The procedure of international trademark registration is regulated by the normative documents of the World Intellectual Property Organization (hereinafter – WIPO) – the Madrid Agreement on the International Registration of Trademarks concluded in 1891 (hereinafter – the Agreement) and the Madrid Protocol to the Agreement concluded in 1989 (hereinafter – the Protocol). National Acts – Law of the Republic of Kazakhstan dated July 26, 1999, No. 456-I On Trademarks, Service Marks and Appellations of Origin (hereinafter – the Law), Rules of Examination of a Trademark Application in accordance with the Madrid Agreement on the International Registration of Marks and the Protocol to the Madrid Agreement on the International Registration of Marks (hereinafter – the Rules).

Registration procedure

An application for international registration is submitted to the WIPO International Bureau. The mistaken opinion is that having submitted an international application to the International Bureau, the trademark automatically receives registration in all countries of the world. The applicant should designate the country where protection is required by himself. It is worth noting that an indication of each additional country increases registration fee, at the same time filing an international application significantly reduces the costs of the applicant in contrast to filing a trademark application directly to each country. The application is usually submitted to the national office (National Institute of Intellectual Property) and after verification is redirected to the WIPO International Bureau. Further, the International Bureau sends an application to the patent offices of the countries designated by the applicant for their decision to register or to refuse to register a trademark. The international registration period is valid for 20 years, renewable an unlimited number of times.

Documents required for registration

An application for a trademark may be submitted in respect of several goods or services defined in accordance with the International Classification of Goods and Services (hereinafter – ICGS), in color, or in black and white.

The application should be supported by:

– image of a trademark;

– confirmation of payment services of the Patent Office, the International Bureau, as well as fees of foreign patent offices where registration is required;

– power of attorney (when filing an application through a representative/Patent Attorney).
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