Provision on well-known Trademarks in the Kyrgyz Repudlic
resolution of the Government of KR
of August 24, 2000 N520
on well-known Trademarks in the Kyrgyz Republic
(in edition of resolutions of the Government of the KR of May 15, 2001 N 233, of May 20, 2014 N263)
Provision on well-known Trademarks in the Kyrgyz Republic (further – Provision) regulates relations connected with recognition in the Kyrgyz Republic of well-known Trademarks it is also directed on implementation of the obligations following from the Parisian convention on protection of industrial property (further – the Parisian convention), Agreements on trade aspects of intellectual property rights (TRIPS) which participant is the Kyrgyz Republic.
Present Provision developed according to Law of the KR “On Trademarks, Service Marks and Appelations of Origin” and other regulatory legal acts of the Kyrgyz Republic for protection of consumers against deception concerning the manufacturer of goods, their quality or their origin, and also protection of interests of owners of well-known Trademarks and Trademarks from their transformation into specific designations as a result of repeated and uncontrolled use.
1.Authorized state body in the field of intellectual property (further Kyrgyzpatent) carries out a uniform state policy in the field of protection of well-known Trademarks in the Kyrgyz Republic, accepts to consideration of the application about recognition of Trademarks well-known, makes decisions on recognition of Trademarks well-known, carries out the state registration of well-known Trademarks, keeps the State register of well-known Trademarks (further – the Register), grants certificates, publishes official data on the Trademarks recognized well-known in the territory of the Kyrgyz Republic and also considers disputes concerning well-known Trademarks.
(In edition of the resolution of the Government of the KR of May 20, 2014 No. 263)
2The body which on behalf of Kyrgyzpatent is carrying out consideration of the applications about recognition of Trademarks well-known, pronouncement of decisions on recognition of Trademarks well-known and consideration of disputes concerning well-known Trademarks is Appeal council of Kyrgyzpatent (further – Appeal council) which at recognition of Trademarks well-known and consideration of disputes concerning them is guided by the present Provision and other regulations of the Kyrgyz Republic.
3. Legal protection of well-known Trademarks it is provided to those designations, Trademarks which gained wide distinctive ability as a result of their long and intensive use and became characteristic for goods of a certain manufacturer.
The well-known Trademark is protected concerning all goods in connection with which the sign gained the fame. Legal protection of the well-known Trademark extends also on goods, non-uniform with concerning what it is recognized well-known if use by other person of this Trademark in respect of the specified goods is associated at consumers with the owner of an exclusive right to the well-known Trademark and can infringe upon legitimate interests of such owner.
Legal protection of the well-known Trademark works is termless.
(In edition of the resolution of the government of KR of May 20, 2014 No. 263) Правовая охрана общеизвестных
4. Trademarks recognize as well- known in the territory of the Kyrgyz Republic on condition of its compliance to criteria of common knowledge and its entering in the Register of well-known Trademarks and official publication of data on him by Kyrgyzpatent.
5Well-known Тrademarks, owing to the fact of a long and intensive use and obtaining wide popularity by that, use in the territory of the Kyrgyz Republic primary protection before other identical or similar Trademarks which are a protection subject in the Kyrgyz Republic.
6. Standards of the present Provision are applied also to Service marks.
II. Criteria of recognition of Trademarks the well-known
7. Trademarks recognize well-known in the territory of the KR according to following criteria:
– recognizing of actual and/ or recognizing potential consumer of the KR those types of goods to which the sign, or the persons participating in providing distribution channels of that type of goods to which the Trademark, or the business community concerning those types of goods to which the Trademark and level of quality of goods has to be connected with the Trademark in the country or in the world market;
– the high distinctive ability inherent initially, or acquired as a result of an intensive use;
– wide use and advertising of the Trademark in the territory of the republic or in the world market;
– commercial value as a result of a long and intensive use in the republic or in the world market.
8. By Appeal of Board at pronouncement of the decision along with the above criteria the additional criteria which aren’t reflected in the present Provision can be considered.
8-1. The Trademark and designation can’t be recognized by well-known Trademarks if they became widely known after date of a priority identical or similar to them to extent of mixture of the trademark of other person which is intended for use in respect of uniform goods.
(In edition of the resolution of the Government of KR of May 20, 2014 No. 263)
III. Procedure of recognition of the Trademark the well-known
9. The basis for recognition of the Trademark well-known is the application of the interested person submitted to Appeal of Boardl. At filing of application duty in the established size has to be paid.
The basis for recognition of the Trademark well-known also is the objection of the interested person given to Appealof Board according to articles 11 and 25 of the Law of the Kyrgyz Republic “On Trademarks, Service Marks and Appelations of Origin”. In case of the conflict of the Trademark applying for common knowledge with the registered Trademark, the objection has to be given to Appeal of Board no later than five years from the date of official publication of data on registration of the Trademark, whose registration is called into question.
The real norm doesn’t extend on the Trademarks registered or used unfairly.
10. For recognizing of Trademark is well- known the application must consist from documents approves:
– an intensive use, thus in documents have to be specified start date of use; the list of settlements in which the realization of the goods designated by the Trademark was enabled; the inventory concerning which use was carried out; ways of use; real or nominal; average annual number of consumers of goods; position of the manufacturer in a certain sector of economy, etc.;
– degree of popularity of the Trademark in the territory of the Kyrgyz Republic in the relevant sector of society, and also beyond its limits;
– duration and geographical scales of any use of the Trademark in the world;
– any kinds of activities for promotion of the Trademark, including advertizing or promotion, and also presentation at fairs or exhibitions of goods to which this sign is applied;
– Trademark publicity expenses in the Kyrgyz Republic (annual financial reports in five years);
– any available registration or the demands for registration reflecting use or recognition of the Trademark;
– successful realization of the rights concerning the Trademark in other participating countries of the Parisian union;
– cost (value) of the trademark;
– results of poll of the corresponding circles of consumers who can really be consumers of the goods having this Trademark;
– other data which can matter at recognition of the Trademark the well-known.
11. Examination of the consumer has to be carried out by the independent competent organizations for the order of interested party. Results of examination of consumers are made out in the form of the special conclusion which has to contain the following data:
– the image of the Trademark concerning which survey was conducted;
– time and venue of poll;
– the quantity and structure of respondents, thus in attention have to undertake:
a) the actual and/or potential consumers of that type of goods to whom the Trademark is applied;
b) the persons participating in providing distribution channels of that type of goods to which the Trademark is applied;
c) the business community concerning those types of goods to which the Trademark is applied;
– data on respondents (sex, age, occupation, etc.);
– results of the analysis of answers of respondents (quality of the goods designated by a sign, a source of information on a sign and its owner; goods with which the trademark, etc. is associated).
The conclusion has to be signed by the head of the organization conducting sociological survey, the signature has to be under seal.
Responsibility for reliability of the data stated in the conclusion is born by the organization conducting sociological survey.
12The quality proof of goods, duration, continuity, intensity and the volume of use of the Trademark can serve the conclusions (reference) of the competent organizations of the corresponding industry, control authorities of quality of goods and production, trade organizations, associations and societies of consumers, certificates and certificates of quality.
13. The application for recognition of the Trademark the well-known has to be considered by Appeal of Board within four months from the date of its receipt.
Appeal of Board, having considered the presented materials, in case of compliance of the Trademark to the declared requirements, passes the decision on recognition of the Trademark well-known in the territory of the Kyrgyz Republic and its registration in the Register.
In case of insufficiency of the produced evidence for recognition of the Trademark well-known, Appeal of Board passes the decision on refusal in satisfaction of the submitted application and recognition of the Trademark to the well-known.
The decision of Appeal council can be appealed in court within six months from the date of its receiving.
14. Appeal of Board, having considered the presented materials, in case of compliance of the Trademark to the declared requirements passes the decision on satisfaction of the objection given the interested person, according to articles 11 and 25 of the Law of the Kyrgyz Republic “On Trademarks, Service Marks and Appelations of Origin”, about recognition of the Trademark well-known in the territory of the Kyrgyz Republic, its registration in the Register and cancellation of registration of the clashing Trademark.
In case of insufficiency of the produced evidence, Appeal of Board passes the decision on refusal in satisfaction of the given objection and recognition of the Trademark by the well-known.
15. At pronouncement of the decision by Appeal of Board on recognition of the Trademark well-known and its registration in the Register, Kyrgyzpatent grants the certificate and publishes data in the official bulletin within a month.
The form of the certificate and structure of the data specified in it are established by Kyrgyzpatent.
16. According to the statement of the interested person or at the initiative of the owner of the well-known Trademark, in the presence of sufficient proofs, Appeal of Board has the right to make the decision on loss by the well-known Trademark of the status well-known. Thus according to the decision of Appeal of Board in the Register the corresponding entry is made. At filing of application duty in the established size has to be paid.
IV. Collision with well-known Trademarks
17. The Trademarks recognized well-known according to the present Provision, facing the clashing trademarks, trade names or names of domains have primary legal protection from the moment of receiving by the Tademark of the status well-known.
18. The Trademark is considered clashing if it or its essential part, represents reproduction, imitation, transfer or a transliteration of the well-known Trademark, and can cause mixture if this sign or its essential part is used, is a subject of the demand for registration, or is registered concerning goods which are identical or similar to goods to which the well-known Trademark is applied.
Irrespective of goods, whether concerning which the Trademark is used, is it a subject of the demand for registration or is registered, this sign is considered contradicting the well-known Trademark if it all or its essential part represents reproduction, imitation, transfer or a transliteration of a well-known sign and if:
a) use of this sign indicates communication between goods concerning which this sign is used, is a subject of the demand for registration or is registered, and the owner of the well-known Trademark and causes damage to its interests;
b) use of this sign will cause damage or will weaken unfairly distinctive character of a well-known sign;
c) this sign unfairly uses advantages of distinctive character of a well-known sign.