A competitor has copied your logo. Or come up with a name that sounds almost like yours. Or sells products in packaging so similar that customers mix them up.
This is not just “bad form” — it infringes your exclusive right. And you can, and should, seek redress for it.
Below is a step-by-step guide: how to record the infringement, what to put in a cease-and-desist letter and what you can realistically achieve in court.
- 10 years — term of a trademark registration, after which it is renewed
- 3 types of liability for unauthorised use of someone else’s mark: administrative, civil and criminal
- 10–30 days — the usual deadline given to the infringer in a cease-and-desist letter
The 30-second summary
A trademark can only be protected if it is registered with KAZPATENT: an unregistered mark is not protected by law as a trademark. If it is registered, you record the infringement, send a pre-trial claim and, if the infringer refuses, go to court. Infringers face administrative and civil liability, and criminal liability if the damage is substantial.
This article reflects the position and experience of KORGAN and is not legal advice on your specific case.
Step 1. Make sure your mark is registered
This is the starting point. Without registration with KAZPATENT — the National Institute of Intellectual Property of the Ministry of Justice of the Republic of Kazakhstan — you have no exclusive right and therefore no legal tools to protect it. The owner’s rights are set out in the Law of the Republic of Kazakhstan “On Trademarks, Service Marks, Geographical Indications and Appellations of Origin”.
Registration is checked in the state trademark register. The register also shows whether protection is still in force: a registration is valid for 10 years and must be renewed on time.
If your mark is not registered, register it first and protect it second. Without registration, a claim has no legal footing.
Step 2. Record the infringement
Evidence is the foundation of any case. The court accepts only what is documented.
What to record:
- screenshots of the infringer’s website with the date and page address — ideally certified by a notary or a web page capture service;
- photos of the product, packaging and signage, tied to a place and date;
- a receipt or invoice for buying the counterfeit product — direct proof of sale;
- screenshots from social media and marketplaces (Kaspi, OLX and others) with dates;
- witness statements, if the infringement is public.
The earlier the infringement is recorded, the better. Infringers often remove traces once they receive a claim.
Step 3. Identify the type of infringement
It determines your strategy and what you demand from the infringer.
| Type of infringement | Examples |
|---|---|
| Identical designation | A competitor uses exactly the same name or logo |
| Confusing similarity | Similar sound, similar look, similar meaning |
| Use for similar goods and services | The designation is used for goods or services of the same kind as in your registration under the Nice Classification |
| Counterfeit products | Goods bearing your mark are sold without your permission |
| Unauthorised use in advertising | Your mark in SEO copy, search ads, leaflets |
Step 4. Send a cease-and-desist letter
A pre-trial claim often settles the matter without court: many infringers stop using the mark as soon as they receive a formal letter.
A strong claim contains:
- Details of the parties.
- A description of your mark with a reference to the registration certificate: number, date, Nice classes.
- A specific description of the infringement with evidence.
- The legal basis — the provisions of the Trademark Law and, where relevant, Article 158 of the Code of Administrative Offences of Kazakhstan.
- Demands: stop using the mark, compensate the damages, destroy the counterfeit goods.
- A deadline for a response — usually 10–30 calendar days.
- A warning that a lawsuit will follow if the claim is ignored.
The claim is sent by registered mail with acknowledgement of receipt, which records the date it was received.
Step 5. Negotiation or court
After the claim, there are three possible scenarios.
The infringer agrees — stops using the mark and compensates the damages. The agreement is documented in a settlement between the parties. It is quick and avoids court.
Negotiation — the infringer disputes the amount but is open to dialogue, and the parties reach a compromise. We often achieve results at this stage.
Court — the infringer ignores the claim or refuses to pay. Disputes between businesses are usually heard by the specialised inter-district economic court.
What the infringer faces
In Kazakhstan, unauthorised use of someone else’s trademark carries three types of liability.
Administrative — Article 158 of the Code of Administrative Offences
A fine and confiscation of goods bearing the unlawfully used mark. This is the most common outcome for one-off and minor infringements.
Civil — the Trademark Law
Through the court, the owner may demand:
- a ban on further use of the mark;
- seizure and destruction of counterfeit products;
- compensation for damages — actual losses and lost profits.
Criminal — Article 222 of the Criminal Code
Applies when unauthorised use of someone else’s mark has caused substantial damage. Penalties are higher if the offence was committed by a criminal group.
From KORGAN’s practice
A manufacturer registered a trademark for its products. Some time later, a competitor appeared on the market with a confusingly similar designation: similar sound, similar look, the same Nice classes.
We carried out a comparative analysis on three criteria — phonetic, visual and semantic. Confusing similarity was confirmed on all of them, and the court held the competitor liable under Article 158 of the Code of Administrative Offences. A pre-trial claim for compensation followed, and the parties entered into negotiations.
The case shows that a registered trademark is not a piece of paper in a drawer but a real tool for protecting your business.
Common mistakes in protecting a trademark
1. Waiting for the problem to go away. The longer the infringer uses the mark, the harder it is to prove damage and obtain compensation. Meanwhile, they are building recognition at your expense.
2. Not recording evidence. Verbal accounts and undated screenshots are not evidence. Document everything straight away.
3. Writing a claim without a legal basis. “You are infringing our rights” without reference to specific provisions is a complaint, not a claim. The infringer will ignore it.
4. Confusing a domain name with a trademark. A domain is not a trademark. Even if you registered the domain first, it gives you no exclusive right to the designation.
5. Trying to protect an unregistered mark. Without registration with KAZPATENT, there are practically no legal tools for protection. The exception is when unfair competition can be proven.
If the examiner has refused to register your mark, see our guide on what to do after a trademark registration refusal.
When to call a lawyer
On your own, you can record the infringement, draft a basic claim and check the mark in the register.
You need a lawyer when:
- the infringer ignores the claim or refuses to pay;
- the infringement is large-scale — counterfeit goods in large volumes;
- the infringer has filed a lawsuit against you;
- you need real compensation, not a token amount;
- the situation is complex: several infringers, or a foreign rights holder or infringer.
Contact KORGAN
KORGAN is a law firm operating since 2014. We register trademarks and protect them — from the pre-trial claim to the court decision. Learn more about our trademark registration services.
If your mark is being copied, don’t wait. Every day of delay strengthens the infringer’s position.
The first consultation is free.
Phone and WhatsApp: +7 700 500 05 53
Or message us on WhatsApp — all contacts are on our contacts page.
Frequently asked questions
Can an unregistered trademark be protected?
It is extremely difficult. Without registration with KAZPATENT there is no exclusive right. You can try to act under the rules against unfair competition, but it is slow, costly and the outcome is uncertain. Registration is the only reliable protection.
How much does it cost to file a trademark infringement lawsuit?
The state fee depends on the amount claimed, plus the cost of legal support. At the first consultation we assess the prospects of the case and quote the cost of our work.
What if the infringer is in another city?
A lawsuit is usually filed at the defendant’s location. We work across Kazakhstan.
How quickly does the court hear such cases?
It depends on the complexity of the case, expert examinations and the infringer’s position. If the infringer drags out the process or files counterclaims, it takes longer.
Can I pursue an administrative fine and compensation for damages at the same time?
Yes. They are parallel tools with different purposes: the fine punishes the infringer, while compensation covers your losses.
The infringer removed the content after the claim — can I still recover damages?
Yes, if you recorded the infringement before it was removed. That is why the first step is gathering evidence, not sending the claim.