EXHAUSTION OF TRADEMARK RIGHTS IN KAZAKHSTAN UNDER REGIONAL EXHAUSTION IN THE EURASIAN ECONOMIC UNION
1. Introduction. – 2. Meaning of Trademark Exhaustion in Kazakhstan in Terms of the Eaeu Agreement. – 3. Actions which a Trademark Owner May not Prohibit after Exhaustion of Trademark Rights. – 4. Exhaustion as an Instrument of Brand Protection. – 5. Conclusions
Abstract
Background:
This article aims to examine the trademark rights exhaustion regime for Kazakhstan in the context of a high level of importation of goods and free trade in the Eurasian Economic Union1 (hereinafter “EAEU”). It addresses consumers’ interests and discusses business and intellectual property (hereinafter “IP”) law in relation to the exhaustion regime. It discusses trademark use in Kazakhstan, the prohibition of such use by trademark owners, and the limits of a trademark owner’s right to prohibit such use. While national and regional legislations introduce the regime of regional exhaustion of trademark rights in Kazakhstan, their legal constructions contain gaps and mutually exclusive provisions which create uncertainty for trademark owners and courts, thereby enabling infringement in the form of parallel import.
Methods:
To achieve the goal of this article, the authors applied a set of methods consisting of content analysis and case study. Particularly, the authors analysed the national and regional legislation applicable in Kazakhstan and examined the existing court practice that reveals certain problems with the exhaustion of trademark rights. Moreover, the article includes a comparative analysis of legislation from the United Kingdom (hereinafter “UK”), the European Union (hereinafter “EU”), and select Eastern European countries.
Results:
Thus, the paper provides an overview of the currently implemented regime of exhaustion in Kazakhstan and its application in the EAEU and examines the challenges created by uncertainties regarding which rights are being exhausted
Conclusions:
Kazakhstan is upholding the regime of regional exhaustion of trademark rights. At the same time, local and regional legislation contradict each other when the regulation concerns the national identification of a trademark. With the national registration of a trademark, the exhaustion regime becomes national. In contrast, in the case of international trademark registration, subject to several conditions, the exhaustion principle is regional.
This article aims to examine the trademark rights exhaustion regime for Kazakhstan in the context of a high level of importation of goods and free trade in the Eurasian Economic Union1 (hereinafter “EAEU”). It addresses consumers’ interests and discusses business and intellectual property (hereinafter “IP”) law in relation to the exhaustion regime. It discusses trademark use in Kazakhstan, the prohibition of such use by trademark owners, and the limits of a trademark owner’s right to prohibit such use. While national and regional legislations introduce the regime of regional exhaustion of trademark rights in Kazakhstan, their legal constructions contain gaps and mutually exclusive provisions which create uncertainty for trademark owners and courts, thereby enabling infringement in the form of parallel import.
Methods:
To achieve the goal of this article, the authors applied a set of methods consisting of content analysis and case study. Particularly, the authors analysed the national and regional legislation applicable in Kazakhstan and examined the existing court practice that reveals certain problems with the exhaustion of trademark rights. Moreover, the article includes a comparative analysis of legislation from the United Kingdom (hereinafter “UK”), the European Union (hereinafter “EU”), and select Eastern European countries.
Results:
Thus, the paper provides an overview of the currently implemented regime of exhaustion in Kazakhstan and its application in the EAEU and examines the challenges created by uncertainties regarding which rights are being exhausted
Conclusions:
Kazakhstan is upholding the regime of regional exhaustion of trademark rights. At the same time, local and regional legislation contradict each other when the regulation concerns the national identification of a trademark. With the national registration of a trademark, the exhaustion regime becomes national. In contrast, in the case of international trademark registration, subject to several conditions, the exhaustion principle is regional.
About Authors
Zhanat Nurmagambetov
PhD candidate, Constitutional and civil law, L. N. Gumilyov Eurasian National University, Republic of Kazakhstan njanat@gmail.com
https://orcid.org/0000-0003-2994-8500
Corresponding author, responsible for conceptualization, formal analysis, research methodology, data collection, writing, and supervising.
Amanzhol Nurmagambetov
Doctor of legal science, Professor, Department of constitutional and civil law, L. N. Gumilyov Eurasian National University, Republic of Kazakhstan
amanzhol.030650@gmail.com
https://orcid.org/0000-0001-9026-9019
Co-author, responsible for project administration, review and editing.
Competing interests: No competing interests were disclosed.
Disclaimer: The authors declare that their opinions and views expressed in this manuscript are free of any impact of any organizations.
Copyright: ©2024 Zhanat Nurmagambetov and Amanzhol Nurmagambetov. This is an open access article distributed under the terms of the Creative Commons Attribution License, (CC BY 4.0), which permits unrestricted use, distribution, and reproduction in any medium, provided the original author and source are credited.
PhD candidate, Constitutional and civil law, L. N. Gumilyov Eurasian National University, Republic of Kazakhstan njanat@gmail.com
https://orcid.org/0000-0003-2994-8500
Corresponding author, responsible for conceptualization, formal analysis, research methodology, data collection, writing, and supervising.
Amanzhol Nurmagambetov
Doctor of legal science, Professor, Department of constitutional and civil law, L. N. Gumilyov Eurasian National University, Republic of Kazakhstan
amanzhol.030650@gmail.com
https://orcid.org/0000-0001-9026-9019
Co-author, responsible for project administration, review and editing.
Competing interests: No competing interests were disclosed.
Disclaimer: The authors declare that their opinions and views expressed in this manuscript are free of any impact of any organizations.
Copyright: ©2024 Zhanat Nurmagambetov and Amanzhol Nurmagambetov. This is an open access article distributed under the terms of the Creative Commons Attribution License, (CC BY 4.0), which permits unrestricted use, distribution, and reproduction in any medium, provided the original author and source are credited.
References
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2. Bonadio E, ‘Parallel Imports in a Global Market: Should a Generalised International Exhaustion be the Next Step?’ (2011) 33(3) European Intellectual Property Review 153.
3. Calboli I and Lee E (eds), Research Handbook on Intellectual Property Exhaustion and Parallel Imports (Edward Elgar Pub Ltd 2016).
4. Dinwoodie GB, ‘Trademarks and Territory: Detaching Trademark Law from the Nation-State’ (2003) 41(3) HOUSTON LAW REVIEW 885.
5. Donnelly DE, ‘Parallel Trade and International Harmonization of the Exhaustion of Rights Doctrine’ (1997) 13(2) Santa Clara High Technology Law Journal 445.
6. Fink C, ‘Entering the Jungle of Intellectual Property Rights Exhaustion and Parallel Importation’ in Fink C and Maskus KE (eds), Intellectual Property and Development: Lessons from Recent Economic Research (World Bank OUP 2005) 171.
7. Grigoriadis LG, ‘Exhaustion of Trade Mark Rights in the Eurasian Economic Union’ (2016) 11(8) Journal of Intellectual Property Law & Practice 572, doi:10.1093/ jiplp/jpw083
8. Grigoriadis LG, Trade Marks and Free Trade: A Global Analysis (Springer 2014).
9. Jain S, ‘Parallel Imports and Trademark Law’ (2009) 14(1) Journal of Intellectual Property Rights 14.
10. Reed K, ‘Levi Strauss v Tesco and EU Trademark Exhaustion: A Proposal for Change’ (2002) 23(1) Northwestern Journal of International Law & Business 139.
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Keywords
- trademark, infringement, exhaustion of trademark rights, parallel import, Kazakhstan, Eurasian Economic Union.
Publication history
How to cite it?
- Nurmagambetov Z and Nurmagambetov A, ‘Exhaustion of trademark rights in Kazakhstan
under regional exhaustion in the Eurasian Economic Union’ (2024) 7(2) Access to Justice inEastern Europe 191-211 https://doi.org/10.33327/AJEE-18-7.2-a000220
