Saule Kulzhambekova, partner at Bolotov & Partners in Almaty, said that in the recent trademark infringement case won by Rolex over a local brand of watch-related products, the court should have also considered the possible perception of the trademarks by ordinary consumers in Kazakhstan.  

The court ruling relied heavily on expert opinion. 

The marks involved in the dispute were Cosmo, registered in the name of Mr. Shaken and Cosmograph, registered by Rolex. The Swiss watch manufacturer filed an opposition against the registration of Cosmo with the Board of Appeals, claiming there was confusing similarity with the Rolex trademark. 

Rolex’s opposition was dismissed, prompting the company to file a claim with the Administrative Court against the decision of the Board of Appeals.  

Two opinions were submitted. The expert opinion by Kaudyrov, former director of the Patent Office and former chairman of the Academy at the Supreme Court of the Republic of Kazakhstan, was that the trademarks are confusingly similar. On the other hand, the independent forensic expert stated the trademarks are not confusingly similar. 

The Court of First Instance agreed with Kaudyrov that the marks are confusingly similar and that the possibility of misrepresentation existed as the trademarks pertain to the same goods. On October 8, 2024, the Court of Appeal issued an Order pursuant to which the decision of the Court of First Instance was left unchanged. 

“We believe that in addition to the expert opinion, the courts should have considered the possible perception of these trademarks by ordinary consumers. It should not be excluded that a consumer survey could more accurately determine if there is a possibility of misleading,” said Kulzhambekova.  

First of all, Rolex watches are not affordable to ordinary consumers in Kazakhstan. The typical consumer isn’t familiar with Rolex Company sub-brands as well. “For consumers, all Rolex watches are Rolex as this brand is consistently present on all its products,” she shared. 

Furthermore, Kazakhstan is home to the Baikonur Cosmodrome, a Russian-operated spaceport in the city of Baikonur and the largest in terms of area. “For Kazakhstani people, the topic of space – cosmos – is close and familiar. Therefore, the word COSMO is perceived as a word related to space and the Cosmodrome,” Kulzhambekova explained.  

She added it is also difficult to agree with the court decisions considering the goods and their different price categories.