Goods, works and services (hereinafter – the Goods) that are in demand in the market always find a buyer, as well as attract attention of individuals who would like to instantaneously and easily enrich themselves at the expense of efforts of the owner of well-known product. One dares to name his product similar to that of the «celebrity» product; another will not be afraid to make money by marketing the name belonging to another entity.
I suppose every entrepreneur strives to ensure that his goods become highly demanded, and I highly doubt that the entrepreneur would appreciate when his goods are counterfeited. In order to prevent emergence and spread of counterfeit products, it is recommended to protect the name (designation) of products by its registration as a «trademark».
Agency for Intellectual Property (hereinafter – the Agency) is the authorized state body of the Republic of Uzbekistan in the field of intellectual property, and registers trademarks and other means of individualization. Registration of trademarks is executed in accordance with the «Rules for Compilation, Submission and Consideration of Application for Registration of a Trademark and Service Mark» (registered by the Ministry of Justice of Uzbekistan on 29.07.2009, №1988), and is confirmed by the issuance of a trademark certificate for 10-year term.
As stipulated in article 20 of the Law of Uzbekistan «On Trademarks, Service Marks and Appellations of Origin of Goods» dated August 30, 2001, №267-II (hereinafter – the Law on Trademarks), «Trademark certificate certifies the fact of registration of claimed designation as a trademark, priority of the trademark and exclusive right of the trademark owner in relation to the goods specified in the certificate.» The law grants trademark owner the exclusive right to use and dispose the trademark.
The owner is entitled to use his trademark via:
a) its application on the goods for which the trademark is registered, and (or) on the package of such goods;
b) its application in advertising, printed publications, official forms, signboards, during demonstrations at exhibitions and fairs held in Uzbekistan;
c) its application via other means not prohibited by law.
Entities that have signed a license agreement with the trademark owner are also provided with preferential right to use the registered trademark.
A trademark registered in the Agency or registered internationally in accordance with the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, dated June 27, 1989, allows its owner to prevent counterfeiting and/or sale of goods produced by him. At the same time such international registration should cover Uzbekistan territory as well.
The legislation of Uzbekistan provides the owner of a registered trademark the right to apply to the following authorized bodies to fight against unauthorized use of the trademark by third parties:
1) Appeal Board of the Agency;
2) The State Committee on Competition of Uzbekistan (hereinafter – the Antimonopoly Committee);
3) Courts of Uzbekistan.
In practice, one may frequently encounter the following types of violations in the field of illegal use of a trademark:
1) Illegal use by one party of designations confusingly similar to a trademark of another party (e.g. production and/or sales of home appliances under the name «Samsunc» instead of «Samsung», or production and/or sale of pharmaceuticals under the name «Mezzen Forte» instead of «Mezim Forte», etc.);
2) Illegal use by one party of another party's trademark (i.e. the lawful owner) in production and sale of goods without receiving prior written consent of the trademark owner (e.g. production and sale in Uzbekistan of the world-known chocolate «Snickers» by a third party without consent of the «Snickers» trademark owner).
Before taking any actions against the infringer, it is recommended to find out in the Agency whether the confusingly similar designation, used by the infringer, is a registered trademark, and to which class of the International Classification of Goods and Services (ICGS) the opposed trademark belongs to, in case it is registered. This can be clarified by arranging a search in the database of registered trademarks of the Agency.
If the confusingly similar designation has not been registered as a trademark, the following measures can be taken with respect to the offender:
First: Filing a claim to the Antimonopoly Committee on the fact of unfair competition of the offender. It is necessary to consider that the state authority may take action only if the offender is a resident of Uzbekistan. With regard to non-residents, action can be taken only if they have presence in our country, for instance, in the form of a representative office or a subsidiary of a foreign company in Uzbekistan.
Article 13 of the Law of Uzbekistan «On Competition» dated January 06, 2012, № ZRU-319 (hereinafter - the Competition Law) prohibits unfair competition, which is reflected in sales of goods (works, services) with illegal use of results of intellectual activity, equated means of individualization of a legal entity and means of individualization of goods. As it is stipulated in the Law, unfair competition refers to «actions of a business entity or a group of persons, aimed at acquisition of advantages in economic activities which are contrary to legislation, usual business practices and cause or may cause damage to other business entities (competitors), or cause or may cause damage to their business reputation»
To establish the fact of designation’s similarity to your trademark, the Antimonopoly Committee shall request an official opinion of the Agency. Upon confirmation of similarity by the Agency on the basis of appropriate analysis of cited marks, the Antimonopoly Committee shall issue an order to the infringer to cease production and/or sales of counterfeit goods, as well as to withdraw the relevant products from circulation in the commodity markets, which shall be mandatory for the infringer.
Second: Filing a lawsuit to the court to ban import, production and/or sale of counterfeit goods in the territory of Uzbekistan. It is recommended to involve the Agency for the trial to get its official opinion regarding similarity of the infringer’s designation with your registered trademark.
In practice, there are numerous cases of illegal use of a trademark by foreign entities via production of counterfeit goods outside of Uzbekistan, and further importation and sale of such products in Uzbekistan. The Customs Code of Uzbekistan allows to ban importation into Uzbekistan of certain goods and vehicles in order to ensure property rights, including items of intellectual property. In this case, as noted above, the trademark owner may address the issue to the authorized Uzbek court and prohibit import of counterfeit goods into our country. The court's decision shall serve as the legal basis to establish a ban by Uzbek customs authorities on importation of counterfeit goods into Uzbekistan.
Moreover, the trademark owner is entitled to appeal to the Antimonopoly Committee for taking appropriate measures against unscrupulous local importers and sellers of counterfeit products, as described above.
If the designation similar to your trademark has been registered at the Agency as a trademark as well,the only way to protect your registered trademark is cancellation of the trademark certificate of the «counterfeit» products by filing a complaint to the Appeal Board of the Agency or to the court. Cancellation of the trademark certificate of a «counterfeit» product will allow you to establish a ban on its production, import and/or sale in the market of Uzbekistan.
Jamol Ryskiyev, Partner