REGULATION OF TRADEMARKS IN UZBEKISTAN
In the 21th century, trademarks, one of the rapidlydeveloping branches of intellectual property, are recognized as the mostvaluable asset of any business on world wide arena contributing to its goodwilland building up customer loyalty. Such tendency has also closely been observedin the market of Uzbekistan, where trademarks are acquiring the role ofsignificant company property. Developments in business and commerce during thelast decades have increased the value of trademarks in national market, as wellas have generated foreign investments in the area.
Considering the actuality of thetopic, the growing interests of foreign entities in investing to trademarks inUzbekistan as well as in the light of meeting demands of local businesses tolearn about the legal peculiarities of trademark use and regulation, thepresent article has been prepared and is presented for the view of our dearreaders.
Overview of trademarks
What designations are considered as trademarksaccording to Uzbek legislation? Is any mark can be valid for the definition oftrademark? What types of trademarks are available?
Thearticle 3 of the Law ‘On Trademarks’ statesthat a trademark is a designation,registered in accordance with the established procedure, which serves todifferentiate goods and services of particular physical and legal persons fromidentical goods of other entities.Uzbek legislation clearly states that the designation should be registeredin an established manner in order to acquire legal force per se. Indeed, thepractice shows that in Uzbekistan, unlike in many other countries, it is highlyunlikely to get the protection or management over trademarks without their dueregistration at the Agency of Intellectual Property of Uzbekistan, the mainbody responsible over regulation and control of trademarks and patents.
It should be emphasized that not allmarks can be assigned to trademarks. As a rule, trademarks should meet twobasic and essential criteria to have valid force in law. Primarily, trademarksshould be of a distinctive nature,more specifically the mark should be fancy name or graphical design. Secondly,the trademark should be of novelcharacter, meaning, it should differ from other trademarks by its new andunusual origin.
InUzbekistan, trademarks are divided into several types, as verbal, graphical,combined, three-dimensional, numerical and etc. In practice, most oftentrademarks are registered in the form of verbal and graphical images, or as thecombination of both elements.
Registration oftrademarks
What are the mainimplications of registering a trademark in Uzbekistan? Are there anypreliminary procedures to be conducted before filing for registration? What isthe filing procedure? How registration procedure works in Uzbekistan?
Registration of rights on a trademark ina legal order is mostly recognized as an obligatory procedure the right holdershould take to gain exclusive rights on their trademark and their legalenforceability. The essence of trademark rights encompasses two basic privilegesas:
the exclusive right to use; and
to prevent third parties from using the trademark.
Basically, the requirements that a signshould fulfill in order to pass registration is practically the same throughoutthe world. As a rule trademark, coming from its definition, primarily isrequired to be of distinguishing character, and secondly not to be contrary topublic order. These two criteria are specifically mentioned in Paris Convention on Protection of IndustrialProperty, article 6 thatwas signed by Uzbekistan.
Priorcommencement of registration procedure, it is highly recommended to filedocuments for conducting search. The search is conducted on trademarks that arealready registered or are applied for registration both on national andinternational arena for the country requested. The search helps to indentifythe risks and possible potential disputes that may arise in relation toregistering particular marks. In Uzbekistan, one can file for search at the Agencyof Intellectual Property by submitting the following documents as:
The applicationwith the list of trademarks for search
The executedcopies of agreements on conduct of search
The documentconfirming the payment of the fee for the service
After the completion of search, thedocuments, in particular, theapplications, the mark samples and the document confirming the payment of statefee for filing, should be submitted for registration. At this point it should be mentioned that inUzbekistan, both physical and legal entities can file documents forregistration, but the requirement is that they should be carrying out entrepreneurialactivity as imposed by the article 4 ofthe law ‘On Trademarks’.Residents of Uzbekistan are free to submit documents on their own, whereas,foreign entities, individuals living or residing outside of Uzbekistan cancarry out their registration proceedings only through officially certified patent attorneys.
Thetime for the registration is divided in two stages. (see the diagram 1 below)At the initial stage, which lasts around 2 months, the Agency on IntellectualProperty carries out the formal examination, where the application forms andthe documents are examined to their accuracy, completeness and conformity. Incase of need the Agency may contact the applicant and request for the lackinginformation. In case of positive decision, the application passes to the secondstage, lasting around 6 months. During this period, called substantialexamination, the mark itself is inspected, where the following issuesare closely examined:
whether the trademark meets thecriteria of distinctiveness and non deceptiveness;
whether itis the same or similar to already registered trademarks to the extent ofconfusion, that can mislead consumers aboutthe origin of the good;
whether it can be registered astrademark as in accordance with the Paris Convention to which Uzbekistan is aparty, certain signs as state flags, emblems, arms or marks similar to hemcannot be registered as trademark;
whether, the given trademarkcontradicts to the rules of morality and public order
If the mark does not satisfy the above criteria, the mark can be refusedin registration. Provided the markmeets the requirements of registrability and protectability, the Agency on Intellectual Property makes adecision on registration of the mark and grants exclusive rights on the rightholder. Afterwards, the certificate is provided with the priority from the dateof submitting documents, as well as the trademark is published in the officialmagazine of the Agency. The rights become enforceable from the date ofits official publication in the magazine of Agency and are enforceable for theterm of 10 years. There are no time limitations on the validity of trademarks,provided the owner prolongs his rights everyten years, paying state fee for renewal. However, it is noteworthy that according to Uzbeklegislation the owner is deprived of their right fortrademark if it is not used in trade for the consequent period of three years followingthe date of grant of the registration.
Inpractice, the decision of the Agency on refusal of registration can be upheldby provision of relevant arguments, in which case the process on registrationis renewed.
The regulation on registration oftrademarks in Uzbekistan is quite a complicated procedure, requiring the deepand practical knowledge of the area, hence it is highly recommended to contactpatent attorneys or IP law firms to complete the given procedure successfully.
Trademark Management
What are the commercial benefits of trademarkownership? In what ways the owner can make use of their trademark? Howassignment procedure is completed?
As it was noted above, theregistration of the rights in established order grants the owner with the rightof disposal of trademark as well as excludes third parties from using thetrademark without due authorization. The disposal of the trademark means thatthe owner can designate the goods undertheir production by the trademark, using it on labels, packaging, boxes andetc. Apart from that the right holder can exercise their right of use in advertisement campaigns, businesspapers, company blanks and etc.
The ownership in trademark can also beassigned to third parties. Assigning, transferring the rights on trademarks forthe exchange of certain payment is the common form of change of ownership.Trademark assignment should be completed in written and recorded accordingly bythe Agency on Intellectual Property, which requires the conclusion of the Assignment Agreement, payment of the state feefor the registration of the agreement at the Patent Office and filing of anapplication with the request to complete the registration procedure.
Trademark licensing is another way ofmaking use of trademarks. Considering the trademark as a valuable property ofthe enterprise its use can be partially transferred to third parties for a verygood return. Important to note that licensingsafeguards the ownership of the initial trademark holder, hence they shouldmaintain close control over the use of their trademarks after the licensing tokeep the quality of the goods at a required level. Trademark licensinginvolves the conclusion of license agreement of exclusive or non-exclusivenature. Under the terms of the license agreement, the owner ofthe trademark (licensor) grants the third party (licensee) the right to use thetrademark for the specified term as specifiedthe by agreement. In this case, the licensor preserves the title and undertakesthe responsibilities of the owner, whereas the duties of the licensee are limitedto the conditions of the agreement. Parties are free to agree on theconditions, in particular, such terms as transfer of rights, validity of theagreement, payment, are solely decided by the parties. The Licensor is free totransfer his exclusive rights on trademarks, granting the licensee with theright to conclude sub agreements on further transfer of the right, andnon-exclusive rights, grants the licensee with the limited rights ontrademarks, 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 theform of royalties (certain percentage from the made sales), lump-sum (fixedpayment even prior to sale) and combined payment. It should be noted that the license agreement must prescribe that thequality of the goods produced by the licensee shall not be lower the quality ofthe goods manufactured the by licensor, as well as that, the licenserundertakes to carry out constant control over the performance of the presentcondition with the aim of consumer protection. Different forms andconditions are imposed on the license agreement, in Uzbekistan, the licenseagreement should be made in writing and registered by the Agency onIntellectual Property.
Protection and Enforcement of Trademark Rights.
What are the common methods of trademark protection inUzbekistan? What bodies and state agencies are responsible for settling thedisputes on trademark infringement?
Trademark infringements damage consumerinterests, as well as negatively impact on the reputation of the genuineproducer. Considering that the trademark protection is of interest both toentrepreneurs and public at large, necessary measures should be taken toprovide an efficient protection mechanism.
The registration of the rights ontrademarks is the most sufficient mechanism for the recognition of the rightsin legal order and the right to sue as well as claim for damages in the case ofinfringement. After the successful registration exclusive rights are bestowedupon the trademark owner, most importantly allowing the prevention ofunauthorized use of the mark on products that are identical or have closeresemblance to the prior mark.
In case the trademark owner becomesaware of the fact of infringement of their trademark rights, they can pursuethe remedies for the incurred damage both intrial and pretrial orders.
In a pretrial order, the owner can makea formal address to the allegedinfringer with the letter informing about the infringement act and callingfor the peaceful settlement of the dispute. In case of failure to reach anagreement the further steps can be taken.
In the case the dispute on trademarksand the infringements claimed coincide with the antitrust claims, meaning the claimed trademarks infringement leadsto the unfair trade practices and has a possibility of damaging a healthy competition in the market, the party can applyto agencies regulating competition matters inUzbekistan, in particular to regional and city antimonopoly committees, bybringing the claim on the breach of the fair competition. The antimonopoly committeeundertakes to monitor and sustain the fair competitive environment in themarket by imposition of fines, issuance of regulations, prohibition ofadvertising and etc. Unlawful use of trademark without the relevantauthorization of the right holder, copying the registered brands of the company,using the marks similar to the extent of confusion with the registeredtrademark, using the false or misleading advertisement campaigns can be some ofthe examples of unfair trade.
The legal basis for the protectionagainst unfair competition may be found at the international level as well. Article 10bis of the Paris Convention for the Protection of IndustrialProperty provides an express provision on unfair competition,imposing an obligation to ensure effective protection and appropriate legalremedies. The same article of the Paris Convention defines unfair competitionas ‘any act of competition contrary tohonest practices in industrial or commercial matters’ andfurther discusses the three cases of examples that would account to unfaircompetition as creation of confusion, discrediting and misleading, the list isnot exhaustive.
One of the main advantages of disputeresolution under the regulations of Antimonopoly Committee in Uzbekistan isthat the dispute can be resolved within considerably short period. After theapplications are accepted for the consideration, the subject of the claim andthe documents in line with the provided evidences are examined. In case ofcompleteness of the documents submitted and the relevancy of the claim, theCommittee calls for a session and in the presence of all parties, the chairmanmakes a final and conclusive decision. Usually it can take several months butin case of successful action the decision can be made even during one month.
Without resort to court, the cases involvingthe trademark issues can be settled through the direct involvement of the Agencyon Intellectual Property of Uzbekistan. The State Agency is responsible forconsidering the issues on invalidity ofthe trademark, termination of the certificate on trademarks, recognition oftrademarks as commonly known, validity of international registration oftrademarks on the territory of Uzbekistan and etc. The claim is submittedto the Appeal Board under the present Agency which is responsible for handlingthe cases. In practice, the decision can be made during 6 months, provided thedocuments are complete and the subject matter of the claim falls under theauthority of the Appeal Board.
The Customs Authority in Uzbekistancan also serve as an effective mechanism for avoiding the potentialinfringements on trademarks; especially it is a good mean to prevent the importand export of goods illegally designated by marks. In this regard, it is highlyadvisable to obtain protection from the Customs Authority as they control andimpose prohibition on customs clearance and importation of the goods into the country by individuals who arenot granted with the rights for trademark. After obtaining the positivedecision of the court on the prohibition of the import of certain goods, theCustoms authority should be informed about the legal recognition on rights oftrademark owner that is confirmed by court's decision, as well a request shouldbe made not to carry out clearance of goods on behalf of third parties, in caseof absence of written permission and authorizations from the true right holder.In practice, though thereare only general provisions on customs authorities’ actions during clearance.
Settlement of the case in the judicialorder can be seen as the last resort in Uzbekistan. The action is initiated atthe Economic Court of Uzbekistan. Although, the court proceedings can last aslong as several years depending on the complexity of the matter, resolving thematter in judicial order is regarded as the most effective mean as only thecourt can impose strict penalties on theinfringer as making a decision on the prohibition on use of trademarks, onremoval of goods or services from unlawful marking, recovery of remedies,banning the import of goods designated by illegal marks through and making suchorder to the Customs authority and etc. Remedies for the infringement areregulated by the Code of Uzbekistan on administrative responsibility and theCivil Code thatprovide provision on imposition of fines, seizure and confiscation of offensiveproducts, injunction and etc.
Written by
IP specialist of “LEGALMAX” LAWFIRM
Nargiza Turgunova