What is a Trademark (TM)?

A trademark is a special sign that helps distinguish the goods and services of one person or company from those of others.

2. Types of Trademarks

• Verbal: Words, phrases, or abbreviations in any language.
• Visual: Images that are memorable and distinctive.
• Three-Dimensional: Images of three-dimensional shapes of goods, such as packaging.
• Sound: Sounds or melodies associated with a product or manufacturer.
• Color: Colors that are associated with a brand.
• Changing: Images that change depending on circumstances.
• Combined: Logos and slogans together.
• Taste, Smell, and Touch: Rare cases of registration.

A trademark can be registered in any color or combination of colors. The mark being registered should not be widely used, standard, or simply descriptive of the goods.

Why is Registration Necessary?

Registering a trademark grants the right to exclusive use. This means it can be placed on product packaging and prohibits others from using it without permission. Registration helps increase product recognition and protects against unfair competition.

Benefits of Registration Include:

• Exclusive right to use the trademark.
• The possibility to apply for international registration.
• The ability to conduct advertising campaigns.
• The opportunity to grant licenses.
• Protection against unauthorized use of domain names online.
• Accounting for the trademark as an intangible asset on the organization's balance sheet.

Trademarks are registered with the State Agency for Intellectual Property and Innovations under the Cabinet of Ministers of the Kyrgyz Republic (Kyrgyzpatent).

Initial Steps for Registration

Before submitting an application for trademark registration, it is important to check its uniqueness in databases on the website. Then, you can submit the application in electronic or paper format in Kyrgyz, Russian, or foreign languages. The application must include a document proving payment of the state fee, a description of the mark, and a power of attorney if the application is submitted through a representative.

The application must contain:

• A request for registration of the mark as a trademark, including the applicant's name, location, and email address.
• The mark being applied for.
• A list of goods grouped by the classes of the International Classification of Goods and Services for the registration of marks (there are no restrictions on the number of classes in the application; payment is made for each class).

The application must be accompanied by:

• A document proving payment of the state fee (the fee is 5,000 soms).
• A description of the proposed mark.
• A power of attorney if the application is submitted by a representative or patent attorney.

5. Classification of Trademarks

The trademark application must contain a list of goods for which trademark registration is requested, grouped by the classes of the International Classification of Goods and Services. The trademark is protected for a specific list of goods and services.

It is important to understand that if your trademark is protected under class 40 "clothing sewing," the services of another company providing clothing rental services (class 45) will not violate your legal rights.

Therefore, it is critically important to correctly classify your services regarding which you seek legal protection for your trademark, whether it be "Educational Services" or "clothing sewing."

6. Priority of the Trademark (TM)

If an application for a similar trademark is submitted to Kyrgyzpatent, the priority will be determined by the date of the first application in a Paris Convention member state. This applies if the application is submitted within 6 months from that date.

An applicant wishing to benefit from the priority right must indicate this when submitting the application or within 2 months from the date of submission to Kyrgyzpatent. Supporting documents must also be provided no later than 2 months from the date of submission.

Priority may be established from the date of international trademark registration under international agreements. If different applicants submit applications for similar or identical trademarks on the same day, the certificate will be issued based on the application with the earlier incoming number or time of submission.

7. Trademark Examination

After the documents are submitted to Kyrgyzpatent, a preliminary examination is conducted within 1 month, and an examination of the submitted mark is conducted within 7 months.

During the examination, Kyrgyzpatent may request additional materials. These must be provided within 3 months from the date of the request. The applicant may supplement or correct the application materials before a decision is made, subject to payment of the fee.

The application may be withdrawn at any stage of consideration but no later than the date of trademark registration. A preliminary examination is conducted within 10 working days from the date of submission to determine the compliance of the application and documents with the concept of the trademark. The application is either accepted for consideration or rejected with notification to the applicant.

The examination of the submitted mark is conducted within 7 months from the date of application submission, establishing the trademark's priority. A preliminary decision to refuse registration of the trademark may be issued if:

• Trademark protection cannot be provided or is granted in a lesser scope than requested.
• Parts of the elements of the submitted mark are recognized as unprotected.

Based on the results of the examination, a decision is made to register the trademark or to refuse it, which is communicated to the applicant no later than 3 working days.

8. Grounds for Refusal of Trademark Registration

The following marks cannot be registered:

• They lack distinctiveness.
• They are descriptive (indicating type, quality, quantity, properties, etc.).
• They have entered common use for indicating goods of a certain type.
• They represent the shape of goods determined by their properties or purpose.
• They are international non-proprietary names for medicines.
• They contain the name of the Kyrgyz Republic or similar words.
• They are similar to official names of cultural heritage.
• They contain state coats of arms, flags, emblems, and similar symbols.

Registration is also not allowed for marks that:

• May mislead consumers.
• Indicate the place of origin of wines or spirits if they do not come from there.
• Contradict public interests, humanitarian principles, and morality.

9. Trademark Registration and Issuance of Certificate

After a decision on registration and payment of the fee, Kyrgyzpatent registers the trademark in the Trademark Register. Information about the registration is published in the official bulletin within 1 month. The certificate of registration is issued within 1 month after publication. Registration is valid for 10 years from the date of application and can be renewed for another 10 years upon payment of the fee. An additional 6 months is granted for renewal after the expiration of the term.

10. Registration Timelines for Trademark

The registration period for a trademark is 12 months or 6 months (for expedited examination). The trademark is valid for 10 years and can be extended for each subsequent 10 years.

11. Costs of Trademark Registration

The state fee is 35,000 soms. Upon submitting the application, 20,000 soms is paid, and the remaining amount of 15,000 soms is paid after the registration decision (after 12 months). An expedited examination (6 months) costs an additional 10,000 soms. For each additional category of goods, 7,500 soms is paid.