, 2000;

Ukraine - December 28, 2000;

Republic of Kazakhstan - June 5, 2001;

Russian Federation - November 5, 2001;

Republic of Armenia - December 20, 2001;

Republic of Moldova - January 3, 2002;

The Republic of Belarus - June 29, 2004.

Note:

The depositary has not received a notification from the Republic of Uzbekistan about the need to carry out internal procedures or about the absence of the need to carry them out.

* No notification has been received by the depositary within three months of the signing.

The States Parties to this Agreement, represented by their Governments, hereinafter referred to as - The Parties, based on the Agreement on Measures for the Protection of Industrial Property and the Establishment of the Interstate Council for the Protection of Industrial Property dated March 12, 1993, the Agreement on the Implementation of a Coordinated Antimonopoly Policy dated December 23, 1993, as well as the Agreement on Cooperation in the Suppression of Intellectual Property Offenses dated March 6, 1998, Recognizing the importance of joint measures to protect the rights of consumers and producers from the sale of goods using false trademarks and geographical indications, guided by generally recognized norms of international law, attaching importance to the expansion of trade and economic ties between the Parties, in order to coordinate joint actions to prevent and suppress the use of false trademarks and geographical indications, and the facts of the use of unfair competition methods have agreed on the following:

Article 1

For the purposes of this Agreement, the following terms mean: a commodity is an object that satisfies a social need and is produced for exchange, that is, it has a value that is established in the process of its exchange for other goods; a trademark is a designation for distinguishing the goods of some individuals and legal entities from similar goods of other legal entities and individuals.; geographical indications are designations that identify the origin of goods from the territories of the Parties or their regions, or localities where the quality, reputation or other characteristics of the goods are largely correlated with its geographical origin; false trademark is a trademark used by a third party in violation of the rights of the trademark owner, or a mark containing false indications of origin the product, as well as data or an element that may mislead consumers; Legal remedies are a set of measures to prevent and suppress the use of false trademarks and geographical indications, permitted for use in accordance with the current legal regime of the Parties.; an interested party is any natural and/or legal person involved in the production, manufacture, sale or consumption of goods located in an area falsely indicated as the place of origin of the goods, or in the area where this area is located, or in a falsely indicated country or in a country where a false geographical indication of the origin of the goods is used. or a false trademark.

Article 2

The Parties shall cooperate in the following matters: identifying and suppressing the use of false trademarks and geographical indications; preventing the entry of goods with false trademarks and geographical indications through their customs borders into the territories of other Parties.

Article 3

The Parties shall coordinate measures to prevent and suppress the use of false trademarks and geographical indications on the basis of joint actions and voluntarily assumed obligations.

Article 4

With regard to geographical indications, the Parties provide legal remedies to interested parties in order to prevent the use of: a) any means in the designation of goods or their presentation that indicate (or cause association) to a place of origin other than the true one and thus mislead consumers about the geographical origin of the goods; b) any actions that may be considered unfair competition within the limits of article 10 bis of the Paris Convention for the Protection of Industrial Property.

Article 5

The Parties, by virtue of their obligations in accordance with their national legislation or at the reasoned request of the interested party, refuse to register a trademark or transfer rights to a trademark, or invalidate the registration of a trademark or transfer of rights to a trademark consisting of or containing a geographical indication, if the use of a geographical indication in a trademark for goods, not originating from the specified territory of any Party, it misleads consumers about the true place of origin of such goods.

Article 6

Legal remedies in accordance with articles 4 and 5 of this Agreement also apply to geographical indications, which, although literally true of the territory, region or locality from which the goods originate, give consumers an erroneous idea of the territorial origin of the goods.

Article 7

The Parties shall provide legal remedies in order to prevent the use of geographical indications identifying the territorial origin of wines or spirits for these types of beverages that do not actually originate from the place indicated in the geographical indication, including in cases where such geographical indications are used in translation or accompanied by an indication of the true place of origin, or such explanations like "kind", "type", "style", "imitation" or similar.

Article 8

The registration of a trademark for wines or spirits that consists of or contains a geographical indication must be refused or the registration must be declared invalid if this is provided for by the national legislation of the Party, or at the request of the interested party in respect of those wines or spirits that do not have this geographical origin.

Article 9

In the case of the use of identical geographical indications for wines or spirits, legal remedies are provided to each geographical indication, subject to the provisions of Article 6 of this Agreement. In order to ensure equal conditions for producers and to prevent consumers from being misled, each Party determines the symbols by which the same geographical indications will differ from each other.

Article 10

In order to facilitate the legal means of protecting geographical indications, the Parties are negotiating the establishment of multilateral systems for registration of geographical indications and notifications of their protection in the territories of the Parties.

Article 11

The Parties shall ensure that their national legislation includes provisions on procedures for the observance of trademark and geographical indication rights, providing for effective measures against any violation of the rights stipulated in this Agreement, including urgent measures to prevent such violations and means that constitute a legal sanction in case of further violations. These procedures should ensure that legitimate trade is protected from abuse and that barriers are not created.

Article 12

Procedures to ensure that trademark and geographical indication rights are respected should be equal and fair for all.

Article 13

The Parties shall provide the owners of rights to a trademark or geographical indication with the opportunity to apply to judicial authorities to ensure the protection of such rights provided for in this Agreement at the place of their violation and in accordance with the national legislation of the Parties.

Article 14

The judicial authorities have the right to demand from any natural and/or legal person of the Parties to compensate in full the losses caused to the interested party and to pay her the entire amount of profit received from the trade in goods with false trademarks and geographical indications.

Article 15

The judicial authorities have the right, at the request of the interested party, to demand from any natural and/or legal person of the Party compensation for the costs of conducting the proceedings, which may include attorney's fees, as well as to take all necessary measures provided for by the national legislation of that Party.

Article 16

In order to create an effective remedy against infringement of the rights of the owner of a trademark or geographical indication, the judicial authorities of the Parties have the right, at the request of the interested party, to demand that the goods for which the violation of rights has been established be eliminated from trade without any compensation, without causing any harm to the owner of the rights to the trademark or geographical indication, or, if this is the case, does not contradict the existing national legislation of the Parties, destroyed. When considering such cases, the Parties ensure the proportionality of two factors: the fact of the offense and legal remedies, on the one hand, and the interests of third parties, on the other hand. In relation to goods with false trademarks, the simple removal of an illegally attached trademark is considered insufficient to allow the admission of such goods into trade, except in exceptional cases, which are additionally agreed upon by the Parties.

Article 17

Judicial authorities have the right to require an interested party, upon whose application measures have been taken, in connection with its unfair use of the procedure for ensuring respect for the rights of the owner to a trademark or geographical indication, to provide another interested party, unlawfully obligated or restricted, with sufficient compensation for damage suffered as a result of such unfair use. The judicial authorities also have the right to require the applicant to reimburse the defendant's expenses, which may include an appropriate attorney's fee.

Article 18

The judicial authorities of the Parties have the right, at the request of the interested party, to decide on urgent effective temporary measures: a) to prevent the occurrence of a violation of the owner's right to a trademark or geographical indication and, in particular, the entry into trade of goods with false trademarks and geographical indications, including imported goods immediately after customs control. Such actions are not applied to goods purchased or ordered by any consumer before he learned or had the opportunity to learn that the trade in such goods occurred illegitimately; b) to preserve relevant evidence of violations.

Article 19

Judicial authorities have the right, at the request of an interested party, to take interim measures without hearing the opposite party, in particular, in cases where there is a possibility that any delay will cause irreparable harm to the owner of the rights to a trademark or geographical indication, or if there is a demonstrable risk that evidence will be destroyed.

Article 20

The judicial authorities have the authority to require the plaintiff to provide evidence that the plaintiff is the owner of the rights to a trademark or geographical indication and his right is being violated or such violation is inevitable, and to decide that the plaintiff provides a guarantee sufficient to protect the rights of the defendant and prevent abuse.

Article 21

In cases of taking interim measures provided for in article 19 of this Agreement, the defendant must be informed of this without delay. At the request of the defendant, a review of the decision to take interim measures, including the decision on the right to be heard, should be carried out. In case of cancellation of interim measures or their termination due to the plaintiff's fault or later finding that there was no violation or threat of violation of intellectual property rights, the judicial authorities have the right, at the request of the defendant, to require the plaintiff to pay him adequate compensation for the damage caused by these measures, in accordance with the national legislation of the Party where the proceedings are taking place.

Article 22

The Parties shall carry out procedures allowing the owner of the rights to a trademark or geographical indication, who has good reason to suspect the possibility of importing goods with false trademarks and geographical indications, to apply in writing to the competent authorities, administrative or judicial authorities for suspension by the customs authorities of the release into free circulation of such goods. The Parties may also provide for appropriate procedures to suspend the release by Customs authorities of goods with false trademarks and geographical indications intended for export from their territories.

Article 23

The Parties will take measures to establish criminal and administrative liability in national legislation in cases of intentional use of false trademarks and geographical indications for commercial purposes. Penalties should be commensurate with other types of sanctions for crimes of similar severity in order to prevent violations of rights. Where appropriate, penalties should include the seizure, seizure and destruction of goods with false trademarks and geographical indications, materials and tools of production that were used in the commission of offenses.

Article 24

In order to ensure the implementation of this Agreement, the Parties shall: exchange operational information on the facts of production and sale identified by their competent authorities, as well as alleged attempts to export or import goods using false trademarks and geographical indications; jointly plan and implement measures to prevent, identify, suppress and prevent the facts specified in the previous part of this article, and other offenses related to the protection of trademarks and the rights to use geographical indications; systematically exchange information on legal acts regulating issues covered by this Agreement, as well as relevant methodological and special literature; systematically exchange information on trademarks and geographical indications of the origin of goods introduced in the territories of the Parties; promote joint scientific research in the field of industrial property protection, hold seminars and conferences, cooperate in the field of training and advanced training of personnel.

Article 25

The Parties entrust the coordination of the Parties' actions for the implementation of this Agreement to the Interstate Council for the Protection of Industrial Property.

Article 26

This Agreement does not affect the provisions of other international treaties to which the Parties are Parties.

Article 27

Amendments and additions may be made to this Agreement with the general consent of the Parties, which are formalized in separate protocols and enter into force in accordance with the procedure provided for in this Agreement. Disputes related to the application or interpretation of this Agreement are resolved through consultations and negotiations between the Parties. If it is impossible to resolve disputes through negotiations, the Parties apply to the competent international courts by written agreement of the parties concerned.

Article 28

This Agreement shall enter into force from the date of its signature, and for the Parties whose legislation requires the implementation of internal procedures necessary for its entry into force - from the date of delivery of the relevant notification to the depositary. The Parties shall notify the depositary of the need to carry out such procedures within three months from the date of signing this Agreement.

Article 29

This Agreement is valid for five years from the date of its entry into force. After this period, the Agreement is automatically extended each time for a period of five years, unless the Parties decide otherwise.

Article 30

Each Party may withdraw from this Agreement or suspend its participation in it by sending a written notification to the depositary no later than six months prior to withdrawal.

Article 31

This Agreement is open for accession by other States that share its goals and principles by submitting documents on such accession to the depositary.

Done in Minsk on June 4, 1999, in one original copy in the Russian language. The original copy is kept in the Executive Committee of the Commonwealth of Independent States, which will send a certified copy to each signatory State of this Agreement.

For the Government For the Government of the Republic of Azerbaijan of the Republic of Moldova

For the Government For the Government of the Republic of Armenia Of the Russian Federation

For the Government For the Government of the Republic of Belarus of the Republic of Tajikistan

For the Government For the Government of Georgia Turkmenistan

For the Government For the Government of the Republic of Kazakhstan of the Republic of Uzbekistan

For the Government For the Government of the Kyrgyz Republic Of Ukraine

Reservations of Ukraine on item III-6 of the agenda of the meeting of the Council of Heads of Government of the CIS member States

"On the Agreement on Measures to Prevent and Suppress the Use of False Trademarks and Geographical Indications."

June 4, 1999

"For Ukraine, article 22 on the procedure for the owner to protect his rights to trademarks or geographical indications is applied in accordance with national legislation."

Head of the Ukrainian delegation, Prime Minister of Ukraine

President

Republic of Kazakhstan

Constitution Law Code Standard Decree Order Decision Resolution Lawyer Almaty Lawyer Legal service Legal advice Civil Criminal Administrative cases Disputes Defense Arbitration Law Company Kazakhstan Law Firm Court Cases