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 the right holder ’ s consent have been recognized as unlawful . These decisions have been made on the grounds of the same arguments used in the aforementioned decision of the Supreme Court of Kazakhstan .
In early 2017 , our company has represented the interests of a trademark owner in a dispute related to the parallel import in the Supreme Court of RK . The right holder has filed the claim in SIEC of the West Kazakhstan Region on the prohibition to import marked goods to the territory of Kazakhstan without his consent . The claim has been filed against the company that purchased the goods from a seller who has directly purchased these goods from the right holder outside the territory of EEU . Courts of the first and appellate instances have refused to sustain the right holder ’ s claims . In this regard , the right holder ’ s company asked us to represent its interests in cassation court ( the Supreme Court of the Republic of Kazakhstan ).
Representing the interests of this company in the Supreme Court of RK , we have supported our claim by
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