This is an informal case summary prepared for the purposes of facilitating exchange during the 2026 WIPO IP Judges Forum.
Session 6: Comparative, Referential and Expressive Use of Trademarks
Supreme Court of the Republic of Kazakhstan [2017]: Mobile Telecom-Service LLP and the Referential Use of Kcell and Active Marks, Case No. 6001-17-00-6C/191
Date of judgment: October 12, 2017
Issuing authority: Supreme Court of the Republic of Kazakhstan
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Administrative)
Subject matter: Trademarks, Competition
Plaintiff/Appellant: Committee on Regulation of Natural Monopolies, Protection of Competition and Consumer Rights, Ministry of National Economy
Defendant/Respondent: Mobile Telecom-Service LLP
Keywords: Referential use; Use of a third party’s trademark; Unfair competition; Advertising; Consumer confusion
Basic Facts: Mobile Telecom-Service LLP operated in Kazakhstan under the Tele2 brand. In 2015, the company launched two promotional campaigns entitled “Bonus for Incoming Calls from Kcell and Activ and Free Phones.”
Under the first campaign, Tele2 subscribers received five bonuses for every minute of incoming calls from “Kcell” and “Activ” subscribers. Each bonus was equivalent to one Kazakhstani tenge and could be used to pay for Tele2 mobile services. Under the second campaign, the accumulated bonuses could also be used to purchase mobile phones, smartphones, tablets, modems and routers from Tele2.
The competition authority (Committee on Regulation of Natural Monopolies, Protection of Competition and Consumer Rights of the Ministry of National Economy) concluded that Tele2 had used the “Kcell” and “Activ” trademarks without the consent of their owner. It considered that the use constituted unfair competition and the unauthorized use of another company’s means of individualization. The authority therefore initiated administrative-offence proceedings against Mobile Telecom-Service LLP.
The Specialized Interdistrict Administrative Court of Almaty found Tele2 liable for repeated unfair competition and imposed an administrative fine.
The appellate court upheld the judgment.
The case was subsequently submitted to the Supreme Court for review on grounds that included the possible absence of the constituent elements of an administrative offence and the need to ensure uniform judicial practice.
Held: The Supreme Court examined whether the use of the words “Kcell” and “Activ” in Tele2’s advertising campaigns constituted unlawful use of another party’s trademarks and unfair competition.
The Court referred to Kazakhstan’s trademark and competition legislation, as well as Article 10bis of the Paris Convention for the Protection of Industrial Property.
The Supreme Court emphasized that, for such conduct to constitute unfair competition, the use of another party’s designation must be capable of misleading consumers, particularly as to the commercial origin or characteristics of the relevant goods or services.
The Court found no such circumstances in Tele2’s conduct.
Tele2 did not use the names “Kcell” and “Activ” in a manner suggesting that its services originated from, were provided by, or were otherwise commercially connected with those operators. Instead, the names were used to identify the operators whose subscribers’ incoming calls qualified Tele2 customers for promotional bonuses.
The Court also took into account Tele2’s argument that it would have been difficult to identify the relevant operators in another way without losing the meaning of the promotional campaign.
In addition, the Supreme Court noted that Tele2 had used the verbal designations “Kcell” and “Activ”, rather than reproducing the registered trademarks in their graphic form.
Relevant holdings in relation to comparative, referential and expressive use of trademarks: The Supreme Court distinguished between using another party’s trademark to designate the commercial origin of the user’s own goods or services and using the mark to identify the trademark owner or its services.
The use of the “Kcell” and “Activ” designations was informational and referential. The names identified the competing networks whose subscribers’ calls qualified Tele2 customers for bonuses. They were not used to suggest that Tele2’s services originated from, were provided by or were commercially connected with “Kcell” or “Activ”.
The Court considered whether the use could mislead consumers regarding commercial origin, affiliation or the characteristics of the services. It also considered the practical necessity of referring to the operators by name and the manner in which the designations appeared in the advertising.
The judgment demonstrates that the appearance of a competitor’s name in advertising does not, by itself, establish unlawful trademark use or unfair competition. The purpose, context, necessity and likely effect of the use on consumers must be examined.
Relevant legislation: Law No. 456 of July 26, 1999, on Trademarks, Service Marks and Appellations of Origin (KZ163), Paris Convention for the Protection of Industrial Property (TRT/PARIS/001).