We analyzed the trademark portfolio of the Kazakh company. We found out that the targeted registration of foreign brands for subsequent resale or licensing is part of its business. Further, we found out that the invader had not used our client’s trademark for almost three years from the moment of registration, which soon gave us the basis for preparing a case to cancel the protection of the mark in connection with its non-use.

Background

Before filing a claim, we filed a new application for an identical trademark. We prepared evidence of our client’s interest in canceling the brand squatter trademark. With the help of a local patent attorney, we collected additional evidence confirming the actual non-use of the disputed trademark, including the results of marketing research and answers to inquiries from food regulatory authorities.

Our client, a Russian food manufacturer interested in the Kazakh market, has applied for its trademark in Kazakhstan. But as it turned out, a local company registered this mark a few years earlier. During the negotiations, the Kazakh company offered to obtain a trademark license on highly unfavorable conditions for our client.

After refusing further negotiations, the local company attempted to block the supply of Russian products, and the client faced the threat of a complete loss of the Kazakhstan market.

In the court process that we handled in cooperation with the local patent attorney of Kazakhstan, we managed to implement the planned strategy and cancel the disputed trademark altogether.

Result

As a result, our client was able to resume deliveries of his products to retail chains in Kazakhstan and get rid of obstacles to registering his trademark in this country according to our newly filed application.

Strategy

Practice

Effective rebuff to a brand squatter in Kazakhstan

Food manufacturer (Russia)

Client