Likelihood of Confusion in Kazakhstan Under Article 7(1): Similar Marks and Similar Goods

Relative grounds under Article 7 are often the decisive issue once a mark survives absolute-ground review. In Kazakhstan, NIIP examines not only exact identity with earlier marks, but also whether the applied-for sign is confusingly similar to earlier trademarks, well-known marks, or earlier-filed applications for the same or related goods and services. For businesses, the practical challenge is that similarity is evaluated holistically and can arise from visual, phonetic, or conceptual overlap, especially where the dominant element of a combined mark coincides with an earlier right. Careful clearance and specification planning are therefore essential before filing.

The Legal Framework: Article 7(1) and Related Definitions

• Article 7(1)(1): bars signs identical or confusingly similar to earlier trademarks or service marks with earlier priority for the same or similar goods or services.
• Article 7(1)(2): bars signs identical or similar to trademarks recognized as well known in Kazakhstan, including in broader circumstances than ordinary identical goods cases.
• Article 7(1)(3): bars signs identical or confusingly similar to an earlier-filed application by another person for the same or similar goods or services.
• Article 7(1)(5): bars appropriation of protected appellations of origin by non-entitled parties.
• Article 1 definition of confusingly similar marks: the guide notes that confusingly similar marks are those differing in individual elements but perceived by consumers as identical.
• Article 1 definition of goods or services of the same kind: the guide notes that the concept focuses on goods or services of the same type such that consumers may believe they come from the same source.
• Article 11: NIIP conducts substantive examination under Article 7.
• Article 13: provides the procedural framework for preliminary opinions, responses, and final decisions.

The Likelihood of Confusion Test

Kazakhstan does not set out a long multi-factor statutory test in the style of some common-law jurisdictions, but the examination approach is functionally familiar: NIIP asks whether the average relevant consumer would be likely to confuse the applied-for mark with an earlier sign or assume a commercial connection between them.

The assessment is global. It does not depend on one mechanical factor alone. NIIP typically weighs:

• similarity of the signs — visual, phonetic, and conceptual;
• similarity of the goods or services — identical, related, complementary, or commercially proximate;
• dominant and distinctive elements within each sign;
• the perception of the relevant public in Kazakhstan, including reading and pronunciation in Kazakh and Russian.

Identity is the easiest case: identical sign plus identical goods usually means refusal. More difficult are cases involving partial overlap, transliteration differences, spelling variants, or combined marks where one shared element dominates.

Importantly, differences do not automatically avoid conflict if they affect only minor features. A consumer may still perceive two signs as the same or as variants of the same brand where they share the same dominant verbal core or highly similar visual concept.

What NIIP Considers in Sign and Goods Comparison

Visual similarity

Visual comparison looks at the overall appearance of the signs: length, structure, common prefixes or suffixes, letter sequence, script, and layout. Minor spelling changes may not help if the signs still look substantially alike. This is particularly true for short marks, where even a single shared syllable can carry significant weight.

For combined marks, NIIP considers the visual prominence of each element. If the shared element is large, central, and memorable, differences in secondary design features may not be enough.

Phonetic similarity

Phonetic comparison is highly important in Kazakhstan because consumers may encounter marks orally and because Latin-script marks are often pronounced through Kazakh or Russian phonetic habits. Transliteration matters. Two signs that differ in spelling but sound the same or nearly the same in local usage can conflict.

Applicants should therefore test pronunciation in both Kazakh and Russian. An English mark and a Cyrillic mark may still be confusingly similar if the local pronunciation converges. Likewise, alternative transliterations of the same underlying word are risky.

Conceptual similarity

Conceptual comparison asks whether the signs convey the same idea or meaning. This can matter where one sign is in English and the other in Russian or Kazakh but both point to the same concept. Conceptual similarity alone may not always be decisive, but it can reinforce visual or phonetic proximity.

Similarity of goods and services

Article 7 does not limit conflict to formally identical Nice class entries. NIIP considers whether the goods or services are of the same kind, meaning that consumers could think they come from the same source. Identical goods create the highest risk, but complementary or commercially related goods may also be treated as similar. Typical factors include:

• nature and purpose of the goods or services;
• distribution channels;
• target consumers;
• whether the goods compete or complement each other;
• trade practice in the relevant sector.

Thus, a conflict may arise across class boundaries if the market relation is close enough. Conversely, identical wording may coexist in exceptional cases where the goods are genuinely remote and consumers would not expect a common origin.

Dominant element comparison in combined marks

Combined marks are often decided by their dominant element. If both signs share the same dominant word element, NIIP may find confusion even where logos differ significantly. If the device dominates in both marks and the word elements are weak or secondary, visual design may carry more weight. The guide makes clear that Kazakhstan examination practice places strong emphasis on dominance, semantic weight, placement, and prominence.

This is particularly significant where a sign includes descriptive or non-distinctive matter. Shared descriptive elements usually carry less weight. Shared distinctive elements carry more. For example, if two marks both contain the descriptive word for the goods, that alone should not drive confusion. But if they share the same invented stem or distinctive house mark, the risk increases materially.

Well-known marks and pending applications

Article 7(1)(2) expands protection for well-known marks, and Article 7(1)(3) allows earlier-filed pending applications to block later filings. This means clearance should not be limited to the register of fully granted national marks. Businesses should also consider international registrations designating Kazakhstan, pending applications, and marks that may have well-known status.

Key Case Law

No leading cases have been published in the guide providing a developed judicial test for likelihood of confusion in Kazakhstan. The guide instead describes the statutory framework and office practice, including examples involving near-equivalent spellings and word-plus-logo comparisons. Accordingly, applicants should expect NIIP and the Appeals Board to rely principally on Article 7 and examination practice rather than a large body of published precedent.

The Procedure for Responding to a Relative-Ground Refusal

Step 1: Identify the earlier right. Determine whether NIIP cited an earlier registration, a pending application, a well-known mark, or another protected designation.

Step 2: Compare the goods and services realistically. Look beyond the Nice class number and assess whether the cited goods are actually similar in market terms. Limiting the specification may resolve the issue.

Step 3: Analyze sign similarity by channel. Address visual, phonetic, and conceptual differences separately. Applicants often improve their chances by showing how the marks differ in the way Kazakhstan consumers would encounter them.

Step 4: Challenge the dominance analysis where justified. If NIIP focuses on a shared element that is descriptive or weak, explain why it should carry less weight and why other distinctive elements dominate overall impression.

Step 5: Consider consent or coexistence strategy. The guide notes that consent from the owner of the earlier mark can be relevant in practice. Where commercially feasible, a consent arrangement may be more efficient than extended argument.

Step 6: Narrow the specification. Partial refusal can often be managed by deleting overlapping goods or services.

Step 7: Respond within three months. The standard prosecution deadline applies to NIIP preliminary expert opinions.

Step 8: Appeal if necessary. If NIIP maintains the refusal, the Appeals Board remains available.

Where a later-filing applicant faces a strong earlier mark for closely related goods, businesses should consider whether rebranding or a revised filing offers a better commercial outcome than a low-probability appeal. Relative-ground disputes are often less about legal theory and more about realistic market overlap.

Strategic Recommendations

• Recommendation: Conduct clearance searches covering national registrations, pending applications, international registrations designating Kazakhstan, and well-known mark risks before filing.
• Recommendation: Test marks for visual, phonetic, and conceptual proximity in both Kazakh and Russian, especially for Latin-script brands intended for local-language use.
• Recommendation: For combined marks, ensure the dominant element is unique. Shared descriptive matter will not help distinguish the sign if a distinctive stem overlaps with an earlier right.
• Recommendation: Draft goods and services narrowly and commercially accurately to reduce unnecessary overlap with earlier marks.
• Recommendation: Where conflict is limited, consider deleting problem items rather than defending the full specification at all costs.
• Recommendation: Explore consent or coexistence only after assessing whether the earlier mark owner has a realistic enforcement position in Kazakhstan.

Common Mistakes

• Mistake: Assuming different logos avoid conflict where the same dominant word is present. In Kazakhstan, the verbal element often remains decisive.
• Mistake: Focusing only on exact spelling. Phonetic equivalence and transliteration can be enough for refusal.
• Mistake: Treating Nice classes as determinative. Goods in different classes may still be similar if consumers expect a common source.
• Mistake: Ignoring pending applications and well-known marks during clearance.
• Mistake: Arguing minor differences while leaving the specification overbroad and commercially overlapping.

Key takeaway: Under Article 7(1), Kazakhstan evaluates likelihood of confusion holistically, with strong emphasis on the dominant element of the sign and real-world similarity of goods. A mark that is visually, phonetically, or conceptually close to an earlier right for related goods faces substantial refusal risk even if the applicant has added design features or small spelling changes.