IP and TMT in Kazakhstan

Bolotov & Partners LLP

IP boutique Bolotov & Partners LLP has been a major force in Kazakhstan and other central Asian countries since 1994. Reflective of its first-rate reputation, the firm now counts multinational behemoths such as Philip Morris and Coca-Cola as key clients. Managing director Yuri Bolotov QC leads the team, which includes recently-promoted partners Saule Kulzhambekova , Zhanat Nurmagambetov and Dmitriy Bolotov. It is equally strong undertaking advisory work and dispute resolution; areas of expertise include trade marks, patents, inventions, utility models and industrial designs, as well as copyrights. Nurmagambetov is representing Toyota Motor Europe as the rights owner in court proceedings arising from the discovery and confiscation of a large batch of counterfeit goods in Kazakhstan.

Practice head(s):

Yuri Bolotov

Other key lawyers:

Saule Kulzhambekova; Zhanat Nurmagambetov; Dmitriy Bolotov

Testimonials

‘Zhanat Nurmanagbetov is our key person, who is personally involved in all our requests, whether big or small. Very capable, client-oriented and highly professional.’

Key clients

Toyota Motor Europe

Philip Morris Kazakhstan LLP

The Coca-Cola Company

Louis Vuitton

Hermes

Work highlights

  • Represented Toyota Motor Europe NV/SA in a case where a large batch of counterfeit goods was revealed and confiscated on the territory of Kazakhstan. It is one of the largest cases by the volume of confiscated counterfeit goods in practice of our company.
  • Represented pharmaceutical manufacturer and proved that client’s patent meets all patentability requirements. The case passed the first instance and the appeal instance. The claim was denied to the opponent in full.

Dentons

Dentons has a strong track record handling trade mark and patent filings and prosecutions, as well as data protection cases and IP claims related to unfair competition. With the team in Almaty being embedded in the global network of offices, it is sought out for advice on IP protection in Kazakhstan and further afield in the region. Practice head Victoria Simonova and senior associate Aliya Seitova advise Red Bull on the protection of IP rights in Kazakhstan and other CIS countries, including Tajikistan, Armenia and Georgia. Ozkan Gurden Bingol Partnership and AAEngineering Group LLP are among other key clients.

Practice head(s):

Victoria Simonova

Other key lawyers:

Aliya Seitova

Testimonials

‘Aliya Seitova is very reliable and always answers promptly, satisfactorily and accurately.’

Key clients

Ozkan Gurden Bingol Partnership

AAEngineering Group LLP

RFGA MANAGEMENT PTY LTD

Red Bull GmbH

Work highlights

  • Advised Red Bull GmbH in connection with protection (including cancellation actions vs infringing marks) and enforcement of IP rights in Kazakhstan and the CIS countries, including Tajikistan, Uzbekistan, Armenia, Georgia, Turkmenistan, Azerbaijan and Kyrgyzstan.
  • Advised the client on the various intellectual property matters related to the acquisition of the copyrights from the famous Kazakh music author. The work included analysis of the author’s IP rights, negotiations with the Authors’ Society and advising on the cross-border assignment of copyrights.
  • Advised AAEngineering Group LLP on the Kazakhstan law compliance matters of the client’s foreign law governed agreement on technical (constructions) know-how licensing for production of chemicals

Kinstellar LLP

Kinstellar LLP's work in the TMT space includes corporate and M&A mandates, transformational projects, IP, data protection, competition and employment matters. Adlet Yerkinbayev has a wealth of experience leading on major M&A and capital markets transactions in the telecoms sector in Kazakhstan. In addition to being active in the local market, Joel Benjamin has acted on telecoms matters in Uzbekistan and Kyrgyzstan. Managing associate Kuanysh Kanlybayev is also recommended.

Other key lawyers:

Joel Benjamin; Adlet Yerkinbayev; Kuanysh Kanlybayev

SIGNUM Law Firm

Under the joint leadership of Liza Zhumakhmetova, Abylkhair Nakipov and Gaukhar Kudaibergenova, SIGNUM Law Firm's team is prominent in some of the largest telecoms-related mandates in Central Asia. It is also noted for its IP work for high-profile clients, which has an emphasis on transactional IP matters and IP-driven deals. Zhumakhmetova and Kudaibergenov advise Finnish technology company Wolt on an ongoing basis in relation to the protection and enforcement of its IP rights in Kazakhstan.

Practice head(s):

Liza Zhumakjmetova; Abylkhair Nakipov; Gaukhar Kudaibergenova

Testimonials

‘Strong client focus, very responsive and high quality advice and standards.’

Key clients

Wolt

MoninRus

GRATA International

GRATA International‘s IP and TMT practices assist clients with informational searches, registering trademarks, licence agreements, preparation of letters to IP rights violators and identifying objects of intellectual property. Its key clients include the BBC Group, China Telecom and SpaceX. Almaty-based Timur Berekmoinov leads the IP practice, with Yerzhan Yessimkhanov heading up TMT matters.

Practice head(s):

Timur Berekmoinov; Yerzhan Yessimkhanov

Testimonials

‘An excellent team of professionals that can assist with a variety of IP legal issues.’

‘I would recommend Timur Berekmoinov to anyone who is looking for a great IP lawyer! He perfectly knows the Kazakhstani IP sector, works hard to master what the client is looking for, and is able to respond quickly and provide focused advice.’

‘The team is very professional and reactive. They ask the right questions in order to find the best solution for the client. I valued also a lot the transparency in pricing.’

‘I had a chance to work with Timur Berekmoinov. I valued a lot his quality to be available at any time, very responsive and efficient. Compared to the competitors he knows to organize the work in a way you get results very quickly. Very sociable, he also gave me some references regarding other legal matters within and outside his practice.’

‘The team are incredibly agile and adapted well to changing instructions and various ad hoc requests on Kazakh law including on matters of procedure and substantive contractual questions.’

‘We worked extensively with Yerzhan Yessimkhanov who not only provided excellent litigation advice but also acted as an effective gateway to the rest of the firm’s expertise, drawing together tax and TMT advice in the context of ongoing arbitration proceedings.’

‘The prices for the services and the quality of the services provided are satisfactory and flexible. We get the result on time and concrete – this is very important.’

Key clients

Astana International Exchange Ltd.

BBC Group Sp. z o. o.

Brights Consulting Inc.

Internet Resheniya LLC

Eurasian Media Group

ZTE

China Telecom

Kar-Tel (Beeline)

Moscow Credit Bank

Yandex

Belt & Road Capital Management

Accenture

Amdocs

SpaceX

Work highlights

  • Represented Eurasian Media Group in a claim that the client illegally uses counterfeit monitors to reproduce advertisements installed in the elevators of residential complexes of the city.
  • Advised Internet Resheniya LLC on the issue of dividing the domain of the ‘.kz’ segment, which violates the rights to the client’s trademark.
  • Advised BBC Group Sp. on preparing and sending a claim to a violator in Russia, demanding to immediately stop illegal use of the client’s trademark by: (1) placing the client’s trademark on toys; (2) supplies to the Kazakhstan market of toys on which the client’s trademarks are placed; (3) the use of a trademark in the media, including social networks; as well as (4) any other introduction into the civil circulation of goods with the client’s trademarks.

Sayat Zholshy & Partners

Sayat Zholshy & Partners acts for some of the largest national and international telecommunications companies operating in Kazakhstan. It is a member of the Scientific and Technical Council for Improvement of Kazakhstan Intellectual Property Law. The practice is led by Almaty-based partner Amir Begdesenov.

Practice head(s):

Amir Begdesenov

Key clients

Beeline Kazakhstan, part of VEON

S&T AG

KWADRON

theSAY Pharma

Cintana Education

Hilti Corporation

Work highlights

  • Assisted S&T Group (Austria) with obtaining merger control clearance of the acquisition of the Iskratel Group.
  • Advised Hilti Corporation (Liechtenstein) on localization of software licence agreements.
  • Assisted Beeline Kazakhstan with the drafting and filing of applications for the registration of trademarks.

Baker & McKenzie - CIS, Limited

Baker & McKenzie – CIS, Limited is an international firm which has had an IP practice since its establishment in Kazakhstan in 1994. This work involves trade mark, design and patent prosecution, litigation and advice; copyright law and transactional and contractual advice. Across the CIS, the firm acts for Amazon, Apple, Facebook, Google, TikTok and Microsoft, making it a leading adviser for IP issues relating to social media and major technology platforms. The team is led by Azamat Kuatbekov and Andrei Yorsh.

Practice head(s):

Azamat Kuatbekov; Andrei Yorsh

Testimonials

‘We have worked with Baker & McKenzie’s Kazakhstan office for a long time. During these years we have enjoyed the exceptional level of professionalism, dedication and utmost engagement of BM team. Together we managed to realize huge and complex projects on Kazakh telco market and some of those projects were the first of such kind and unique in terms of new approaches and business models.’

‘Andrei Yorsh is the main partner of BM Kazakhstan office supporting us for many years. Andrei constantly shows deep expertise in various areas of legal practice, flexibility, out-of-the-box thinking and extraordinary ideation within complex and ever-changing industrial projects. From the execution side, Andrei is a person whom you can definitely trust that, whatever the case, documents will be prepared to the highest quality.’

Key clients

British American Tobacco

L’Oréal

Marriott International

Kar-Tel

Destek Patent

Destek Patent provides services in the areas of trade marks, patents and designs. The firm’s knowledge and experience allow it to assist clients with research, interpretation and analysis. The practice is led by partners Malik Yarov and Malika Abdullayevat.

Practice head(s):

Malik Yarov; Malika Abdullayeva

Legalmax Law Firm

IP boutique Legalmax Law Firm is noted for its work for clients in sectors such as FMCG, pharmaceuticals, retail, textiles, IT, communications and media. Its work covers matters such as trade mark and patent applications, licensing, IP enforcement and litigation. The team is led by Almaty-based managing partner Muhammadali Makhmudov, who is supported by Madina Tursunova.

Practice head(s):

Muhammadali Makhmudov

Other key lawyers:

Madina Tursunova

Testimonials

‘I’ve worked with Legalmax on many IP cases in the CIS, in particular in the Central Asia region, during the last few years and I was constantly impressed by their responsiveness, good command of English, and quality of advice and services in general. The quality of their work is, in my opinion, superior to other firms in the region. It is very helpful that they cover multiple countries, which makes communication easier and allows for the same level of services across the region.’

‘It is a team of excellent attorneys who provide impressive results.’

Key clients

Hogan Lovells (CIS)

The Coca-Cola Company

Lego Juris A/S

CrossFit, Inc.

Wm. Wrigley Jr. Company

Ferrero S.p.A

Gowling WLG

Astellas Pharma Inc

KFC (Yum Brands)

Facebook Inc.

Apple Inc.

Brioni Spa

Ferring B.V.

Kerring Group

Work highlights

  • Advised Brioni Spa on investigation of operations of the fake Brioni store in Nur-Sultan and seizure of trademark infringement and parallel imports.
  • Advised Caterpillar Inc. on investigation of identification of ways of receipt of counterfeit products, test purchase and implementation of a set of measures aimed at stopping the activity of the offender.
  • Advised Lego Juris A/S on stopping the sale of counterfeit products in the largest retail chains, simultaneously in two jurisdictions – Kazakhstan and Kyrgyzstan.

Tukulov & Kassilgov Litigation LLP

Tukulov & Kassilgov Litigation LLP, which focuses on dispute resolution, was established in June 2020. The firm has been notably active in IP and IT litigation, notwithstanding its relatively recent entry in the market, with the team building upon experience gained at other Kazakh law firms. Recent highlights included acting for the patent holder for an automated taxi ordering system in an ongoing dispute with Russian multinational Yandex Taxi. Almaty-based partners Ravil Kassilgov and Nataliya Shapovalova jointly lead the practice.

Practice head(s):

Ravil Kassilgov; Nataliya Shapovalova

Testimonials

‘Our company asked for advice on issues that do not have legal practice in our country. We received a detailed, in-depth report with recommendations for working with legislation.’

‘This law firm has unique experience and knowledge in IP, commercial and data privacy sectors. They demonstrated excellent communication and responsiveness.’

‘They can find solution in very difficult situations.’

‘I worked directly with Natalia Shapovalova. I can note the exceptional customer focus, flexibility and open-mindedness.’

‘This is a very client-oriented team with a high level of expertise.’

Key clients

Samsung Electronics Central Eurasia LLP

Huawei Technologies Kazakhstan LLP

Oppo Kazakhstan LLP

Sulpak

Work highlights

  • Represented eight major suppliers of electronics, including, among others, Samsung, Huawei, Oppo, Vivo, and Sulpak (one of Kazakhstan’s three largest electronics suppliers) in a dispute with a company named Eurasian Rightsholders’ Union (ERU).
  • Represented Ms Nadejda Kim, a patent holder for the automated taxi ordering system, and G-Taxi LLP, a licensee of Ms Nadejda Kim, in the ongoing battle with a Russian multinational Yandex Taxi (YT).