First of all it is important to note that the dynamics of debates exiting nowadays among public institutions, businesses, and mass media regarding such issues as the use and protection of intellectual property is a certain indicator of the beginning of an innovative growth and understanding of the role and meaning of intellectual property in economic development of a certain company in particular as well as the economy of a certain country as a whole.
Speaking about legal aspects of intellectual property protection, it is important to mention that in this article, we will analyze exclusively the means of protection of such intellectual property as trademarks and service marks, which are traditionally called in the business environment as marketing designations or brands.
Obviously an infringement of trademark rights owned by their holders incurs, first of all, an infringement of economic rights and interests of trademark owners, regardless of where such infringements are stemming from.
Generally infringers use intellectual property of third parties – true owners – by a number of illegal actions aimed at using benefits that are obtained due to good reputation of someone else's trademark. In such a situation, one mistakenly assumes that such infringements damage only the trademark owner, whereas in reality the scale of each case of any such infringements is much more serious, as consumers of services and goods that are marked with illegally used designations will associate every time such goods and services with true right holders. Accordingly, damage is caused not only to certain individuals, but also to the whole society.
Moreover, infringements of owners' rights damage infringers themselves, although in most cases they do not realize it. It is obvious that infringers will never have a stable position in the market, will not be able to gain the confidence of and acquire good reputation among consumers who purchase their goods or services, to create their own authentic brand and fairly use it commercially (i.e. to increase capitalization of their company, to contribute it to the charter capital, to sell to third parties, etc.). Also most of the time infringers do not try to increase the quality of their products and improve them depending on the level of demand and supply in the market.
Moving directly to the issue of means and methods to protect trademark rights, it would be necessary to point out that it is all about legal instruments that are provided by the existing legislation, however, beside those instruments there are also economical methods of protection which sometimes may be even more effective but they are not to be analyzed in this publication.
First of all, it is necessary to point out that according to the legislation of the Republic of Uzbekistan, only registered trademarks are subject to legal protection.
The main laws on trademarks in the Republic of Uzbekistan are:
- Civil Code of the Republic of Uzbekistan;
- Law of the Republic of Uzbekistan "On Trademarks, Service Marks, and Appellations of Origin" of August 20, 2001, No. 267-II (latest amendments were made on December 26, 2011);
- Law of the Republic of Uzbekistan "On Competition" (approved by the Senate on December 5, 2011)
Under art. 1103 of the Civil Code of the Republic of Uzbekistan, an owner of the trademark has an exclusive right to use and dispose of his mark. The use of the trademark means any introduction of that trademark to circulation according to the procedure set out in law. An owner of the trademark has the right to integrity of his exclusive rights.
In addition, pursuant to the provisions of art. 1107 of the Civil Code of the Republic of Uzbekistan, a person who illegally uses the trademark shall cease and desist any such infringements and compensate any losses incurred by the trademark owner.
In the Republic of Uzbekistan, losses mean expenses that a person, whose rights were infringed, incurred or will have to incur in order to restore its infringed rights, loss of or damage to its property, as well as loss of profits that such person would have received under a normal circumstances if its rights had not been infringed.
Besides, a person who illegally uses the trademark shall destroy images of the trademark being produced, remove from the goods or packages the trademark illegally used or a designation that is similar with that trademark to the point of confusion.
Mechanisms for protection of trademark rights may be divided into pre-trial and trial ones.
Pre-trial procedures consist of negotiations with an infringer, sending demand letters to an infringer requesting to cease and desist infringements of exclusive rights of a trademark owner, as well as sending relevant 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 measures against persons that infringe competition law.
Besides, in Uzbekistan, the following acts may be considered unfair competition: sale of goods with an illegal use of intellectual property and equivalent thereto means of individualization of a legal entity, means of individualization of goods. Trademarks are considered means of individualization of goods, therefore, their illegal use by third parties is a violation of provisions and principles of the existing legislation.
Grounds for initiating and considering cases on violation of competition law may be materials of antimonopoly body's own inspections, requests of legal entities and individuals, and relevant government authorities.
Directives issued by the Antimonopoly Committee upon the results of the case examination are mandatory for all legal entities and individuals, as well as government authorities.
Directives of the Antimonopoly Committee may be appealed in court.
A pre-trial mechanism for dispute settlement is not mandatory and the right holder has the right to trial the dispute directly in court skipping a negotiations stage or to file the dispute with the Antimonopoly Committee.
A person who believes that its exclusive rights to the trademark have been infringed is entitled to submit lawsuits to courts in the Republic of Uzbekistan with the following claims:
ceasing and desisting infringements of trademark owner's rights;
restoring its right and suppressing any acts that infringe the right or threaten to infringe that
claiming non-pecuniary damage.
Restoration of the right prior to its infringement includes such acts as removal of goods or packages illegally marked with the owner's trademark or a designation similar to the point of confusion from circulation by prohibiting its production and sale, terminating advertising, etc. If the listed actions are impossible to complete, goods shall be destroyed.
Mainly, difficulties, which right holders face with while protecting their rights in court, are, first of all, the lack of the uniform judicial practice and inefficient work of government authorities that are responsible for enforcing court decisions.
Customs IP register
It is necessary to note that most infringements involving an illegal use of trademarks and appellations of origin are connected with import of goods by third parties in the Republic of Uzbekistan, where such goods are marked with the trademark of the right holder and where such import is illegal and unauthorized by the owner of the trademark.
The customs legislation of Uzbekistan prohibits any intellectual property infringement committed by third parties while importing in and exporting from the territory of the Republic of Uzbekistan. At the same time, the legislation does not define means and mechanisms for preventing infringements of such rights.
The law does not provide for such specific measures of customs protection as inclusion of trademarks and appellations of origin in the State customs register for intellectual property.
Moreover, up until now, Uzbekistan law does not provide for a legal definition of the term "counterfeit," despite the fact that the term "counterfeit goods" is widely used in a number of normative acts related to customs regulation. This fact complicates considerably the procedure aimed to protect owners' rights to their intellectual property, including trademarks, from "grey" and "black" import and from other cases of illegal circulation such goods.
One of the positive aspects, however, is that despite the absence of certain measures for customs protection of the rights of trademark owners, in judicial practice of Uzbekistan, there are a number of precedents where courts imposed on customs authorities certain obligations to monitor that the rights of trademark owners are not infringed, where such monitoring is conducted by prohibiting customs clearance of imported goods marked with the trademarks that belong to the right holder, if such goods are being imported without right holder's consent.
According to art. 177 of the Code of the Republic of Uzbekistan of Administrative Responsibility, use of a trademark or an appellation of origin or a designation similar with it for homogeneous goods or services in violation of their owners' rights is subject to a fine in the amount of one to three minimal monthly wages for citizens and three to five minimal monthly wages for officials.
Taking into consideration the above, we may conclude that the national legislation and judicial practice in the field of intellectual property are still in the process of their advancement and development, yet they provide to right holders with quite a wide scope of instruments for their protection as well as give an opportunity to use provisions set out in international law, such as the 1886 Paris Convention for the Protection of Industrial Property, the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights, and many others.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.