When Fame Prevails Without Registration? Part II: The Economist v. The Ecolomist and the Protection of Unregistered Foreign Marks in Kazakhstan

Part I examined how The Economist Newspaper Limited was recognized as an “interested person” despite having no trademark protection in Kazakhstan. Part II considers two further issues raised by the case: the distinction between misleading character and confusing similarity, and the protection of reputation without formal recognition as a well-known trademark.

Misleading consumers or confusing similarity?

The Appeal Council concluded that The Ecolomist was capable of misleading consumers in relation to identical or similar goods and services. In reaching that conclusion, it considered not only the similarity between the two designations but also the reputation of The Economist. The magazine had been published continuously since 1843, distributed in more than 200 countries, and had approximately 1.2 million active subscribers and 58.6 million social media followers. It was also available and frequently cited in Kazakhstan by universities, libraries, news outlets and public authorities.

Against that background, the Appeal Council relied on the Trademark Examination Rules concerning imitations of well-known designations and found The Ecolomist confusingly similar to The Economist. It emphasized that the words differed only by the replacement of the letter “n” with “l” and that “Ecolomist” had no independent lexical meaning. In its view, consumers were therefore likely to associate the contested designation with The Economist.

This reasoning appears to derive the misleading character of The Ecolomist primarily from its confusing similarity to The Economist. Although closely related, misleading character and confusing similarity are separate grounds for refusal under the Trademark Law and ordinarily require independent assessment.

The Appeal Council reinforced its conclusion by referring to the worldwide reputation of The Economist, which, in its view, increased the likelihood that consumers would associate The Ecolomist with the well-known publication.

Reputation without well-known status

The reliance on reputation raises a more fundamental question. The Appeal Council expressly referred to Article 6bis of the Paris Convention and concluded that the international recognition and continued circulation of The Economist satisfied its requirements. It therefore treated The Ecolomist as an imitation of a well-known mark capable of causing confusion in relation to identical or similar goods and services.

In effect, the Appeal Council extended the protection afforded to well-known marks under Article 6bis to The Economist, even though the designation had not been formally recognized as a well-known trademark in Kazakhstan.

This approach is open to question. Article 6bis requires member states to protect well-known trademarks, but leaves the determination of whether a mark qualifies as well-known to the competent national authorities.

Kazakhstan has implemented this obligation through Article 18-1 of the Trademark Law, which establishes a specific administrative procedure for recognizing a trademark as well-known. A designation acquires that status only after completing this procedure.

The Economist, however, had never been recognized as a well-known trademark in Kazakhstan. The owner of The Ecolomist expressly raised this objection, but neither the Appeal Council nor the Administrative Court meaningfully addressed it. Instead, both authorities relied on the international reputation of The Economist but did not explain why the procedure under Article 18-1 was unnecessary.

As a result, the decisions effectively extended protection to an unregistered foreign designation without clarifying the relationship between such protection and the statutory procedure for recognizing well-known trademarks under the Trademark Law of Kazakhstan.

Final thoughts

The Economist dispute may mark an important development in Kazakh trademark law. Despite having neither a registered trademark nor formal well-known status in Kazakhstan, The Economist Newspaper Limited invalidated a national registration largely on the basis of its international reputation. Whether this strengthens consumer protection or stretches the territorial limits of trademark protection remains open to debate.

Additionally, the case may offer an opportunity to reconsider Kazakhstan’s overall approach to protecting well-known trademarks. Drawing on practices in other jurisdictions and the AIFC, right holders could be required to prove, through relevant evidence, that their marks are well-known directly before the courts or the Appeal Council, while Article 18-1 could set out the relevant assessment criteria.

Author’s Note: The contributor represented previously Qazpatent in these proceedings. The neutral views expressed here do not represent any party or institution involved.