Kazakhstan

On January 19, 2021, Kazakhstan’s On Amendments and Additions to Certain Legislative Acts of the Republic of Kazakhstan on Customs Regulation and Entrepreneurship came into effect. The law simplifies the procedure for including intellectual property objects in the Customs Register.

Previously, applicants had to present a document indicating infringement of IP rights during customs clearance in any member nation of the Eurasian Eco-nomic Union, namely Kazakhstan, Russia, Belarus, Armenia and Kyrgyzstan. The document may be a court decision or administrative sanction imposed by any ad-ministrative state body such as the Customs Office or the Antimonopoly Agency. It was a requirement for acquiring customs protection in Kazakhstan.

The new law has removed the paragraph stating such requirement. In ad-dition, it has now made electronic services available for Customs Register proce-dures for entering, extending and excluding IP objects.

In addition, the Protocol on industrial design protection to the Eurasian Patent Convention of September 9, 1994, entered into force in Kazakhstan on April 12, 2021. The Eurasian Patent Convention allows applicants the opportunity to ac-quire a single patent for inventions in EAPC member states.

Less than two months later, on June 1, the Eurasian Patent Office (EAPO) ac-cepted the first application for a Eurasian design patent. Upon grant of the patent, design protection in five EAPO member states will be provided. These are Azer-baijan, Armenia, Kazakhstan, Kyrgyz Republic and Russian Federation. Design protection is also expected to extend to Tajikistan, Belarus and Turkmenistan.

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Based in Almaty, boutique firm Alchimbaeva & Partners specializes in the area of managing and protecting IPRs, with particular strength in patent prose-cution. 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 man-agement 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. Mos-cow-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, tele-communications, 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 search-es 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 for-eign 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 of-fices. Almaty-based managing partner Aigoul Kenjebayeva includes intellectual property and technology in her practice; she has also been involved in projects for clients in Kyrgyzstan and Uzbekistan.

International law firm GRATA International has a wide network of offices in Eurasia, covering all financial and commercial matters. 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 mat-ters 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 res-olution and arbitration; Ganzienko advises domestic and international clients on all aspects of copyright, trademarks and patents.

Founded in 2003, Legalmax is a law firm which specializes in the registra-tion 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 elect-ed 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 Al-maty and Baku covering Kazakhstan, Azerbaijan, central Asia and the Caucasus. It handles trademark and patent transactions, domain name registration and ac-quisition as well as trademark and patent registration. The firm was founded by Michael Wilson, regional founding partner of a major international law firm with offices in Almaty and Tashkent.

Helsinki-based Papula-Nevinpat is one of the largest IP agencies in Fin-land, and is well-recognized for its Eurasia connections with offices in Kazakh-stan, 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, trade-mark 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 rep-resents numerous local and foreign clients, including a major Kazakhstan pro-ducer 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 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 ef-fective response. The firm’s Russia/CIS team includes attorneys, IP consultants, trademark and patent agents from eight different countries

Tagbergenova & Partners is a full-service IP agency providing compre-hensive and quality IP protection. Its IP team includes three registered Kazakh patent attorneys and two Eurasian patent attorneys, and has served clients in-cluding Yamaha, 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 civ-il cases. Meanwhile, Ravil Kassilgov has represented companies in courts of all levels, including a number of international biopharmaceutical companies in dis-putes 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.