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exhaustion principle has been replaced by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,