World Monitor Magazine April 2017 - Page 49

EXPERT OPINION sale of a trademark or any goods designated by it, use in signboards, advertising, printed products or other business documents. In this regard, the import of marked goods is considered as one of the forms of use of intellectual property. The law on Trademarks (the “Law) contains a regulation similar to the Civil Code concerning this issue. In particular, according to Article 4.4 of the Law, no one may use any trademark protected in Kazakhstan without the owner's consent. Such use is recognized as a violation of the right holder’s exclusive rights according to Article 43.1 of the Law. Similar to provisions of the Civil Code, import of the marked goods shall be considered as one of the forms of its use. Thus, until 2012, the parallel import was allowed in Kazakhstan based on the principle of exhaustion of exclusive rights (that is, without the right holder’s consent). After 2012 and till now, the parallel import is possible with the consent of the right holder only. Any import without the right holder’s consent is considered a violation of the right holder’s exclusive rights and is prosecuted by law. Responsibility, in particular, is specified by Article1032 of the Civil Code, according to which a person importing any marked goods without its owner's consent shall be obliged to stop this violation and provide compensation to the rights holder of all the losses incurred. 2. Court practice Before October 2015, the court practice did not recognize the import of original marked goods into Kazakhstan without the consent of its owners as a violation. The courts proceeded from the fact that an entrepreneur who made the relevant importation, purchased the original goods from a legal owner on legal grounds (in this connection there is no need to get any additional permission from trademark owner). In view of this, the courts haven’t seen any violation in such cases. Since October 2015, the court practice related to this issue experienced certain changes. In particular, recently courts started to recognize the import of marked goods as an independent use of intellectual property, and, accordingly, any import without appropriate right holder’s permission is a violation of his/her rights. The latter in this case has the right to protect his/her violated rights, including compensation of losses. For instance, based on the decision of the Supervisory Board on Civil and Administrative Cases of the Supreme Court of Kazakhstan dated December 9, 2015, the claim initiated by company R against company K on the violation of exclusive rights of trademark owner has been sustained. According to this decision, import of marked goods to the territory of Kazakhstan is an independent form of use of trademark when the goods are introduced in to civil circulation in Kazakhstan. Herewith, in accordance with this decision, forgery of trademarks (counterfeit) and import of original marked goods without the right holder’s consent (parallel import) are different cases of illegal use of trademarks. After this Supreme Court’s decision, we can see how the court practice concerning parallel import issue begins to improve. In particular, two cases initially resolved by the SIEC (Specialized Interdistrict Economic Court) of Aktobe region in favor of entrepreneurs who had imported marked goods without its owners' consent, have been reconsidered by the Appellate Judicial Division of the Aktobe Regional Court. In accordance with resolutions of appellate judicial division of the Aktobe Regional Court on the claim of company G against company K LLP (dated May 13, 2016) and the company M against the company K LLP (dated April 13, 2016), the decisions of the primary courts refusing to sustain the claims of the aforementioned companies on protection of their exclusive trademark rights have been changed, and the defendant’s actions to import marked goods without th HY\&\˜ۜ[]HY[Xۚ^Y\[]ٝ[ \HX\[ۜ]HY[XYHۈHܛ[وH[YB\[Y[\Y[HYܙ[Y[[ۙYX\[ۈوH\[YH\ق^Z[[X\H M\\[H\œ\\[YH[\\وBY[X\ۙ\[H\]H[]YH\[[[\ܝ[H\[YB\وˈHY\\™[YHZ[H[QPوH\^Z[Y[ۈۈHX][ۂ[\ܝX\YB\]ܞHو^Z[]]\˜ۜ[ HZ[H\Y[[YYZ[H\[H]\\YHHH[\\™\XH\\Y\HBHY\]YHH\]ܞHقQUK\وH\[\[]B[[\]HY\Y\Z[BY\&\Z[\ˈ[\Y\ HY\&\\[H\Y\\\[][\\[\][ۂ\ H\[YH\وB\XXو^Z[K\\[[H[\\و\˜\[H[H\[YH\قH]H\ܝY\Z[HB\ܝYHUTАR