World Monitor Magazine April 2017 - Page 48

EXPERT OPINION Parallel import: Interests of the right holders above all Victoria Simonova, Partner of the Law firm Dentons Entrepreneurs are increasingly facing issues associated with illegal import of original goods with trademarks (marked goods), illegality of which is expressed in the absence of consent from the owner of the relevant trademark (owner of exclusive rights to the trademark – right holder). The rights of trademark owners are protected by law, in particular, the owners have the exclusive right to use and dispose their trademarks in accordance with the legislation of the Republic of Kazakhstan, including importing them. The above phenomenon is known as “parallel import”. It should be noted that this term has no official definition in the legislation of the Republic of Kazakhstan. In practice, parallel import is known as coming-in (import) of marked goods without consent of the right holders of these trademarks. The parallel import concept is directly related to the principle of exhaustion of exclusive rights applicable in the country concerned. Daniyar Toigonbaev, Counsel of the Law firm Dentons Saltanat Mukash, Paralegal 44 world monitor 1. Legislative regulation of the issue In Kazakhstan, until 2012, the international principle of exhaustion has been implemented in practice (but not stipulated by law directly). In accordance with this principle, a trademark own er (the Right holder) loses control over the further destiny of the marked goods at the first placement (commercialization) of them in a market of any country. Thus, based on this principle the entrepreneurs could import marked goods into Kazakhstan without any consent of trademark owner, if these goods have legally entered economic turnover on the territory of any country in the world. Since 2012, the principle of exhaustion of national exclusive rights has been implemented in Kazakhstan, as stipulated by paragraph 7 clause 19 of the Law “On trademarks” (as amended on 12.01.2012). According to this national principle, only those marked products which are introduced into economic turnover in Kazakhstan by the right holder or other persons with his consent could be freely circulated. In other words, import of such goods into Kazakhstan could be possible only with appropriate right holder’s permission. Since the beginning of 2015, the national exhaustion principle has been replaced by a regional one. This amendment has been introduced with the conclusion of the Eurasian Economic Union Treaty (EEU) on May 29, 2014 (entered force on January 1, 2015) to harmonize the provisions of this treaty with national legislation. In accordance with the current principle of regional exhaustion, marked goods can freely circulate within the EEU territory, if these goods have been legally commercialized in the territory of any EEU country directly by the trademark owner or other persons with his consent. According to this principle, entrepreneurs may import to the EEU territory the original goods purchased outside the EEU, only with the consent of the right holder. According to current legislation of Kazakhstan (Article 125.2, and Article 964.1 of the Civil Code), the results of intellectual creative activities and means of identification (trademarks) may be used by third parties only with the right holder’s consent. Herewith, according to 1025.2 of the Civil Code, the use of trademark implies any introduction into economic circulation including the following: manufacture, operation, import, storage, offer for sale,