Risk of Cancellation for Trademarks in Kyrgyzstan

We would like to inform you that recently a number of trademarks has been cancelled in Kyrgyzstan, because they had not been used for a continuous period of three years after registration. We have analyzed the respective legislation of the Kyrgyz Republic and found the following possibilities to reduce the risk of a cancellation of our clients' trademarks: 1. Filing a new trademark application every three years. In this case it is possible that several registrations of the same trademark, for the same goods/services, and in the name of the same person, are simultaneously valid in Kyrgyzstan. However, the most recent registration will not be vulnerable to cancellation because of non-use. 2. Importing small consignments (samples etc.) of goods marked with the trademark to Kyrgyzstan once every two to three years. We plan to offer our regular clients the service of placing such small consignments on the Kyrgyz market. A portion of these goods will be bought by ourselves, which will constitute incontrovertible evidence of use of the mark. It is also advisable to advertise for the goods on television and other mass media. A further advantage of such measures is that they also yield information on the Kyrgyz market, the demand and distribution possibilities, and find possible business partners. A disadvantage is that this is only possible for small inexpensive goods. This method is based on Art. 1109, Section 2 of the Civil Code, which establishes that "use of a trademark is any act of putting it into circulation in a way established by the Law". There are no special requirements with regard to volume, magnitude, or intensity of use. 3. Granting a license to the use of the trademark to a licensee, who may be a local subsiduary, partner, or any private businessman. It is advisable to state in the license agreement that it is valid on the whole territory of the Kyrgyz Republic, during the whole term of validity of the mark, and that the validity of the agreement will be extended automatically when the term of validity of the mark is extended. This possibility is based on Art. 1110 Section 2 of the Civil Code which states that "granting a license for the use of a trademark is considered as use of the trademark". The Law does not contain an compulsory requirement that the licensee must use the trademark. Proposal No.1 is the best way to protect a trademark from cancellation because of non-use, however it is rather expensive. Proposal No.3 is also a good method for protecting a trademark from cancellation, and less expensive. However, the fact that the Kyrgyz Law lacks the requirement that at least one licensee must use the trademark is an obvious error. Thus, it is possible that this error will be corrected, which will make this method less reliable. However, this will not happen anytime soon. Method No.2 appears to be the best one, as it can really protect a trademark from cancellation and also may provide useful business information. However, a disadvantage of this method is that if the mark is registered for a variety of goods, the goods, which are not imported to Kyrgyzstan, will not be sufficiently protected.

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