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Trademarks in Uzbekistan

Step by step guide

17.07.2013 LEGALMAX LAW FIRM , www.legalmax.uz
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Law and trademark office

Trademark Office: Agency on Intellectual Property of the Republic of Uzbekistan

Internet Site: http://www.ima.uz / http://www.patent.uz

Mailing Address and Phone: 59 Mustaqillik avenue, Tashkent, 100000, Republic of Uzbekistan

8 (998 71) 232-00-13 / 8 (998 71) 232-50-13; info@ima.uz

The Agency on Intellectual Property of the Republic of Uzbekistan provides uniform policy in the field of intellectual property rights. It was established by the Regulation of the Cabinet of Ministers of the Republic of Uzbekistan 166, dated June 8, 2011, and is overseen by the Cabinet of Ministers of the Republic of Uzbekistan.

The main tasks of the Agency are:

  1. ensuring the implementation of a unified State policy in the field of legal protection of intellectual property rights, providing legal protection to inventions, industrial designs, utility models, trademarks, and other intellectual property, protecting rights of true holders of intellectual;
  2. examining and registering intellectual property;
  3. providing substantial assistance to entities engaged in the production of innovative technologies and inventions, scientific and technological and industrial development, selection achievements, artistic designs, and other types of creative works;
  4. forming the State Fund of patent documentation and the database of officially registered intellectual property, and providing rules for their use;
  5. closely supervising compliance with the requirements of the legislation protecting intellectual property, and participating along with authorized State bodies in taking measures to prevent the illegal importation, sale and distribution of counterfeit goods in the territory of Uzbekistan;
  6. developing international cooperation in the field of protection of intellectual property; and
  7. conducting training in the field of intellectual property for government authorities and businesses.

The head of the Agency, the Director General, is appointed by and serves at the discretion of the President of the Republic of Uzbekistan.

Key Distinctions:

- Official fees are different for residents of Uzbekistan versus foreign applicants.[1]

- The database of registered trademarks cannot be searched online.[2]

- Trade names well-known in Uzbekistan may not be registered if the trade name owner established rights before the filing of any application for trademark registration by another party.[3]

- The registration of defensive marks is permitted.[4]

- There is no formal opposition procedure.[5]

- License agreements may only be executed for registered marks.[6]

- There is no criminal liability for infringement.[7]

Law:

The main laws on trademarks in the Republic of Uzbekistan are:[8]

- Law of the Republic of Uzbekistan On Trademarks, Service Marks, and Appellations of Origin of August 20, 2001, No. 267-II, (as amended on December 26, 2011);

- Law of the Republic of Uzbekistan On Trade Names, (approved by the Senate on August 25, 2006);

- Law of the Republic of Uzbekistan On Competition, (approved by the Senate on December 5, 2011);

- Law of the Republic of Uzbekistan On Guarantees of Freedom of Entrepreneurship of May 25, 2000, (as amended on May 3, 2012);

- Criminal Code of the Republic of Uzbekistan of April 1, 1995, (as amended on September 12, 2012);

- Code of the Republic of Uzbekistan of Administrative Responsibility of April 1, 1995, (as amended on September 12, 2012);

- Customs Code of the Republic of Uzbekistan of March 1, 1998, (as amended on September 18, 2010).

Recent Developments and Transitional Provisions:

On January 7, 2012, the Law of the Republic of Uzbekistan On Competition became effective in its amended form. The Laws provisions include Article 13. Under this article, a finding of unfair competition involving the sale of goods through the unlawful use of intellectual property may serve as a ground for revocation of a certificate of trademark registration by the national Patent Office or by a court.

Conventions

Uzbekistan is a party to the following international treaties and conventions:

- Convention Establishing the World Intellectual Property Organization (signed at Stockholm on July 14, 1967, as amended on September 28, 1979), effective December 25, 1991.

- Paris Convention for the Protection of Industrial Property (as amended on November 2, 1979), effective December 25, 1991.

- Trademark Law Treaty (TLT) (adopted at Geneva on October 27, 1994), effective September 4, 1998.

- Madrid Agreement concerning the International Registration of Marks of April 14, 1891 (as amended on July 14, 1976), effective January 1, 2008.

- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of June 27, 1989, effective December 27, 2006.

- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957 (as amended on September 28, 1978), effective January 12, 2002.

Definitions

Trademark: a duly registered designation intended to distinguish goods of one legal entity or individual from similar goods of other legal entities and individuals.[9]

Service Mark: a duly registered designation intended to distinguish services rendered by one legal entity or individual from similar services rendered by other legal entities and individuals.[10]

Individual Trademark: a trademark that belongs to a certain legal entity or individual.

Collective Mark: a trademark that belongs to a collective of legal entities and/or individuals and which is intended for designating the goods manufactured and/or sold by these legal entities and/or individuals, where such goods have common qualitative or other common characteristics.[11]

Appellation of Origin: the name of the country, locality, or other geographic area that is used to designate goods whose special qualities are determined exclusively or essentially by the geographical environment in which they are produced or by other factors or by a combination of the geographical environment and those factors.

Well-Known Trademark: a trademark that enjoys protection in the territory of the Republic of Uzbekistan based on its registration therein; a trademark that enjoys protection in the territory of the Republic of Uzbekistan without registration according to the international agreements of the Republic of Uzbekistan; as well as a designation that is used as a trademark but does not have legal protection in the territory of the Republic of Uzbekistan, if, as a result of its intensive use, such a trademark or designation became well-known in the Republic of Uzbekistan among certain consumers for goods of that particular legal entity and/or individual by the date indicated in the application.[12]

Patent Attorney: a person who has the right to represent interests of legal entities and individuals before the national Patent Office. Foreign legal entities and foreign citizens may carry out any activity related to trademark registration and exercise other legal proceedings only through patent attorneys of the Republic of Uzbekistan.[13]

Who may apply

A trademark may be registered in the name of a legal entity or an individual entrepreneur.

Uzbekistan trademark laws are based on a principle of territoriality, according to which the first party to file an application for registration with the national Patent Office has priority.

What can be registered

The designations that may be registered as trademarks include the following: visual, verbal, and 3D (three-dimensional) designations, and a combination thereof in any color or combination of colors.[14]

Verbal designations consist of words, a combination of letters that have a verbal or significance as written wording, (in particular, a combination of vowels and consonants forming syllables in any order), phrases, sentences, and their combinations.

Visual designations include images of living beings, objects, natural and other objects, track lines, spots, and any figures in a plane, (that is, except those in 3D form). Three-dimensional or 3D designations refer to 3D objects, figures, and combinations of lines and figures in a spatial arrangement. Combined designations consist of a combination of elements of different types, including visual, verbal, 3D, etc. Other designations include sound, light, holographic, odor, and others.[15]

Not registrable; protection for well-known marks

The following designations may not be registered as trademarks:[16]

  1. designations representing images of state emblems, flags, and state awards;
  2. official state names, abbreviated or full names of international and intergovernmental organizations;
  3. official control, guarantee and hallmarks, stamps;
  4. images of distinctions and differences symbols in public service used in the Republic of Uzbekistan;
  5. designations that have no distinctive features;[17]
  6. designations that are generally used for designating goods of a certain type;
  7. designations that are generally accepted symbols and terms;
  8. designations that are used for characterizing goods, including types, quality, quantity, features, purpose, value, as well as place and time of their production and sale;
  9. false designations or those that mislead consumers as to the nature of the goods and its manufacturer;
  10. designations that falsely indicate the place from which goods originate, (even though the actual origin may also be indicated);
  11. designations that represent or contain geographic names to identify mineral water, wines or spirits and if the goods do not originate from the named place, even where the names are used in translation or in combination with words such as kind, type, in style, and the like;
  12. designations that are against the public interest, or principles of humanity and morality;
  13. designations that are identical or similar to the point of confusion with:

- trademarks already registered or which are the subject of an application for registration in the Republic of Uzbekistan in the name of another person, as well as those that enjoy protection without their registration pursuant to international agreements of the Republic of Uzbekistan, or which have priority over applications for similar goods;

- well-known trademarks of other persons(but these may be registered with the consent of the owner);

- appellations of origin that are protected under the Law On Trademarks, Service Marks, and Appellations of Origin, except when they are included as an unprotected element in a trademark registered by a person with the right to the appellation of origin for the goods (but these may be registered with the consent of the owner);

- certification marks[18]that have been registered;

  1. designations that reproduce:

- trade names (or a part thereof) which are well-known in the Republic of Uzbekistan, owned by another person who obtained the right to these names before the application for trademark registration was filed for similar goods;

- industrial designs belonging to another party in the Republic of Uzbekistan;

- names that are well-known in the Republic of Uzbekistan as works of science, literature, and art, characters or quotations there from, works of art or their parts without consent of the copyright owner or his/her successors (i.e., heirs);

- last names, given names, aliases, and their derivatives, portraits and facsimiles of famous people without the consent of such people, their heirs, or a government authority, if those marks are considered a part of the history and culture of the Republic of Uzbekistan.

The designations specified in 1)-4) may be included in a trademark as unprotected elements with the consent of a relevant government authority or their owner.

The designations specified in 5)-8) may be included in a trademark as unprotected elements if they are not a dominant feature of the mark. They may also be included as protected elements of a mark if the applicant can prove to the Patent Office that such designations have obtained distinctiveness as a result of their use.

Well-Known / Famous Marks:

Well-known trademarks include trademarks already registered in Uzbekistan, trademarks that enjoy protection pursuant to international treaties, and trademarks that are not registered in the Republic of Uzbekistan but, due to their intensive use another country, they have become widely known not only in the country in which they were extensively used, but also among consumers of the relevant goods or services in Uzbekistan.

A well-known trademark enjoys protection similar to that of a registered trademark. However unlike the protection afforded to registered marks, protection for well-known marks applies indefinitely.

The Appeals Board of the Agency on Intellectual Property of the Republic of Uzbekistan determines whether a mark qualifies for protection as a well-known trademark after an application for such status is submitted to it for consideration. The documents that must be enclosed with such an application must contain evidence showing that the trademark is well-known. Such documents may contain information on the following, for example:

  1. intensive use of the trademark in the territory of the Republic of Uzbekistan;
  2. areas where the goods marked with this trademark have been sold;
  3. the volume of sales of these goods;
  4. the method(s)by which the trademark has been used, including advertising and in the presentation of goods or services at fairs or exhibitions of products and/or services;
  5. average annual number of consumers of the goods or services;
  6. other countries where the trademark has become widely known;
  7. results of surveys of consumers of the goods or services conducted by a specialized independent organization, taking into consideration recommendations established by the national Patent Office.

Reports or expert opinions issued by product quality control bodies, trade organizations, consumer rights organizations and associations, declarations, quality certificates, and other documents may also be considered evidence of long, continuous, and intensive use of the trademark.

The application must also contain the date on which the trademark was first used and the date when the person who filed the application believes the mark became well-known in the territory of the Republic of Uzbekistan.

To date, there are no precedents regarding the recognition of a trademark as well-known in Uzbekistan.

Practice Note: The lack of uniform recommendations of the Patent Office and the lack of a standard methodology for conducting consumer surveys by independent organizations presents challenges to having a trademark recognized as well-known.

Classification

Goods and services are classified according to the rules of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957.Currently, the 10th edition of the International Classification of Goods and Services applies in Uzbekistan.

Applicants may indicate multiple classes in applications. However, all applications must include a precise and detailed description of the goods and services for which protection is sought. An applicant may divide an application into multiple separate applications and in that case the priority of each application will be determined based on the date when the initial application was filed.

Series marks; associated marks

Series Marks:

The law is silent as to the registration of series marks.

Associated Marks:

The law does is silent as to the registration of associated marks.Certification and collective marks; geographic indications

Certification Marks:

The domestic legislation mentions certification marks.[19] However, the lack of a definition for certification marks in the law and the lack of a procedure for their registration prevent mark owners from obtaining protection for certification marks in Uzbekistan.

Collective Marks:

Collective trademarks may be registered in the Republic of Uzbekistan. A collective mark is a trademark that belongs to a collection or association of legal entities and/or individuals and is intended to designate the related goods being manufactured and/or sold by these entities and/or individuals, where the goods have common qualitative or other common characteristics.

Along with the documents typically required for the registration of a trademark, [20]the filing of an application for the registration of a collective mark must also include an agreement between the participants of the organization or collection of legal entities and/or individuals regarding the use of the collective mark. Such an agreement must contain the following:

  1. the name of a person authorized to register the collective mark in its name;
  2. a list of the persons who have the right to use this mark, (with their full official names and addresses);
  3. the objective of the collective mark registration;
  4. a list and the uniform qualitative or other common characteristics of the goods that will be marked with the collective mark;
  5. the terms and conditions for the use of the collective mark;
  6. provisions regarding the supervision of the use of the collective mark; and
  7. provisions establishing liability or penalties for any violation of the agreement.

The agreement must be signed by persons who have the right to use the mark. For legal entities, a signature must also be accompanied by the companys seal. Signatures shall be interpreted by specifying last names and initials of the person who signs the agreement.

Geographic Indications:

An appellation of origin is the name of the country, locality, or other geographic area that is used to designate goods whose special qualities are determined exclusively or essentially by the geographical environment in which they are produced or by other factors or by a combination of the geographical environment and those factors. A designation that is to be registered as an appellation of origin may be the current name of a geographic area, a historical name of that area, or derivatives thereof. A designation that is to be registered as an appellation of origin may also contain an indication of the species (i.e., generic) designation for the goods.

An application for registration of an appellation of origin may be filed in the Uzbek or Russian languages and must contain the following:

  1. an application for registration and a request for the right to use the appellation of origin, or an application for the right to use an appellation of origin that has already been registered, along with the name(s) of the applicant(s), and his/her/their address(es);
  2. the designation for which the application is being filed;
  3. the type of goods for which the designation is to be used and for which the right to use the designation (and registration, if applicable), is requested;
  4. the place where the goods are produced, including the boundaries of the relevant geographic area or place;
  5. a description of the special characteristics of the goods.

The following items must be enclosed with the application:

  1. a document confirming payment of the state filing fee for the application;
  2. a statement issued by an authorized body that contains information confirming that the applicant resides in the indicated geographic area and the goods produced by the applicant, the special characteristics of which are determined by natural conditions and/or other factors which are common in this particular geographic area;
  3. a foreign applicant must also attach to the application, in place of the relevant designation, a document confirming the validity of the applicants right to the appellation of origin in the country of origin of the goods.

Defensive marks

The registration of defensive marks, that is, marks for which there is no use and for which there is no intent to use the mark in commerce, is not prohibited or required in Uzbekistan. In practice, however, many mark owners register defensive marks using the verbal elements of the mark in various transliterations, i.e. in Russian, Uzbek, and English, in an effort to more fully protect rights to their marks.[21]

Color, scent, sound and moving marks

Along with visual, verbal, and 3D designations, other types of designations or their combinations in any color or color combinations may be registered as trademarks. These include color, sound and scent marks, as specified in the Rules for Filling Out, Filing, and Reviewing Applications for Registration of the Trademark and the Service.[22]

To be registered, color, sound, scent, or other marks must be in a graphical form.

An application for a sound mark as a trademark must contain a description of the symbols (signals) used in the mark, their sequence, emission duration, and other relevant characteristics.

An application for registration of a sound mark requires a description of the sound(s) that compose(s) the sound mark as well as the musical notation or a frequency chart describing the sound(s).

An application for registration of a scent must contain the composition and formula of the chemical combination characterizing the scent.

An application for registration of a color mark must specify the color or color combination that comprise(s) the mark.

Filing requirements/documents required

Documents Required:

An application for the registration of a trademark, an appellation of origin, and the right to use the appellation of origin may be filed by a legal entity or an individual in the national Patent Office in hard copy, separately for each trademark or appellation of origin. An official application form is set forth in the Rules for Filling Out, Filing, and Reviewing Applications for Registration of the Trademark and the Service Mark.

Under these Rules, an application must include the following:

  1. an applicant address for correspondence, (including a postal code, addressees full name, and telephone number(s), fax, and e-mail, (if any));
  2. the name of the applicant and entity type, if applicable;
  3. evidence supporting any claimed dated of priority, if different from the date the application is filed, including any priority application number, its date and the Paris Convention country in which the application was filed;
  4. the name of the patent attorney, including his or her address and registration number;
  5. an image of the designation consisting of a photograph, a typographic print, or a graphic image on an 8x8 cm thick durable paper, (depending on the type of designation, the width of its photograph or print may be 8x16 cm) in 5 copies;
  6. if a word or verbal mark is not in Uzbek or Russian, a translation by substituting the Uzbek or Russian letters for the original letters and a translation into Uzbek or Russian, if the mark has meaning;
  7. a list of the goods or services for which the mark is to be registered;
  8. evidence of payment of the prescribed state fee;
  9. a power of attorney, if the applicant is a foreign citizen or a local applicant represented by an attorney.

Trademark Priority:

Trademark priority is determined by the date on which an application for trademark registration was filed with the Patent Office.

Trademark priority may alternatively be determined by the date on which a previous application for trademark registration was filed in a country that is a party to the Paris Convention for the Protection of Industrial Property, if the application was filed with the Patent Office within six months after the filing in the other Paris Convention country. Such a claim, if accepted, results in what is known as a Paris Convention priority right.

The priority applicable to the registration of a mark that has been displayed at official exhibits or officially-recognized international exhibitions held in the territory of any of the States that are a party to the Paris Convention for the Protection of Industrial Property is determined by the date of the open display of the mark at the exhibition. Such exhibition priority may be claimed if the application was filed with the Patent Office within six months after the specified date of the exhibition that included the mark.

Representation:

Foreign legal entities and foreign citizens may apply to the national Patent Office only through patent attorneys registered with the Patent Office. Applicants who are residents of Uzbekistan are entitled to apply to the national Patent Office independently, without the aid of an attorney.

A power of attorney for legal representation before the Patent Office issued in the Republic of Uzbekistan must be made in writing and does not require notarization. A power of attorney issued by foreign legal entities or foreign citizens must be signed by an authorized person and duly apostil led[23] or legalized at the Consular Office of Uzbekistan in the country where the power of attorney is issued or in the territory of Uzbekistan.[24]However, following the long-standing practice of the national Patent Office, all applications and related procedural documents may generally be signed by an authorized patent attorney based on written powers of attorney without apostil or legalization. Nevertheless, in the authors opinion, reliance on this exception is potentially risky and may result in the invalidation of the actions undertaken through the documents.

Review procedures

Applications for the registration of a trademark or appellation of origin, and for the right to use an appellation of origin are subject to examination carried out by experts at the Patent Office and consisting of a formal examination and an examination of the mark to be registered. During the examination of an application, the applicant has the right at its sole discretion to correct, clarify, or supplement the application with information that does not materially change the application. Also, the Patent Office may request from the applicant additional materials, without which the examination is not possible. The applicant has the right to examine the materials referred to in the examination findings.

Formal Examination:

The formal examination of an application is carried out within 30days after the application is filed with the Patent Office. During the formal examination, experts check the content of the application, its completeness, including all necessary documents, and the applicants compliance with the relevant requirements.

If the application and any materials filed with the application meet the prescribed requirements, or meet the requirements after the applicant submits any requested information and documents within the time provided by the Patent Office, the Office will notify the applicant of its decision that the application is accepted for further review and provide the date of receipt of the application. Conversely, if the application and/or supporting documents do not meet the relevant requirements, the Office will inform the applicant of the Offices refusal to accept the application for further review.

Examination of the Mark to Be Registered:

If the Patent Office completes an initial or formal review of the application contents and decides to accept the application for further review, within seven months thereafter the Office carries out an examination of the mark to be registered. During this examination of the mark, the Patent Office verifies if: (i) the mark in question satisfies the definition of a trademark or an appellation of origin, and (ii) that all elements of the mark may be registered.[25] The Patent Office then determines whether to grant registration or refuse registration and issue a notice to the applicant.

Disclaimers:

If the applicant cannot prove that certain elements of an applied-for mark have become distinctive due from use, such elements may be included in the trademark or the service mark as unprotected elements. These elements include:

  1. designations that are not distinctive;[26]
  2. designations that are generally used for designating goods of a certain type;
  3. designations that are generally accepted symbols and terms;
  4. designations that are used for characterizing goods, including types, quality, quantity, features, purpose, value, as well as place and time of their production and sale.

Time limits for proceeding with applications

Formal Examination:

The formal examination period, consisting of an initial review, [27]last 30 days from the date an application us filed with the national Patent Office. Upon applicants request, this period may be extended.

If during the formal examination the Office establishes that an application does not meet the formal requirements because documents are missing or information in the application is inaccurate, the Office will request that the applicant submit the missing documents or resubmit corrected information and/or documents within three months from the date the request is sent to the applicant. If the applicants response to the request does not contain all of the data and/or documents requested, the Office may send a second request to the applicant.

If the applicant does not respond to the Offices request within three months, or does not submit a complete response including the documents and/or information requested, and does not request an extension to this deadline, the Office issues a refusal to accept the application for review to the applicant.

Examination:

The Patent Office carries out an examination of the mark within seven months after an application for registration is filed. If the Office determines during this examination that legal requirements for registration have not been met, the Office may notify the applicant and request that the applicant submit or correct any missing or incorrect data and/or documents within three months from the date the request is sent to the applicant.

Upon applicants request, this period may be extended for no longer than six months. If the applicant does not submit the requested materials or request an extension of the deadline for their submission, the Office will consider the application withdrawn and the proceedings related to the application will be terminated. An applicant may request that the Patent Office restore the deadline no later than two months after the expiration of the initial deadline.

If the Office finds after examination that the application meets all legal requirements, and receives a document confirming the applicants payment of the required fee, the Patent Office registers the trademark, appellation of origin, and/or the right to use the appellation of origin on the Register.

Appeals

The applicant may appeal the results of a State examination to the Appeals Board of the Agency on Intellectual Property of the Republic of Uzbekistan within three months from the date when the decision was issued. The Appeals Board is a collegial body of the Agency on Intellectual Property of the Republic of Uzbekistan that is engaged in the pre-trial investigation of appeals regarding the legal protection of all objects of industrial property and the recognition of trademarks as well-known in the Republic of Uzbekistan. The Appeals Board consists of the Director General of the Patent Office, his or her deputies, the most qualified and experienced employees of the Patent Office, as well as independent scientists and experts in the field of intellectual property.

The applicant may appeal the decision of the Appeals Board to a court within six months from the date the decision of the Board is issued. Such appeals of decisions of the Appeals Board are heard by the Economical Courts of the Republic of Uzbekistan. As a general rule, this category of disputes may be filed where the defendant resides, in this case, where the Patent Office is located, in Tashkent. Hence, the proceeding will be in the Economical Court of Tashkent City.

In the abovementioned section, two types of appeals are described:

  1. Appeals to the decisions of State examination at the Appeals Board of the Patent Office;
  2. Appeals to the decisions of the Appeals Board itself at the Economical Court of Tashkent City; after the court rules on canceling the decision of the Appeals Board or on dismissing the case and leave the decision of the Appeals Board in force, the Appeals Board does not held any new meetings, but only notifies the plaintiff in writing of court decision execution.

Advertisement or publication

Upon payment of the State fee,[28]the Office publishes information concerning the registration of a trademark, appellation of origin, and/or the right to use an appellation of origin in the Official Bulletin of the Patent Office.

The Official Bulletin thus only contains information concerning registered trademarks, including the name of the right holder, the date the application was field and on which registration was granted, and the relevant classes under the ICGS, including the goods to which legal protection of the trademark extends.

Additional information, such as information concerning the representative of the right holder, contact address(es) and the telephone number of the right holder and his/her status, may be obtained only through an official search in the registered trademarks database upon payment of the official fees for the relevant services, which are provided by the Patent Office.[29]

One may download electronic versions of Official Bulletin issues dating back to 2004 (in pdf) on the official web site of the Patent Office.[30]However, there is, as yet, no way of thoroughly searching all records, some of which are not complete or fully published.

In addition to searching previously-registered trademarks, one may hire paid services provide by the Patent Office, including a preliminary search for designations that are already the subject of an application for registration that has not been fully examined by the Office.

Opposition

Existing legislation does not allow interested parties or right holders to object to the registration of marks or appellations of origin that are the subject of an application for registration by other parties.

However, in practice, there have been several cases where objections were successfully raised with the Agency on Intellectual Property by interested parties. In most cases, these objections have served as additional grounds for the Patent Office to request documentation or clarification from applicants, but have in some cases resulted in a refusal to register the trademark or appellations of origin at issue.

If the objection of an interested party is dismissed without reply by the Patent Office, the interested party may appeal the registration of the trademark or appellation of origin according to a procedure set forth in the law.[31]

Effects of registration

After a registration is published in the Official Bulletin of the Patent Office, the owner of the trademark has an exclusive right to use and dispose of the trademark during the registration period.[32]

The following acts are considered an infringement of an exclusive right to a trademark, service mark, or appellation of origin, through the introduction of the trademark into circulation/commerce by third parties: the manufacture, use, importation, offering for sale, sale, and storage of the trademark or goods marked with the trademark, or a designation which is so similar to the trademark that its use causes confusion, in relation to similar goods.

Duration and renewal of registrations

Legal protection for the trademark and the right to use the appellation of origin is valid during the duration of the registration of a trademark, (also known as the validity period of the certificate of registration), and the right to use the appellation of origin. Such registrations are valid for ten years from the date the application was filed.

The registration or validity period of a certificate of trademark registration, and the certificate of registration of the right to use an appellation of origin may be extended for ten-year periods at the owners request during the last year of its validity.

The following documents must be field with an application for renewal:

  1. a document confirming payment of the required fee;[33]
  2. a power of attorney issued by the applicant, if the application is to be filed through a patent attorney;
  3. if the registration of an appellation of origin is being renewed, a document confirming that a person who has the right to use the appellation of origin resides in that geographic area and produces goods that have the features specified in the certificate.

Time within which mark cannot be re-registered by another

Upon the expiration of a registration, another party may not register the trademark that was the subject of the registration within three years from the date the registration expires. This moratorium on re-registration also applies if the registrant or mark owner abandons the trademark registration before its expiration.

Use requirements

In Uzbekistan, applicants may register a trademark whether or not they have used the mark in commerce. Moreover, a trademark registration does not obligate the mark owner to use the mark in order to maintain the registration. However, a failure to use the mark for five consecutive years after the date of registration is grounds for any interested parties to request the Appeals Board or a court to terminate the registration.[34]

Use of a trademark includes use in advertising, printed publications, on official letterhead papers, signboards displayed at exhibitions and fairs held in the Republic of Uzbekistan, its use for marking goods and the use of the trademark on packages. Use by a person or party who has the right to use the mark pursuant to a license agreement executed by the owner of the trademark is also considered valid use.

The same rules governing use also apply to the use of appellations of origin. However, agreements that seek to alienate or assign an appellation of origin, or license the right to use it, are not permitted. Parties that have not been issued a registration certificate for an application are prohibited from using the registered appellation of origin.

Assignment and recordation of assignments

The exclusive right to a trademark, (which includes the right to own, use, and dispose of the trademark), may be transferred by its owner to another person through an assignment agreement. A mark owner may transfer his or her rights through an assignment provided that the transaction will not mislead or confuse consumers concerning the goods or their source.

An assignment agreement becomes effective upon its registration with the national Patent Office. For the Patent Office to register it, the following documents are required:

  1. an application for registration of the agreement;
  2. the assignment agreement[35] or an extract from it, notarized and in three copies.
  3. All pages of the agreement must be bound, numbered, and free of erasures, additions, crossed-out words, or any other corrections not mentioned in the agreement itself;
  4. a document confirming the right to inherit (if applicable to the agreement);
  5. a power of attorney duly issued in the name of the representative appointed;
  6. a document confirming payment of the recordation fee, or a document confirming the grounds on which any exemption from paying the fee is claimed.

The documents enclosed with the application form may be in Uzbek, Russian, or any other language. However, if the documents are in a language other than Uzbek or Russian, a translation into Uzbek or Russian must be provided.

A trademark assignment agreement must contain the following mandatory terms and conditions:

  1. the parties to the agreement;
  2. the subject matter of the agreement, including the number of the trademark registration to which the agreement applies;
  3. the scope of rights to be transferred under the agreement;
  4. the territory to which the agreement applies;
  5. the term of the agreement; and
  6. the amount of remuneration or consideration received, or a provision confirming the validity of the agreement upon receipt thereof.

Licensing and recordation of licenses

The owner of a trademark (the licensor) may execute an agreement grant the right to use a trademark to another party (the licensee). The licensee may, in turn, execute an agreement known as a sub-license granting the right to use the trademark to another party (the sub-licensee), provided the initial license agreement did not prohibit a sub-license. License agreements may only be executed for trademarks that have been registered. Neither the right to a collective mark nor the right to use a collective mark may be assigned.

In addition to the terms and conditions required for trademark assignment agreements,[36]a license agreement must also include one or more provisions ensuring that the quality of the licensees goods will not be less than the quality of the licensors goods(or standards therefore) and requiring the licensor to monitor the quality of the goods to comply with this requirement.[37]

A license agreement may be registered with the national Patent Office. To register a license agreement, the following items must be submitted:

  1. an application for registration of the agreement;
  2. the agreement,[38] or an extract there from, notarized in three copies.
  3. All pages of the agreement must be bound, numbered, and there should not be any erasures, additions, crossed-out words, or any other corrections not mentioned in the agreement itself;
  4. a document confirming succession or the right to inherit (if applicable);
  5. a power of attorney duly issued in the name of the representative;
  6. a document confirming payment of the fee in the prescribed the amount for registration of the agreement, or a document confirming any grounds for a claimed exemption from paying the fee.

If the recordation of a sub-license is being requested, the application must be accompanied by an original copy of the license agreement or a notarized copy of the agreement.

The documents provided with the application form may be in Uzbek, Russian, or any other language. However, if the documents are in a language other than Uzbek or Russian, a translation into Uzbek or Russian must also be provided.

Marking

The owner of a trademark or the owner of the registration of the right to use an appellation of origin may affix along with the trademark or the appellation of origin a warning or marking in the form of the letter R or the symbol , which indicates that the mark is a registered trademark or appellation of origin in the Republic of Uzbekistan.[39]

Cancellation of registrations

Registrations (also known as the validity of a trademark certificate), may be terminated as a result of:

  1. a decision of the Appeals Board;
  2. a request from the owner, submitted to the Patent Office;
  3. a courts decision and resulting order.

Registrations may be terminated before the end of their term either completely or partially, for example, as a result of a courts decision in a civil suit brought by an interested party. Such an action may be brought, for example, if the trademark was not used for five consecutive years after registration or, in the case of a collective mark, if the agreement governing use of the collective mark is violated. In cases based on an alleged failure to use the mark in commerce, the trademark owner or registrant may present evidence that any failure to use the mark was due to circumstances beyond the owners control.

Limitation of time for action to cancel

The timelines and deadlines for pre-trial and trial procedures in court actions seeking the early termination of registrations, (including the validity of a trademark certificate and a certificate of the right to use of the appellation of origin), are generally governed by the rules of the Appeals Board of the Patent Office and the courts rather than trademark law.

In practice, the early termination of registrations typically takes up to seven months if an application for cancellation is considered by the Appeals Board, and up one year if the case is heard by a court. A party that is not satisfied with the decision of the Appeals Board may appeal the decision to a court.[40]

Third-party rights in registered marks

Third parties may initiate any actions related to registered marks only if they are considered an interested party, a term that is not defined by the trademark laws of Uzbekistan. However, in practice, interested parties are persons or entities that have filed applications for the registration of trademarks or other intellectual property with the Patent Office for which there is a potential conflict as a result of the submission of an application for the registration of an identical or similar mark likely to result in confusion. In the event of a conflict with a registered mark, such interested parties may request that the Appeals Board of the Patent Office or a court terminate the registration or declare the trademark certificate invalid.[41]

Abandonment of registrations

A trademark registration may be declared invalid in full or in part at any time during its validity if it does not meet the legal requirements for registered trademarks, and this may be done within five years from the date of publication of information on trademark registration in the Official Bulletin, or if it was otherwise improperly issued.[42] A trademark registration may also be declared invalid in full or in part by a decision of the Appeals Board or by a court.

Trademark registration is deemed invalid from the date of the decision of the Appeals Board or upon the court decision becomes effective.

In case an applicant decides to renew his/her trademark registration, it will be sufficient to submit a proper application. No additional filing of documents with the Appeals Board or court is required.

Status of unregistered marks

Unregistered trademarks for which an application for registration is pending with the Patent Office do not have any particular legal status and are generally not entitled to legal protection under the trademark law. Legal protection also does not extend to unregistered designations or marks that are in use, even if such marks have achieved well-known status in the Republic of Uzbekistan.

Enforcement of rights in marks; customs

Civil Remedies:

The owner of a trademark has an exclusive right to use and dispose of his or her mark. This includes the right to introduce the trademark into commercial circulation. However, only registered marks are entitled to legal protection in the Republic of Uzbekistan.

The steps for protecting rights in a mark through a civil action are divided into pre-trial and trial procedures as follows.

  1. Pre-trial Procedures:

Pre-trial procedures consist of sending demand letters to an infringer requesting that he, she or it cease and desist from all infringements; conducting negotiations, and sending requests to the State Committee of the Republic of Uzbekistan on De-monopolization, Privatization, and Support for Competition (Antimonopoly Committee), which considers disputes and takes steps to stop violations of laws governing competition.

In Uzbekistan, the following acts are considered unfair competition: 1) the sale of goods that illegally use intellectual property and any equivalent means by which a legal entity individualizes its business or its goods.[43] Trademarks are considered such a means of individualization. Therefore, their illegal use by third parties is a violation of laws prohibiting unfair competition.

This approach to unfair competition is based on similar international provisions governing unfair competition. Article 10bis of the Paris Convention for the Protection of Industrial Property[44]includes a provision aimed at preventing unfair competition and imposing an obligation by member states to ensure effective protection against unfair competition and the establishment of 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[45] and discusses several types of unfair competition, including the creation of confusion, discrediting another party, and misleading consumers, for example.

Claims of unfair competition raised against another party may be supported by materials gathered through investigations conducted by a government agency known as the Antimonopoly Committee, through requests made by legal entities and individuals, and through other governmental authorities. Any directives issued by the Antimonopoly Committee based on the results of its examination of a case are mandatory for all legal entities and individuals, as well as government authorities. Its directives may be appealed in court.

  1. Trial Procedures:

A person who believes that its exclusive rights to the trademark have been infringed may file a lawsuit in a court in the Republic of Uzbekistan requesting the following relief:

  1. recognition of the rights to the trademark;
  2. restoration of its rights and suppression of any acts that infringe the rights or threaten to infringe those rights;
  3. damages;
  4. penalties;
  5. non-pecuniary damages.

The equivalent of preliminary injunctions are available in Uzbekistan even before infringement is shown and include, for example, orders requiring the removal from the market or intended market - of goods bearing the owners trademark, orders prohibiting the production and sale of such goods, and orders terminating advertising for such goods. However, trademark owners nevertheless face several challenges when prosecuting civil actions, including the lack of uniform judicial decisions and inefficient governmental enforcement procedures.

Customs Register:

Most infringements involving the illegal use of trademarks and appellations of origin relate to or involve the importation of illegal, unauthorized goods to the Republic of Uzbekistan.

The customs legislation of Uzbekistan prohibits any intellectual property infringement committed by third parties while importing and exporting goods to and from the territory of the Republic of Uzbekistan.

However, the legislation does not define the means and mechanisms for preventing infringements of such rights.[46] The law also does not provide Customs Office protection through measures such as the ability to register trademarks and appellations of origin in a Customs Office register to facilitate enforcement of intellectual property law by Customs officials.

Nevertheless, despite the absence of such measures for customs protection of trademark rights, there are a number of judicial precedents in Uzbekistan in which courts required the Customs Office to monitor goods to ensure that the rights of trademark owners are not infringed. These decisions arguably establish an obligation on the part of the Customs Office to prohibit the clearance of imported goods illegally marked with another partys trademark(s) without the mark owners consent.

Criminal Penalties:

There is no criminal liability for illegally importing goods marked with the trademarks of third parties or the infringement of trademark rights.

Well-Known / Famous Marks:

The law does not provide other measures for protection of well-known trademarks other than those provided for the protection of trademarks that are not well-known.

Domain names

The country code for Uzbekistan is .UZ. Any individual and legal entity, regardless of its nationality and location, may register a domain name in the UZ (country code) domain.

Domain names are registered according to an agreement between the registry and an applicant. An applicant chooses a domain name and is responsible for any possible infringements of the rights of third parties associated with registration and use of the domain name, and carries the risk of losses associated with such infringements.

The domain name must consist of more than one character and contain the following characters or their combination:

  1. letters: a, b, c, d, e, f, g, h, i, j, k, l, m, n, o, p, q, r, s, t, u, v, w, x, y, z;
  2. numbers: 0, 1, 2, 3, 4, 5, 6, 7, 8, 9; or
  3. hyphen (-).

The domain name may not begin or end with a hyphen (e.g. -domain.uz or domain-.uz).

The registry is charged with the duty to inform interested persons of the procedures for the registration of domain names and the costs of registration.

To secure a domain name registration, an application for registration in the UZ domain zone is sent to the registry by using registrys web server, by via e-mail, or by written (hard copy) request. An applicant must provide complete and accurate information. The registry reviews the application and may request that the applicant confirm the accuracy of the information provided.

The registry also performs a preliminary check of the domain names for which a registration has already been issued and those for which an application has been received but not yet granted, noting any conflicts that pose an obstacle to registration.

Within seven business days of receipt of an application, the registry must notify the applicant of its decision to grant registration of the domain name, to refuse to register the domain name, or to suspend the application for registration, along with the reason(s) for the suspension or any denial.

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[1]See fees.

[2]See advertisement or publication.

[3]See not registrable; protection for well-known marks,

[4]See defensive marks.

[5]See opposition.

[6]See licensing and recordation of licenses.

[7]See enforcement.

[8] This list of legislative acts does not include provisions that directly regulate matters regarding patents, inventions, domain names, and copyrights.

[9]As defined by the Law of the Republic of Uzbekistan On Trademarks, Service Marks, and Appellations of Origin, an individual means an individual who carries out entrepreneurial activities without forming a legal entity.

[10] Under Art. 3 of the Law of the Republic of Uzbekistan On Trademarks, Service Marks, and Appellations of Origin, the terms Trademark and Service Mark have the same meaning and are combined in one term Trademark, and the terms Goods and Services are combined in one term Goods.

[11]See Collective marks.

[12]No trademark has been included in the State register of well-known trademarks to date.

[13] As of today, there are 37 patent attorneys are registered in the State register.

[14] The Law of the Republic of Uzbekistan On Trademarks, Service Marks, and Appellations of Origin," Art. 3.

[15]See regarding non-traditional marks.

[16] Law of the Republic of Uzbekistan On Trademarks, Service Marks, and Appellations of Origin, Art. 10.

[17] The following are designations have no distinctive features:

1) designations that represent separate letters, numbers;

2) designations that do not have a distinctive graphic design;

3) combinations of letters not of a verbal or word nature;

4) lines, simple geometric shapes and their combinations that do not form compositions which give a qualitatively different perception from the perception of some of their constituent elements;

5) realistic or schematic images of goods claimed to be registered as trademarks for marking these goods;

6) 3D objects, the shape of which is determined exclusively by a functional purpose;

7) common names, which are usually simple indications of goods claimed to designate these goods;

8) common abbreviated names of organizations, businesses, industries, and their abbreviations.

[18]See certification and collective marks.

[19] Law of the Republic of Uzbekistan On Trademarks, Service Marks, and Appellations of Origin,Art. 10; see what may not be registered.

[20]See filing requirements/documents required.

[21]See use.

[22]Rules for Filling Out, Filing, and Reviewing Applications for Registration of the Trademark and the Service Mark, registered by the Ministry of Justice under No. 1988, dated July 29, 2009.

[23] According to the procedure set out in the Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents of October 5, 1961 (The 1961 Hague Convention).

[24] Legalization is required for documents issued in countries that do not ratify the 1961 Hague Convention.

[25]See not registrable.

[26] The following are designations that have no distinctive features:

1) designations that represent separate letters, numbers; do not have a distinctive graphic design; a combination of letters that does not have a verbal/word nature;

2) lines, simple geometric shapes and their combinations that do not form compositions which give a qualitatively different level of perception that is different from the perception of some of their constituent elements;

3) realistic or schematic images of goods claimed to be registered as trademarks for marking these goods;

4) 3D objects, the shape of which is determined exclusively by a functional purpose;

5) common names, which are usually simple indications of goods claimed to designate these goods;

6) common abbreviated names of organizations, businesses, industries, and their abbreviations.

[27]See review procedures.

[28]See fees.

[29]See fees.

[30]http://www.ima.uz.

[31]Law On Trademarks, Service Marks, and Appellations of Origin, Arts. 24 and 25; see cancellation of registrations.

[32]This is also known as the validity period of the registration; see also duration and renewal of registrations.

[33]See fees.

[34]See also defensive registrations, and cancellation of registrations.

[35] In practice, the agreement is typically registered only upon submission to the Patent Office of the original copy of the agreement and not merely an extract there from.

[36]See assignment and recordation of assignments.

[37] Provided that the subject matter of the agreement is the transfer of the right to use the trademark registered in goods classes under the ICGS.

[38] In practice, the agreement is registered only upon submitting to the Patent Office the original copy of the agreement and not merely an extract there from.

[39] Law of the Republic of Uzbekistan On Trademarks, Service Marks, and Appellations of Origin, Art. 29.

[40]See appeals.

[41]See cancellation.

[42]See not registrable.

[43] Law of the Republic of Uzbekistan On Comp

 


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