Presidential Decree No. 229 in Kazakhstan sparks call for amendment20 October 2020
Stakeholders met at a roundtable meeting earlier this year at Bolotov & Partners in Almaty to discuss Presidential Decree No. 229, signed by President Kassym-Jomart Tokayev late last year.
Asia IP Profiles Survey Deadline Extended27 March 2020
Asia IP Profiles 2020 ranks IP firms across APAC.
The early part of 2022 saw Kazakhstan having new appointees in government. This included the Ministry of Justice, which handles intellectual property protection.
This development took place following an eruption of protests across the country in January, decrying issues such as high fuel prices, inflation, lack of jobs and corruption. On January 6, 2022, President Qaysm Joomart Tokaev declared a state of emergency nationwide and several arrests were made. By February, the problem had largely subsided.
A month earlier, in December 2021, then-Vice Minister of Justice Akerke Akhmetova announced that Kazakhstan has created an intellectual property further development roadmap for the next three years. The IP roadmap contains plans for the establishment of a Technology and Innovation Support Centre, a system for international patenting grant scheme, specialized court for IP matters, training opportunities on commercialization of inventions for national inventors and for judges, study visits overseas, among others.
But perhaps, the major highlight of the year in the country’s IP scene took place on June 2, 2022, when Parliament passed amendments into its intellectual property legislation. One of the key changes is the introduction of the opposition proceeding into the trademark law. The opposition proceeding makes it possible to oppose a trademark registration during its substantive examination phase. Another key change is the inclusion of geographical indications as a type of intellectual property. A third salient point involves the patent law, which now makes it possible for applicants to seek protection for patent designs which are unregistered in Kazakhstan. The president is expected to sign the new legislation by July 2022.
Also in June 2022, the country announced the necessity of regulating artificial intelligence and robotics. The Parliament of Kazakhstan is also considering a new draft law that will replace the country’s current personal data (PD) legislation.
Based in Almaty, boutique firm Alchimbaeva & Partners specializes in the area of managing and protecting IPRs, with particular strength in patent prosecution. Head of the company Alchimbayeva Raushan Temirkhanovna has 40 years of experience in the field and was deputy head of the patent department of the Republic of Kazakhstan for nine years.
With a team of more than 30 registered trademark and patent lawyers and consultants in its Almaty, Baku, Kyiv, Moscow and St. Petersburg offices, Baker McKenzie provides well-recognized services on all aspects of IP management to the whole CIS region. It is also the only law firm that Kazakhstan’s president has selected as a member of his Foreign Investors Council. Moscow-based senior counsel Eugene Arievich heads the firm’s CIS intellectual property practice group.
Bolotov & Partners is a rapidly-expanding IP specialist firm in Kazakhstan. Since its opening in Almaty in 1994, its team of patent and trademark attorneys has handled IP matters in various industries, including consumer products, telecommunications, transportation, energy, financial services and manufacturing. Managing partner Yuri Bolotov is a well-respected IP expert in the country. The firm’s lawyers have substantial track records in advising on various trademark and patent matters including trademark and patent clearance and other searches and registrations, prosecution and enforcement.
Bureau PLIS is an independent firm of IP attorneys established in 1993 led by senior partner Nina V. Russakova and partner Galina A. Zhukova. It has been providing full IP services to close to 700 local companies and more than 20 foreign clients. Its handling of trademark prosecution and contentious matters is particularly recognized in the country.
Dentons has more than 40 practitioners in its Almaty and Nur-Sultan offices. Its expertise spans many industries including, inter alia, leisure and hospitality, pharmaceutical and life sciences, FMCG, mining, telecommunications, entertainment, financial services and luxury consumer brands. The firm assisted Monster Energy Company in 2021 in challenging two confusingly similar trademark registrations owned by local beer producer. It is also preparing an assignment and license agreements to ACCOR Hotels. Abai B. Shaikenovwasnamed managing partner in 2022. Another principal lawyer is Aliya Seitova, who co-heads the IP practice. In January 2022, Dentons launched the “Dentons Artificial Intelligence (AI) Guide” for global clients describing main findings from the survey that was conducted, innovations, strategy, challenges, etc.
International law firm GRATA International has a wide network of offices in Eurasia, covering all financial and commercial matters. The firm has extensive experience in patenting inventions, utility models and industrial designs. Its services also include patent researches, protection of IP rights through the pre-trial process and representing international companies at the courts of various instances and state agencies. Saule Akhmetova, a partner and director of the firm’s Almaty branch, is a key contact for IP matters, as well as mergers and acquisitions, taxation, investment, contract law and matters of subsoil use.
Integrities’ IP team is led by senior associate Daria Ganzienko, who joined the team in 2012. Her main areas of expertise include IP, media law, dispute resolution and arbitration; Ganzienko advises domestic and international clients on all aspects of copyright, trademarks and patents. In its 16 years, the firm has served more than 1,350 clients from around the globe, including Fortune 500 companies and international financial institutions. It is highly recommended for its cross-border work, whether sophisticated transactions or complex dispute resolution and for large projects in renewable energy. Aside from its office in Kazakhstan, Integrities also has an office in Ukraine as well as representative offices in Germany and the UK.
Founded in 2003, Legalmax is a law firm which specializes in the registration and protection of intellectual property in the Russian-speaking countries of the CIS. Its IP team has advised and acted on trademarks, patents, copyright, enforcement and litigation matters for both domestic and foreign companies. Zhanna Abylkhanova, head of the Legalmax office in Kazakhstan, has been elected as chairman of the Union of Patent Attorneys of the Republic of Kazakhstan, and is a key contact. Uzbekistan-based Mukhammadali Makhmudov is managing partner. Lola Islamova heads the firm’s IP practice.
Michael Wilson & Partners is a full-service law firm with offices in Almaty and Baku covering Kazakhstan, Azerbaijan, Central Asia and the Caucasus. It handles trademark and patent transactions, domain name registration and acquisition as well as trademark and patent registration. The firm was founded by Michael Wilson, who had been regional founding partner of Baker McKenzie’s Central Asia offices in Almaty and Nur-Sultan, Kazakhstan; Tashkent, Uzbekistan; Baku, Azerbaijan; and Bishkek, Kyrgyzstan.
Helsinki-based Papula-Nevinpat is one of the largest IP agencies in Finland, and is well-recognized for its Eurasia connections with offices in Kazakhstan, Belarus, Russia, Ukraine and Uzbekistan. With extensive knowledge of local legislation and legal procedures in Eurasia, its team of 13 partners provides a wide variety of cost-effective services covering all aspects of the patent, trademark and design application process, strategic planning and consultation.
The intellectual property practice at Sayat Zholshy & Partners is led by Amir Begdesenov, a partner who is also active in the antitrust space. He represents numerous local and foreign clients, including a major Kazakhstan producer of beer and non-alcoholic beverages in litigation over the exclusive rights to use trademarks, a leading European truck manufacturer on the amendment of a license/dealership agreement with a Kazakhstan dealer for the purpose of finding a compromise between the effects of IP law and the effects of antitrust law, and advising a major Kazakhstan television and radio broadcasting company on copyright infringement issues.
Full-service IP firm Schmitt & Orlov, also known as S&O IP, specializes in advising clients on all aspects of intellectual property in Russia and the CIS region from registration to enforcement, as well as commercialization. The firm is known for its focus on understanding clients’ businesses needs and providing a responsive and effective response. The firm’s Russia/CIS team includes attorneys, IP consultants, trademark and patent agents from eight different countries. Oleg Ovcharenko is the firm’s St. Petersburg-based Central Asia/Trans-Caucasus director; Anna Kornilova in St. Petersburg is the region’s legal department director.
Tagbergenova & Partners is a full-service IP agency providing comprehensive and quality IP protection. The firm provides IP services to clients in Kyrgyzstan, Turkmenistan, Georgia, Azerbaijan, Tajikistan, Armenia, Ukraine, Moldova, Russia and Belarus, as well as an expanding practice in China and Southeast Asia. Its IP team includes five registered Kazakh patent attorneys, two of whom are Eurasian patent attorneys, and has served clients including Yamaha, Electrolux, Pentium, Adidas and Coca-Cola. Director Alma Tagbergenova is a key contact.
Tukulov & Kassilgov Litigation touts itself as Kazakhstan’s “first law firm specialized in dispute resolution,” and its founding partners are indeed heavy hitters in the dispute resolution realm. Bakhyt Tukulov led the dispute resolution practice at GRATA International and has been involved in many high-profile civil cases. Meanwhile, Ravil Kassilgov has represented companies in courts of all levels, including a number of international biopharmaceutical companies in disputes over protection of undisclosed information. Nataliya Shapovalova handles IP and IT matters at the firm, including IP litigation; she spent the past 11 years with Dentons.