Trademark application Uzbekistan

Overview of Uzbekistan and its economy

Uzbekistan is a contracting party to the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty. According to WIPO’s jurisdiction profile, Uzbekistan has been a contracting party to both instruments since 25 December 1991. Although Uzbekistan is not yet a member of the World Trade Organization and therefore is not bound by the TRIPS Agreement, it has aligned its trademark law with international standards and participates in the Madrid Protocol for international trademark registration. WIPO’s information notice on Uzbekistan’s accession states that Uzbekistan deposited its instrument of accession to the Madrid Protocol on 27 September 2006, and the Protocol entered into force for Uzbekistan on 27 December 2006. The notice records that the country declared an 18‑month time limit for issuing provisional refusals and opted for individual fees.

Legal framework for trademark protection

National legislation

The main legislative act governing trademarks in Uzbekistan is the Law of the Republic of Uzbekistan “On trademarks, service marks and names of places of origin of goods” (Law No. 267‑II of 30 August 2001, as amended). This law defines what signs can be registered, establishes application procedures, provides for examination and registration, and sets out the rights and obligations of trademark owners. Key provisions include:

• Valid term of registration: a trademark certificate is valid for ten years from the filing date. The owner may file a renewal request during the last year of the certificate’s validity. Each renewal extends protection for another ten‑year period. There is a six‑month grace period after expiration during which the owner may still apply for renewal with payment of an additional fee.
• Unregistrable signs: Article 10 lists signs that cannot be registered. These include state emblems, flags and official names of countries or international organizations; official control or guarantee marks; signs that lack distinctiveness, generic names or common symbols; descriptive signs indicating the kind, quality, quantity, value or place of origin of goods; signs liable to mislead consumers or contradict the public interest; and signs identical or confusingly similar to earlier registered marks or well‑known marks. Marks which are false or misleading about geographic origin or goods’ characteristics cannot be registered.
• Grouping of goods and services: the law requires that the list of goods for which registration is sought be grouped according to the International Classification of Goods and Services for the registration of marks, i.e., the Nice Classification. Uzbekistan is not a contracting state to the Nice Agreement, but it nonetheless applies the classification system.
• Exclusive rights and infringement: once registered, the owner obtains the exclusive right to use the trademark for the goods specified in the certificate, and that right lasts for the term of the registration. Unauthorized manufacture, use, import, sale or storage of goods bearing the registered mark or a confusingly similar sign constitutes infringement.
• Use requirement and cancellation for non‑use: a registered trademark may be cancelled fully or partially by a court decision upon the request of an interested person if the mark has not been used continuously during the last three years of its term. During the cancellation proceedings, the court will consider evidence provided by the owner showing that non‑use was due to circumstances beyond their control. Evidence of use includes the situations described in Article 27 (see below).

Definition of use

Article 27 of the law defines how a trademark must be used to preserve rights. Use includes applying the mark to the goods for which it is registered or to their packaging; such use may be undertaken by the owner or by a licensee. Additional forms of use recognised by the law include:

• use in advertising, printed publications, official forms, signboards, exhibition displays and trade fairs;
• affixing the mark on labels and packaging of goods that are produced, offered for sale, sold or otherwise put into civil circulation, stored or transported for that purpose, or imported into Uzbekistan;
• use on documentation related to introducing goods into commerce; and
• use in a domain name.

Goods, labels or packaging that bear a sign identical or confusingly similar to a registered trademark without authorization are considered counterfeit.

Representation by patent attorneys

The law permits Uzbek citizens residing permanently in the country to file and manage trademark applications themselves. However, individuals or entities that are outside Uzbekistan must act through a patent attorney licensed in Uzbekistan unless they can provide an address for correspondence within the republic. Article 35 states that individuals permanently residing in Uzbekistan but temporarily abroad may perform acts relating to the registration of trademarks without a patent attorney provided that they indicate an address for correspondence within Uzbekistan. Consequently, foreign applicants and non‑residents generally require representation by a local patent attorney, and the attorney’s authority must be confirmed by a power of attorney.