PETOŠEVIĆ

Kazakhstan Amends Several IP Laws, Introduces GI Protection

On June 20, 2022, Kazakhstan adopted a set of amendments to several intellectual property laws introducing significant changes in the IP field, including the introduction of GI protection. The amendments will enter into force on August 21, 2022.

Geographical Indications and Appellations of Origin

An important novelty is the introduction of GI protection. A GI is defined as an indication identifying certain goods as originating from a certain geographical area, where certain quality, reputation or other characteristics of goods can essentially be attributed to their geographical origin. At least one stage of production, which substantially influences the quality, reputation or characteristics of the product, should take place on the territory in question.

It is already possible to register geographically related signs and names in Kazakhstan as appellations of origin (AO). The main difference between a GI and an AO is AO’s stronger link with its place of origin – all product stages must take place in the specified geographical location. Apart from that, the registration process and other requirements for obtaining GI or AO protection are the same. It is also possible to transform a GI application into an AO application and vice versa.

A GI may be registered by several persons, either jointly or independently; the right to use a GI belongs to each registrant. The legislation also provides for the registration and use of foreign Gis, if they are protected in the country of origin.

An application for the registration of a GI or AO or the right to use an existing GI or AO should be filed with the Kazakh Intellectual Property Office and must contain the following:

1. Representation of the claimed GI or AO;
2. Details about applicant(s) including their location(s) or place(s) of residence;
3. Product description;
4. Details about the place of origin or production of goods, including geographical borders;
5. Description of specific product characteristics and its link with the production area – description of quality, reputation and/or other characteristics, including the source material used for production (physical, chemical, microbiological, etc.) which is primarily determined by its geographical origin;
6. Information on the production process and product’s storage and transportation, if this has a significant impact on the formation and preservation of the product’s characteristics;
7. If the production is based in Kazakhstan, a document issued by a local authority confirming that the applicant produces the goods in a certain geographical area, as well as documents confirming that the quality, reputation and/or other characteristics of goods are essentially attributable to their geographical origin; and
8. Proof of payment of the official fee (which has yet to be determined) and, in case the applicant is filing through a representative, a copy of the Power of Attorney form.

GI and AO applications and the accompanying documents should be submitted in Kazakh or Russian. If the documents are submitted in another language, the translation into Kazakh or Russian should be submitted within a month from the application filing date.

The Kazakh IPO will conduct an examination within three months from the application filing date. GI and AO registrations are valid for an unlimited period of time, while a certificate granting the right to use an already registered GI or AO is valid for 10 years from the application filing date, and can be extended for an unlimited number of additional 10-year periods.

Trademarks

The time limit for the formal examination of a trademark application has been extended from 10 working days to one month from the application filing date. Substantive examination term remains seven months from the application filing date.

The time limit for the IPO to record changes to registered trademarks has been reduced from one month to 10 working days. The deadline within which the IPO has to notify trademark holders of recorded changes has also been substantially reduced, from two months to five working days.

Currently, trademarks that are not capable of distinguishing the goods or services of one person from that of another are refused protection on absolute grounds. The only way to avoid refusal is to impose a disclaimer on a non-distinctive element if it does not occupy the dominant position in the mark. Under the amendments, such elements will not represent an obstacle to the registration if distinctiveness through use was acquired prior to the application’s filing date.

The amendments have introduced an opposition procedure for trademarks as well as for AOs and GIs. Along with pending trademark applications, information on pending GI and AO applications will also be published weekly on the IPO’s website. Any interested person can file an objection on absolute or relative grounds against pending applications with the IPO within one month from the application publication date. The IPO will then notify the applicant of the received objection(s) within five working days. The applicant can then respond in writing within three months from the notification date. The IPO will then issue a decision after considering both the objection(s) and the applicant’s response. This decision must be made before substantive examination is completed, which is within seven months from the application filing date. It is not possible to extend any time limits in opposition proceedings.

Patents

Currently, patents cannot be granted for inventions that are, inter alia, considered contrary to the public interest and principles of humanity and morality. The list of non-patentable inventions has been expanded to include the following:

• Human cloning methods and human clones;
• Methods that modify the genetic integrity of human embryo cells; and
• Use of human embryos for commercial, military and industrial purposes.

Once the amendments enter into force, it will be possible to submit a proof of payment of the patent application filing fee within two months from the application filing date. Currently, a proof must be submitted at the time of filing.

Industrial Designs

With respect to industrial designs, the initial term of validity has been reduced from 15 years to 10 years. However, the protection term can be extended for additional five-year periods up to three times, for a total maximum term of 25 years from the application filing date. Currently, the initial 15-year validity period can only be extended once for five years.

An unregistered industrial design that meets the novelty and originality requirements may be protected for three years from the date it was first made available to the public in Kazakhstan. An unregistered industrial design that has been disclosed to a third party under explicit or implicit conditions of confidentiality will not be deemed to have been made public. Unregistered industrial design rights can be enforced in courts.

By: Aliya Madiyarova

For more information, please contact Aliya Madiyarova at our Kazakhstan office.

New Law on Trade Secrets Enters into Force in Kosovo

Kosovo’s new Law on the Protection of Trade Secrets, which entered into force on June 14, 2022, is largely harmonized with the Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. The new law defines what trade secrets are, what constitutes their infringement, and the interim and final measures and remedies available in the event of infringement.

Definition

Trade secrets are defined as information that fulfills all the following criteria:

1. It is secret in the sense that it is not, as a whole or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question;
2. It has commercial value because it is secret; and
3. It has been subject to reasonable steps to keep it secret by the person lawfully in control of the information.

Unlawful Acquisition, Use and Disclosure

The acquisition of a trade secret without the consent of its holder is considered infringement whenever achieved by:

1. Unauthorized access to, appropriation of, or copying of any documents, objects, materials, substances or electronic files lawfully under the control of the trade secret holder, containing the trade secret or from which the trade secret can be deduced; or
2. Any other conduct which, under the circumstances, is considered contrary to honest commercial practices.

The use or disclosure of a trade secret is considered unlawful whenever carried out without the consent of the trade secret holder by a person who is found to meet any of the following conditions:

1. Having acquired the trade secret unlawfully;
2. Being in breach of a confidentiality agreement or any other duty not to disclose the trade secret; or
3. Being in breach of a contractual or any other duty to limit the use of the trade secret.

The acquisition, use or disclosure of a trade secret is also considered unlawful whenever a person, at the time of the acquisition, use or disclosure, knew or ought to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclosing the trade secret unlawfully.

The production, offering or placing on the market of goods infringing a trade secret, or the import, export or storage of such goods for the purpose of offering or placing them on the market, as well as offering and providing services by which a trade secret is used is also considered an unlawful use of a trade secret, if the person carrying out such activities knew, or ought, under the circumstances, to have known that the trade secret was used unlawfully.

Interim and Final Measures

The trade secret holder can request that the court order any of the following interim measures against the alleged infringer:

1. Cessation or temporary prohibition of use or disclosure of the trade secret;
2. Prohibition of the production, offering, placing on the market, use, import, export or storage of infringing goods;
3. Seizure or delivery to the trade secret holder of the suspected infringing goods, including imported goods, so as to prevent their entry into or circulation on the market.

Final measures and remedies in the event of infringement of trade secrets include:

1. Cessation of infringement or prohibition of use and disclosure of a trade secret;
2. Prohibition of the production, offering, placing on the market or use of infringing goods, or the import, export or storage of infringing goods for those purposes;
3. Adoption of the appropriate corrective measures with regard to the infringing goods, such as depriving the goods of their infringing quality, their destruction or, where appropriate, their withdrawal from the market, provided that the withdrawal does not undermine the protection of the trade secret in question;
4. Destruction of all or part of any document, item, material, substance or electronic file containing or embodying the trade secret or, where appropriate, the delivery to the trade secret holder of all or part of those documents, objects, materials, substances or electronic files;
5. Damages; and
6. Publication of the judgment.

The limitation period for claims related to misappropriation of trade secrets is six years counting from the moment when the trade secret holder became aware of the infringement or the damages caused by it, as well as the identity of the infringer.

By: Mihajlo Zatezalo

For more information, please contact Mihajlo Zatezalo at our Serbia office.

Czech Republic Accedes to Geneva Act of the Lisbon Agreement

On June 2, 2022, the Czech Republic deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications with the World Intellectual Property Organization (WIPO). The Geneva Act of the Lisbon Agreement will enter into force with respect to the Czech Republic on September 2, 2022.

Accession to the Geneva Act of the Lisbon Agreement will allow Czech applicants to protect their regional brands abroad as appellations of origin or geographical indications through a single application and upon payment of one set of fees.

The Geneva Act, concluded in 2015, and the Lisbon Agreement, concluded in 1958, constitute the “Lisbon System” for the international registration and protection of appellations of origin and geographical indications. The “Lisbon System” currently covers 57 countries.

Prepared by: Djurdja Krivokapić

For more information, please contact mail@petosevic.com.

EAPO to Serve as ISA, IPEA under PCT Starting July 1, 2022

The Eurasian Patent Office (EAPO) has announced that it will start acting as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) starting from July 1, 2022.

EAPO and WIPO signed an agreement appointing EAPO as an ISA and an IPEA on November 22, 2021. EAPO will serve as an ISA and an IPEA until December 31, 2027.

Prepared by: Djurdja Krivokapić

For more information, please contact mail@petosevic.com.

More Design and Trademark Applications in Hungary in 2021

The Hungarian Intellectual Property Office (HIPO) recently published its annual report for 2021, which shows a substantial increase in the number of national trademark, design and plant variety applications. The number of national patent applications remains steady, while the number of utility model applications has decreased.

The number of national applications for designs and trademarks increased by 65.2% and 5.1%, respectively. In the past decade, HIPO only received more trademark applications in 2012.

On a less positive note, national patent applications have only shown a slight increase of 0.7% while utility model applications have decreased by 12.1%.

When it comes to international IP protection, the number of applications for European patent validations and international trademarks designating Hungary decreased by 10.5% and 4.3%, respectively, continuing last year’s downward trend.

Prepared by: Erika Farkas

For more information, please contact hungary@petosevic.com.

IP Stars Ranks PETOŠEVIĆ Offices and Practitioners in Five Jurisdictions

MIP’s IP Stars trademark, patent, general IP and individual practitioner rankings were recently published, recognizing PETOŠEVIĆ offices and individuals for outstanding work in five jurisdictions.

The IP Stars guide is published by Managing Intellectual Property (MIP), a well-respected publisher in the IP industry.

The results feature firms ranked according to practice areas in different tiers, as highly recommended or recommended. The number of tiers varies by jurisdiction, while in smaller countries rankings are not divided into practice areas and sub-practice areas.

PETOŠEVIĆ was ranked as follows:

Bulgaria – Trademark – Tier 3
Croatia – Intellectual property – Tier 2
Romania – Trademark prosecution –  Tier 2
Romania – Trademark contentious – Notable firm
Romania – Patent – Tier 3
Serbia – Intellectual Property – Tier 1
Slovenia – Intellectual property – Recommended

The following PETOŠEVIĆ practitioners were ranked:

Dimitar Batakliev – Trademark Star
Aura Campeanu – Trademark Star
Ivan Kos – Trademark Star
Barbara Mencin – Trademark Star
Mihajlo Zatezalo – Trademark Star
Mirjana Živković – Trademark Star, Patent Star

For more information and to read testimonials about PETOŠEVIĆ and our team, please visit our Rankings page.