Timur Berekmoinov

Timur Berekmoinov is a Counsel, Head of Intellectual Property team of GRATA International. He focuses on trademarks, patents, copyrights, commercialisation of IP, pre-trial protection of IP rights, protection of IP at the Border, IP litigation.

Mr. Berekmoinov is a registered patent and trademark attorney in Kazakhstan. He has extensive experience in assisting with the registration of trademarks of national and foreign companies; analysing licencing agreements, assignment contracts and franchise agreements for the transfer of trademark rights; industrial property preparing and filing applications for registration of inventions, utility models, industrial designs; patent researches; preparation of warning letters from foreign and domestic companies to violators of their IP rights; representation of international corporations in courts of various levels and state agencies.

Practices:

• Trademarks
• Patents
• Copyrights
• Commercialisation of IP
• Pre-trial protection of IP rights
• Protection of IP at the Border
• IP Litigation

Trademarks

• Registration of trademarks of national and foreign banks, education institutions and major producers of tea and coffee products, as well as other trade brands in various countries worldwide;
• Advising a domestic producer of aromatic and phyto oils on the refusal to register a trademark due to confusing similarity to the trademarks of a third party;
• Successful appeal against a refusal to register the international trademark of the railway operator with the Patent Office of the Republic of Kazakhstan;
• The international registration of trademarks for Kazakhstan bank, national chain of clothing stores, local mobile operator, and Iranian paints manufacturer.

Patents

• Advising one of the largest energy corporations on compliance with the patent laws of the Republic of Kazakhstan when dealing with fuel containers;
• Advising the client on filing a convention application for the grant of a patent for an invention to Kazakh Patent Office in accordance with the Paris Convention for the Protection of Industrial Property;
• Appealing a claim for the unlawful use of a Eurasian patent by a national producer of locking and sealing devices.

Copyright

• Advising a foreign company on the possible infringement of copyrights through using images (human faces) from the Shutter Stock website for television advertising;
• Preparation of the legal opinion for an international manufacturer of musical equipment and other household and audiovisual devices on the legality of requirement to pay remuneration for the free reproduction of phonograms and audiovisual works for personal purposes.

Commercialisation of IP

• Analysing licencing and franchise agreements for the transfer of trademark rights of a global car components manufacturer, a cosmetic products and brand clothes manufacturer, and major manufacturer of household products;
• Franchising consultations, drafting, compilation, analysis and registration of franchising agreements for a world-famous hotel chain;
• Advising on full-range legal support in the registration of the licencing agreement and franchising agreement for the trademarks with the competent authority of the Republic of Kazakhstan for the company that provides online message boards;
• Registration and maintenance of assignment contracts for a major Kazakh telecommunications operator;
• Development and support of the agreement for the transfer of the full scope of exclusive property and other rights on an online resource (online store) of one of the leading e-commerce companies in Kazakhstan.

IP Due Diligence

• Conducting due diligence of intellectual property and information technology for foreign banks, construction companies, telecommunications holding, international engineering company, international investment company, the world’s leading manufacturer of food products and household chemicals, and international construction company.

Pre-Trail Protection of IP Rights

• Successful pre-trial protection of the exclusive rights of a large manufacturer of chocolate and other confectioneries to the trademarks through sending claim letters to the infringers;
• Participation in the pre-trial recording of violations of the rights to a trademark of a well-known manufacturer of clothing and accessories for men and women as a part of evidence provision by a notary.

Protection of IP at the Border

• Drafting applications to the customs authorities of the Republic of Kazakhstan to initiate verification of the legality of the sale of counterfeit confectionery products offered for sale by unidentified persons in the territory of the Republic of Kazakhstan within the framework of post-clearance control and further communication with law enforcement agencies;
• Preparation of memorandums on trademark protection rights at the customs border for a leading beauty products manufacturer.

IP Litigation and Disputes

• Successful representation of international cosmetic manufacturers in the protection of IP rights through detection and making infringers liable;
• Successful protection of trademarks of a large foreign FMCG company in the administrative court with further seizure and destruction of infringing goods;
• Successful protection of the representative office of the world-largest brewer in Kazakhstan in an administrative court with respect to the violation of exclusive rights to the appellation of origin;
• Successful protection of the representative office of the world-famous brand of luxury jewellery in Kazakhstan in the court on the ‘grey/parallel import’ case;
• Successful protection of the representative office of a foreign confectionery manufacturer in various disputes including the protection of trademark rights, ‘grey/parallel import’ disputes, and further destruction of the infringing goods;
• Successful protection of foreign pharmaceutical company in court under the case for violation of the trademark exclusive rights and recovery of compensation.