As both consumers and lawyers dealing with IP infringement cases, each day we face with the fact that many pharmaceutical companies (both independent legal entities and representative offices of foreign corporations) operate in Uzbekistan promoting and selling their own and third-party pharmaceuticals in the local market.
With such a high density of companies within the market, the number of legal conflicts over the use of brand names of pharmaceutical drugs and their counterfeit versions and hence the number of disputes tried by economic courts of Uzbekistan keeps growing.
In our experience, most often brand owners seek to put an end to the illegal use of pharmaceutical trademarks (trade names) and prohibit the import and sale of the relevant pharmaceutical and withdraw it from pharmacies.
As you know, a marketing authorization must be obtained from the General Directorate for Quality Control of Pharmaceutical Drugs and Medical Equipment under the Ministry of Public Health of the Republic of Uzbekistan (the “Pharmaceutical Committee”) in respect of the relevant drug in order to start selling it through pharmacies.
Marketing authorization certifies that the competent public body has authorized the use of the drug in Uzbekistan; however, it cannot prohibit third parties from using a trademark or trade name confusingly similar to the original one in commercial transactions.
In other words, registration of a pharmaceutical drug with the Pharmaceutical Committee does not grant the manufacturer or the distributor any exclusive rights to the use of the pharmaceutical's trade name.
According to the applicable laws, exclusive right is the mark owner's right to own, use and dispose of the relevant registered mark in any legitimate way, including prohibiting third parties from using the mark.
Exclusive rights to a trademark are deemed infringed if the trademark or the goods bearing the trademark become subject to unauthorized production, import, offer for sale, sale and other use in commercial transactions or storage or if a mark confusingly similar to the trademark is used in respect of similar goods.
Exclusive rights to the use of a trademark may be obtained via registration as a trademark or industrial design of the relevant pharmaceutical drug or the products related to its appearance (containers, bottles, packages etc.) to which end the relevant application should be submitted to the Agency for Intellectual Property of the Republic of Uzbekistan (the “Uzbek IPA”).
The table below compares degrees of legal protection provided for by the registration of a pharmaceutical drug with the Uzbek Pharmaceutical Committee and by the registration of a trademark and industrial design with Uzbek IPA:
|No.||State registration of a pharmaceutical drug with the Pharmaceutical Committee||State registration of a pharmaceutical drug's trade name (brand name) or container or package as a trademark with Uzbek IPA||State registration of a pharmaceutical drug's container or package as an industrial design with Uzbek IPA|
|1.Regulations relating to registration and protection of intellectual property||1. Law of the Republic of Uzbekistan “On
Pharmaceutical Drugs and Pharmaceutical Activities” dated
April 25, 1997;
2. Regulations for the Procedure for Registration of Pharmaceutical Drugs and Medical Products and Issue of Marketing Authorizations, approved by Order of the Cabinet of Ministers of the Republic of Uzbekistan No. 352 dated December 22, 2014.
|1. Law of the Republic of Uzbekistan “On
Trademarks, Service Marks and Names of Places of Origin of
Goods” dated August 30, 2001;
2. Rules for Executing, Submitting and Reviewing the Applications for Registration of Trademarks and Service Marks, registered with the Uzbek Ministry of Justice under No.1988 on July 29, 2009.
|1. Law of the Republic of Uzbekistan “On
Inventions, Useful Models and Industrial Designs” dated
August 29, 2002;
2. Rules for Executing, Submitting and Reviewing Applications for Patents of
the Republic of Uzbekistan for Industrial Designs, registered with the Uzbek Ministry of Justice under No.1361 on May 20, 2004.
|2.Registration advantages||1. This registration is mandatory;
2. Authorization to use the pharmaceutical drug in the Republic of Uzbekistan.
|1. Grants exclusive rights (rights to import, use,
sell and store; bans the use by third parties etc.).
2. Allows the owner to forbid third parties (including competitors) to use, in respect of similar goods and services, any pharmaceutical drug names confusingly similar to the trademark;
3. Protects products from being copied and counterfeited by unscrupulous competitors;
4. The certificate is issued for 10 years and may be renewed thereafter.
|1. Protects the design of the pharmaceutical
drug's appearance (container or package).
2. Allows the owner to forbid third parties to use similar containers and packages in any fields and industries.
|3. Registration peculiarities||Compared to trademark registration
- does not allow the owner to forbid third parties to use the pharmaceutical drug name and similar names in respect of similar goods;
- does not prevent third parties from registering other pharmaceutical drugs with identical or similar names.
The Marketing Authorization is issued for 5 years.
|Compared to pharmaceutical drug registration
- does not authorize the use of the relevant pharmaceutical drug for medical purposes.
Compared to industrial design registration
- protection applies only to registered groups of goods and services.
|Compared to trademark registration
- protection is granted for only in respect of identical items and does not apply to the items confusingly similar to the original one (however, substantially similar ones may still be covered);
- protection is valid for a certain period only (15 years maximum).
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.