Regulation of Trademarks in Uzbekistan

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In the 21th century, trademarks are recognized as the most valuable asset of any business on worldwide arena contributing to its goodwill and building up customer loyalty. Such tendency has also closely been observed in the market of Uzbekistan, where trademarks are acquiring the role of significant company property. Developments in business and commerce during the last decades have increased the value of trademarks in national market, as well as have generated foreign investments in the area.

1. Overview of Trademarks

What designations are considered as trademarks according to Uzbek legislation? Is any mark can be valid for the definition of trademark? What types of trademarks are available?

The article 3 of the Law ‘On Trademarks’ states that a trademark is a designation, registered in accordance with the established procedure, which serves to differentiate goods
and services of particular physical and legal persons from identical goods of other entities . Uzbek legislation clearly states that the designation should be registered in an established manner in order to acquire legal force per se. Indeed, the practice shows that in Uzbekistan, unlike in many other countries, it is highly unlikely to get the protection or management over trademarks without their due registration at the Agency of Intellectual Property of Uzbekistan, the main body responsible over regulation and control of trademarks and patents.

It should be emphasized that not all marks can be assigned to trademarks. As a rule, trademarks should meet two basic and essential criteria to have valid force in law. Primarily, trademarks should be of a distinctive nature, more specifically the mark should be fancy name or graphical design. Secondly, the trademark should be of novel character, meaning, it should differ from other trademarks by its new and unusual origin.

In Uzbekistan, trademarks are divided into several types, as verbal, graphical, combined, three-dimensional, numerical and etc. In practice, most often trademarks are registered in the form of verbal and graphical images, or as the combination of both elements.

2. Registration of Trademarks

What are the main implications of registering a trademark in Uzbekistan? Are there any preliminary procedures to be conducted before filing for registration? What is the filing procedure? How registration procedure works in Uzbekistan?

Registration of rights on a trademark in a legal order is mostly recognized as an obligatory procedure the right holder should take to gain exclusive rights on their trademark and their legal enforceability. The essence of trademark rights encompasses two basic privileges as:

• the exclusive right to use; and
• to prevent third parties from using the trademark.

Basically, the requirements that a sign should fulfill in order to pass registration is practically the same throughout the world. As a rule trademark, coming from its definition, primarily is required to be of distinguishing character, and secondly not to be contrary to public order. These two criteria are specifically mentioned in Paris Convention on Protection of Industrial Property, article 6 that was signed by Uzbekistan.

Prior commencement of registration procedure, it is highly recommended to file documents for conducting search. The search is conducted on trademarks that are already registered or are applied for registration both on national and international arena for the country requested. The search helps to identify the risks and possible potential disputes that may arise in relation to registering particular marks. In Uzbekistan, one can file for search at the Agency of Intellectual Property by submitting the following documents as:

1. The application with the list of trademarks for search;
2. The executed copies of agreements on conduct of search; and
3. The document confirming the payment of the fee for the service.

After the completion of search, the documents, in particular, the applications, the mark samples and the document confirming the payment of state fee for filing, should be submitted for registration. At this point it should be mentioned that in Uzbekistan, both physical and legal entities can file documents for registration, but the requirement is that they should be carrying out entrepreneurial activity as imposed by the article 4 of the law ‘On Trademarks’ . Residents of Uzbekistan are free to submit documents on their own, whereas, foreign entities, individuals living or residing outside of Uzbekistan can carry out their registration proceedings only through officially certified patent attorneys.

The time for the registration is divided in two stages. At the initial stage, which lasts around 2 months, the Agency on Intellectual Property carries out the formal examination, where the application forms and the documents are examined to their accuracy, completeness and conformity. In case of need the Agency may contact the applicant and request for the lacking information. In case of positive decision, the application passes to the second stage, lasting around 6 months. During this period, called substantial examination, the mark itself is inspected, where the following issues are closely examined:

• whether the trademark meets the criteria of distinctiveness and non deceptiveness;
• whether it is the same or similar to already registered trademarks to the extent of confusion, that can mislead consumers about the origin of the good;
• whether it can be registered as trademark as in accordance with the Paris Convention to which Uzbekistan is a party, certain signs as state flags, emblems, arms or marks similar to hem cannot be registered as trademark; and
• whether, the given trademark contradicts to the rules of morality and public order.

If the mark does not satisfy the above criteria, the mark can be refused in registration. Provided the mark meets the requirements of registrability and protectability, the Agency on Intellectual Property makes a decision on registration of the mark and grants exclusive rights on the right holder. Afterwards, the certificate is provided with the priority from the date of submitting documents, as well as the trademark is published in the official magazine of the Agency. The rights become enforceable from the date of its official publication in the magazine of Agency and are enforceable for the term of 10 years.

There are no time limitations on the validity of trademarks, provided the owner prolongs his rights every ten years, paying state fee for renewal. However, it is noteworthy that according to Uzbek legislation the owner is deprived of their right for trademark if it is not used in trade for the consequent period of five years following the date of grant of the registration.

In practice, the decision of the Agency on refusal of registration can be upheld by provision of relevant arguments, in which case the process on registration is renewed.

The regulation on registration of trademarks in Uzbekistan is quite a complicated procedure, requiring the deep and practical knowledge of the area, hence it is highly recommended to contact patent attorneys or IP law firms to complete the given procedure successfully.

3. Trademark Management

What are the commercial benefits of trademark ownership? In what ways the owner can make use of their trademark? How assignment procedure is completed?

As it was noted above, the registration of the rights in established order grants the owner with the right of disposal of trademark as well as excludes third parties from using the trademark without due authorization. The disposal of the trademark means that the owner can designate the goods under their production by the trademark, using it on labels, packaging, boxes and etc. Apart from that the right holder can exercise their right of use in advertisement campaigns, business papers, company blanks and etc.

The ownership in trademark can also be assigned to third parties. Assigning, transferring the rights on trademarks for the exchange of certain payment is the common form of change of ownership. Trademark assignment should be completed in written and recorded accordingly by the Agency on Intellectual Property, which requires the conclusion of the Assignment Agreement, payment of the state fee for the registration of the agreement at the Patent Office and filing of an application with the request to complete the registration procedure.

Trademark licensing is another way of making use of trademarks. Considering the trademark as a valuable property of the enterprise its use can be partially transferred to third parties for a very good return. Important to note that licensing safeguards the ownership of the initial trademark holder, hence they should maintain close control over the use of their trademarks after the licensing to keep the quality of the goods at a required level. Trademark licensing involves the conclusion of license agreement of exclusive or non-exclusive nature. Under the terms of the license agreement, the owner of the trademark (licensor) grants the third party (licensee) the right to use the trademark for the specified term as specified the by agreement. In this case, the licensor preserves the title and undertakes the responsibilities of the owner, whereas the duties of the licensee are limited to the conditions of the agreement. Parties are free to agree on the conditions, in particular, such terms as transfer of rights, validity of the agreement, payment, are solely decided by the parties. The Licensor is free to transfer his exclusive rights on trademarks, granting the licensee with the right to conclude sub agreements on further transfer of the right, and non-exclusive rights, grants the licensee with the limited rights on trademarks, i.e. on the basis of amount of produced goods, territory and etc. With regards to the payment, price of the license agreement can be made in the form of royalties (certain percentage from the made sales), lump-sum (fixed payment even prior to sale) and combined payment. It should be noted that the license agreement must prescribe that the quality of the goods produced by the licensee shall not be lower the quality of the goods manufactured the by licensor, as well as that, the licenser undertakes to carry out constant control over the performance of the present condition with the aim of consumer protection. Different forms and conditions are imposed on the license agreement, in Uzbekistan, the license agreement should be made in writing and registered by the Agency on Intellectual Property.

4. Protection and Enforcement of Trademark Rights

What are the common methods of trademark protection in Uzbekistan? What bodies and state agencies are responsible for settling the disputes on trademark infringement?
Trademark infringements damage consumer interests, as well as negatively impact on the reputation of the genuine producer. Considering that the trademark protection is of interest both to entrepreneurs and public at large, necessary measures should be taken to provide an efficient protection mechanism.

The registration of the rights on trademarks is the most sufficient mechanism for the recognition of the rights in legal order and the right to sue as well as claim for damages in the case of infringement. After the successful registration exclusive rights are bestowed upon the trademark owner, most importantly allowing the prevention of unauthorized use of the mark on products that are identical or have close resemblance to the prior mark.

In case the trademark owner becomes aware of the fact of infringement of their trademark rights, they can pursue the remedies for the incurred damage both in trial and pretrial orders.

In a pretrial order, the owner can make a formal address to the alleged infringer with the letter informing about the infringement act and calling for the peaceful settlement of the dispute. In case of failure to reach an agreement the further steps can be taken.

In the case the dispute on trademarks and the infringements claimed coincide with the antitrust claims, meaning the claimed trademarks infringement leads to the unfair trade practices and has a possibility of damaging a healthy competition in the market, the party can apply to agencies regulating competition matters in Uzbekistan, in particular to regional and city anti-monopoly committees, by bringing the claim on the breach of the fair competition. The anti-monopoly committee undertakes to monitor and sustain the fair competitive environment in the market by imposition of fines, issuance of regulations, prohibition of advertising and etc. Unlawful use of trademark without the relevant authorization of the right holder, copying the registered brands of the company, using the marks similar to the extent of confusion with the registered trademark, using the false or misleading advertisement campaigns can be some of the examples of unfair trade.

The legal basis for the protection against unfair competition may be found at the international level as well. Article 10bis of the Paris Convention for the Protection of Industrial Property provides an express provision on unfair competition, imposing an obligation to ensure effective protection and appropriate legal remedies. The same article of the Paris Convention defines unfair competition as ‘any act of competition contrary to honest practices in industrial or commercial matters’ and further discusses the three cases of examples that would account to unfair competition as creation of confusion, discrediting and misleading, the list is not exhaustive.

One of the main advantages of dispute resolution under the regulations of Anti-monopoly Committee in Uzbekistan is that the dispute can be resolved within considerably short period. After the applications are accepted for the consideration, the subject of the claim and the documents in line with the provided evidences are examined. In case of completeness of the documents submitted and the relevancy of the claim, the Committee calls for a session and in the presence of all parties, the chairman makes a final and conclusive decision. Usually it can take several months but in case of successful action the decision can be made even during one month.

Without resort to court, the cases involving the trademark issues can be settled through the direct involvement of the Agency on Intellectual Property of Uzbekistan. The State Agency is responsible for considering the issues on invalidity of the trademark, termination of the certificate on trademarks, recognition of trademarks as commonly known, validity of international registration of trademarks on the territory of Uzbekistan and etc. The claim is submitted to the Appeal Board under the present Agency which is responsible for handling the cases. In practice, the decision can be made during 6 months, provided the documents are complete and the subject matter of the claim falls under the authority of the Appeal Board.

The Customs Authority in Uzbekistan can also serve as an effective mechanism for avoiding the potential infringements on trademarks; especially it is a good mean to prevent the import and export of goods illegally designated by marks. In this regard, it is highly advisable to obtain protection from the Customs Authority as they control and impose prohibition on customs clearance and importation of the goods into the country by individuals who are not granted with the rights for trademark. After obtaining the positive decision of the court on the prohibition of the import of certain goods, the Customs authority should be informed about the legal recognition on rights of trademark owner that is confirmed by court's decision, as well a request should be made not to carry out clearance of goods on behalf of third parties, in case of absence of written permission and authorizations from the true right holder. In practice, though there are only general provisions on customs authorities’ actions during clearance.

Settlement of the case in the judicial order can be seen as the last resort in Uzbekistan. The action is initiated at the Economic Court of Uzbekistan. Although, the court proceedings can last as long as several years depending on the complexity of the matter, resolving the matter in judicial order is regarded as the most effective mean as only the court can impose strict penalties on the infringer as making a decision on the prohibition on use of trademarks, on removal of goods or services from unlawful marking, recovery of remedies, banning the import of goods designated by illegal marks through and making such order to the Customs authority and etc. Remedies for the infringement are regulated by the Code of Uzbekistan on administrative responsibility and the Civil Code that provide provision on imposition of fines, seizure and confiscation of offensive products, injunction and etc.

ABOUT THE AUTHOR: Nargiza Turgunova
Intellectual Property Lawyer at Legalmax Law Firm

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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