Trademarks Filing and Prosecution Uzbekistan
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Uzbekistan IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Uzbekistan IP Office. In Uzbekistan, trademark protection is granted according to the provisions of Law of the Republic of Uzbekistan No. 267-II of August 30, 2001, on Trade Marks, Service Marks and Appellations of Origin, Uzbekistan.
Trademark in Uzbekistan may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Ministry of Justice of the Republic of Uzbekistan |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | YES |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and simply signed Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application. |
| Renewal term | 10 years |
Trademark searches in Uzbekistan
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Uzbekistan can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Uzbekistan to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Uzbekistan.
Filing trademark applications in Uzbekistan
A person may file multi-class or single class trademark application in Uzbekistan.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Uzbekistan
Ordinary trademark applications filed in Uzbekistan are applications without claiming any priority. Multi class trademark applications may also be filed in Uzbekistan. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Uzbekistan /Convention trademark applications Uzbekistan:
A priority trademark application may be filed in Uzbekistan. A priority trademark application should be filed in Uzbekistan within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Uzbekistan within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Uzbekistan follows the nice classification of classes. Intellectual property office of Uzbekistan uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Uzbekistan
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal.
Article 10. Designations not registered as trademarks
The following shall not be registered as trademarks:
(1) designations serving as illustrations of State coats of arms, flags and State awards;
(2) official names of States, abbreviated or full names of international or intergovernmental organizations;
(3) official control, guarantee and hallmarks and seals;
(4) illustrations of decorations and insignia of State services used in the Republic of Uzbekistan;
(5) designations which cannot be distinguished;
(6) designations which have entered into common use as designations of goods of a particular type;
(7) designations representing generally accepted symbols and terms;
(8) designations used to characterize goods including types, qualities, quantities, features, purposes, values and also the times and places of their production or sale.
(9) designations which are false or likely to mislead the user as regards a good or its manufacturer;
(10) designations formally indicating the true place of production of a good but giving a mistaken perception that the good comes from another territory;
(11) designations representing or containing geographical names identifying mineral waters, wines or strong spirits, for the designation of goods not originating in the place in question, and also where they are used in translation or in combination with the words “form,” “type,” “in the style” and so on;
(12) designations contrary to the interests of society, principles of humanity and morality;
(13) designations identical or similar to the point of confusion with:
– trademarks previously registered or filed for registration in the Republic of Uzbekistan on behalf of another person, and also protected without registration under the international agreements to which the Republic of Uzbekistan is a party or enjoying earlier priority in relation to goods of the same type;
– trademarks of other persons recognized as generally known in accordance with the established procedure, in relation to any goods;
– appellations of origin protected in accordance with this Law, apart from the cases of their inclusion as an unprotected element in a trademark registered on behalf of a person who has the right to use such an appellation in relation to any goods;
– certificated signs, registered in accordance with the established procedure;
(14) designations reproducing company names (or part thereof) known on the territory of the Republic of Uzbekistan and belonging to other persons who have obtained the right to these names prior to the date on which a trademark application in relation to goods of the same kind is received;
– industrial designs, the rights to which in the Republic of Uzbekistan belong to other persons;
– names of works of science, literature and art known in the Republic of Uzbekistan, characters therefrom or quotations, works of art or fragments thereof without the agreement of the copyright holder or his legal successors (heirs);
– family names, first names, pseudonyms and derivatives thereof, portraits and facsimiles of famous persons without the consent of such persons, their heirs or the State body, if these designations are part of the history and culture of the Republic of Uzbekistan.
The designations indicated in paragraphs one to four of the first part of this article may be included as unprotected elements in a trademark, if agreement thereto has been given by the corresponding State body or their owner, and the designations indicated in paragraphs five to eight of the first part of this article may be included as unprotected elements in a trademark, if they do not occupy a dominant position therein.
Registration of the designations indicated in paragraphs five to eight of the first part of this article may be permitted, provided that these designations have become distinguishable in practical terms as a result of their use.
Registration of a designation, similar to the point of confusion with a trademark indicated in sections two and three of paragraph 13 of the first part of this article, may be permitted, provided that the trademark owner has given his consent to the registration of this designation.
Article 11. Designations not subject to registration as an appellation of origin
Designations shall not be subject to registration as an appellation of origin if they:
– represent geographical names which mislead the user as to the place of production of a good;
– formally indicate the true place of production or a good but give the false perception that the good comes from another territory;
– contain geographical names not connected with the place in which a good is produced and which, in the Republic of Uzbekistan, have entered general use for the designation or a particular type or good.
Trademark Opposition in Uzbekistan
There is no official procedure for filing oppositions in Uzbekistan. However, any interested third party observations against trademark registration may be filed during the whole examination procedure before the decision is taken by the Uzbekistan IP Office.
Trademark registration in Uzbekistan
After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application, and the registration certificate is issued.
Trademark Renewal in Uzbekistan
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.