Legal framework

What is the statutory or other source of trademark rights?

Trademark rights are regulated by a separate Law of the Republic of Uzbekistan "On trademarks, service marks and names of place of origin of goods" (№ 267-II, dated August 30, 2001, hereinafter referred to as the Trademark Law). This law, among other rules, defines legal aspects for trademark registration, types of trademarks, trademark protection, such as the scope of exclusive rights, types of trademark use, trademark enforcement, trademark invalidation, as well as a number of other legal instruments necessary for trademark prosecution in Uzbekistan.

The above legal norms are partially reflected in the Civil Code of the Republic of Uzbekistan, which contains unified norms for IP legislation. The Civil Code of the Republic of Uzbekistan establishes general principles for the protection of trademark rights, while a separate law has a broader application in practice.

On the other hand, Uzbekistan is a party to the Paris Convention for the Protection of Industrial Property, which entered into force on December 25, 1991 for the Republic of Uzbekistan. The Paris Convention sets fundamental standards for the protection of industrial property, including trademarks. It should be noted that the requirements of the Paris Convention are reflected in the national legislation of Uzbekistan.

Customs Code of the Republic of Uzbekistan can be considered as secondary source of trademark rights as it grants the right-holder certain powers to combat the illegal import of counterfeit goods at the border, before releasing them into civil circulation.

How do trademark rights arise (ie, through use or registration)?

As a rule, trademark rights arise from the moment of its state registration by an authorized body on the territory of the Republic of Uzbekistan. Trademark Law, in particular Art. 4 of the Law states that legal protection of a trademark is provided on the basis of its registration in the manner established by this Law, as well as by virtue of international treaties of the Republic of Uzbekistan. This means that Uzbek legislation sets "first-to-file" principle for trademark protection.

Note: In Uzbekistan, there is another specific Law "On Competition", which came into force in a new edition starting October 4, 2023. According to the new version of this Law, the antimonopoly authority ceased all its powers to protect trademark rights, thereby eliminating the rules establishing the priority right of trademarks used without state registration. Accordingly, current Uzbek legislation, indeed, provides for the "first-to-file" principle.

On the other hand, it is important to highlight some restrictions that are introduced by Trademark Law in terms of non-registrable marks. While registering a trademark, the examination checks for compliance with section 10 of the Trademark Law, which prohibits the registration of trademarks that reproduce well-known brand names of third parties, industrial designs and copyrighted objects.

What is the statutory or other source of the trademark registration scheme?

Trademark registration is conducted in accordance with Trademark Law and special Rules on examination of trademark applications, approved by State enterprise "Centre of Intellectual Property" (so called "Uzbek Patent Office"). The Trademark Law defines the procedure for registering a trademark, including the stages of examination and general rules for the protectability of a trademark, whereas special Rules contains more detailed instruction on techniques of filing trademark application.

As per international registrations, Uzbekistan enacted the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, which allows applicants to register trademarks in Uzbekistan through Madrid system. Uzbek Patent office is obliged to provide equal examination conditions for both national and international applications in accordance with rules set in Uzbek trademark law.

Moreover, Uzbekistan is a member of Trademark Law Treaty (TLT), which sets unified rules for trademark registration for all member states. This treaty serves as a legal instrument for defining the functions / scope of power of Patent Office and methods of working with applications, accordingly, the role of this law significantly influences the general rules for establishing a trademark registration scheme.

Trademark registration scheme also complies with the rules set by Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. Nice classification is fully adapted in national trademark registration system, which currently operates online.

General rules of trademark registration in Uzbekistan:

  • A trademark can be registered in the name of a legal entity or an individual.
  • Non-residents of the Republic of Uzbekistan shall file trademark applications through patent attorneys registered in Uzbekistan.
  • Trademarks similar to other designations cannot be registered. The list of designations that are not registered as a trademark is given in accordance with paragraph 1 of the first part of Article 10 of the Law.

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.