First, it should be noted that the Code of the Republic of Kazakhstan “On Customs Regulation in the Republic of Kazakhstan” dated 26 December 2017 provides a relatively new measure for protecting the rights of holders of intellectual property rights (hereinafter, “IP Objects”) taken by customs authorities.
The Code introduced the concept and regulation of a unified customs register of intellectual property objects of the member states of the Eurasian Economic Union (hereinafter, the “EAEU IPR Customs Register”).
What is the advantage of the EAEU IPR Customs Register?
Everyone wants to be confident in the quality of the products they purchase. Today, counterfeiters have learned to skilfully copy the packaging and other branding elements of well-known brands. By placing another company’s means of individualisation on counterfeit products, they attract customers’ attention and essentially parasitise on the reputation of a legitimate company that has invested significant effort and resources into building its brand.
As a result, both consumers and producers of genuine goods suffer, incurring financial and reputational losses.
One way to protect the interests of a trademark owner against the spread of counterfeits is to enter information about the trademark into the EAEU IPR Customs Register. This method has recently gained increasing effectiveness.
The mechanism for inclusion in the EAEU IPR Customs Register has several advantages not available to other trademark owners, namely:
• the trademark owner gains the ability to track from which countries illegal supplies originate and who and in what volumes imports counterfeit goods;
• the trademark owner gains access to information on illegal “parallel imports,” where genuine products placed on the market in another state are imported into Kazakhstan by an unauthorised importer;
• rapid information exchange with customs authorities allows the trademark owner to hold an infringer accountable even before counterfeit products reach the market, thereby protecting the reputation of the manufacturer of original goods and its rights and interests.
What documents and information are required to include IP Objects in the EAEU IPR Customs Register?
The Code provides the following procedure for submitting documents and information necessary for inclusion in the EAEU IPR Customs Register:
An application must be submitted by the trademark owner or another person representing the owner’s interests who has sufficient grounds to believe that, in the course of customs procedures, goods containing IP Objects have infringed or may infringe their rights to IP Objects, in the prescribed form.
The application must contain the following information:
The application must be accompanied by the following documents:
Trademark owners may also attach samples of goods containing IP Objects and goods containing signs of IP rights infringement, enabling the state revenue authorities to identify goods that infringe IP rights.
The application and the accompanying documents may be submitted to the authorised body in written and/or electronic form.
The authorised body for reviewing the application is the Committee of State Revenues of the Ministry of Finance of Kazakhstan (hereinafter, the “CSR”). The CSR reviews the application within twenty working days to decide on the inclusion of IP Objects in the customs register.
Once included in the EAEU IPR Customs Register, the trademark owner’s products benefit from increased protection by customs authorities. Upon detecting the importation of goods bearing a registered trademark from the register — i.e. illegal use of the trademark — the customs authorities suspend the release of such goods at the border for ten working days if the importer is not listed by the trademark owner in the register as an authorised importer.
The customs authority must notify the trademark owner of the suspension within one working day and provide information about the importing company. Believing their rights have been infringed, the trademark owner may seek to hold the importing company accountable. A trademark may remain in the customs register for up to two years, and the trademark owner may extend this period by another two years an unlimited number of times.
The Code introduced the concept and regulation of a unified customs register of intellectual property objects of the member states of the Eurasian Economic Union (hereinafter, the “EAEU IPR Customs Register”).
What is the advantage of the EAEU IPR Customs Register?
Everyone wants to be confident in the quality of the products they purchase. Today, counterfeiters have learned to skilfully copy the packaging and other branding elements of well-known brands. By placing another company’s means of individualisation on counterfeit products, they attract customers’ attention and essentially parasitise on the reputation of a legitimate company that has invested significant effort and resources into building its brand.
As a result, both consumers and producers of genuine goods suffer, incurring financial and reputational losses.
One way to protect the interests of a trademark owner against the spread of counterfeits is to enter information about the trademark into the EAEU IPR Customs Register. This method has recently gained increasing effectiveness.
The mechanism for inclusion in the EAEU IPR Customs Register has several advantages not available to other trademark owners, namely:
• the trademark owner gains the ability to track from which countries illegal supplies originate and who and in what volumes imports counterfeit goods;
• the trademark owner gains access to information on illegal “parallel imports,” where genuine products placed on the market in another state are imported into Kazakhstan by an unauthorised importer;
• rapid information exchange with customs authorities allows the trademark owner to hold an infringer accountable even before counterfeit products reach the market, thereby protecting the reputation of the manufacturer of original goods and its rights and interests.
What documents and information are required to include IP Objects in the EAEU IPR Customs Register?
The Code provides the following procedure for submitting documents and information necessary for inclusion in the EAEU IPR Customs Register:
An application must be submitted by the trademark owner or another person representing the owner’s interests who has sufficient grounds to believe that, in the course of customs procedures, goods containing IP Objects have infringed or may infringe their rights to IP Objects, in the prescribed form.
The application must contain the following information:
- information about the trademark owner, and if the application is submitted by another person representing the owner’s interests, also information about that person;
- information, including in electronic form, about the relevant IP Objects, the period during which the trademark owner requires assistance from customs authorities to protect their rights, and a description of the goods containing IP Objects with the Unified Commodity Classification codes for foreign economic activity, and detailed information enabling customs authorities to identify goods infringing IP rights;
- a document confirming the movement of goods across the customs border of the Eurasian Economic Union in breach of IP rights;
- information about persons authorised by the trademark owner to use the IP Objects.
The application must be accompanied by the following documents:
- documents confirming the existence and ownership of intellectual property rights (a certificate or assignment agreement, including a licence agreement, or an extract from the state register of IP Objects of the Republic of Kazakhstan or a certificate (extract) of the legal status of the trademark under international registration or other documents demonstrating rights to IP Objects);
- a power of attorney issued by the trademark owner to the representative;
- images of distinctive features of original goods containing IP Objects and goods containing signs of infringement of IP rights;
- an undertaking by the trademark owner or their representative to compensate a declarant and other persons for property damage that may arise due to suspension of the release of goods containing IP Objects that are alleged to infringe IP rights, in cases where it is determined that the goods do not infringe IP rights;
- a liability insurance agreement for the applicant covering harm to other persons.
Trademark owners may also attach samples of goods containing IP Objects and goods containing signs of IP rights infringement, enabling the state revenue authorities to identify goods that infringe IP rights.
The application and the accompanying documents may be submitted to the authorised body in written and/or electronic form.
The authorised body for reviewing the application is the Committee of State Revenues of the Ministry of Finance of Kazakhstan (hereinafter, the “CSR”). The CSR reviews the application within twenty working days to decide on the inclusion of IP Objects in the customs register.
Once included in the EAEU IPR Customs Register, the trademark owner’s products benefit from increased protection by customs authorities. Upon detecting the importation of goods bearing a registered trademark from the register — i.e. illegal use of the trademark — the customs authorities suspend the release of such goods at the border for ten working days if the importer is not listed by the trademark owner in the register as an authorised importer.
The customs authority must notify the trademark owner of the suspension within one working day and provide information about the importing company. Believing their rights have been infringed, the trademark owner may seek to hold the importing company accountable. A trademark may remain in the customs register for up to two years, and the trademark owner may extend this period by another two years an unlimited number of times.