Exclusive Right to a Trademark and Liability for Its Infringement

A trademark is a key element of the intellectual property protection system, ensuring the individualization of goods and services on the market. The existence of a registered trademark grants its owner the exclusive right to use, dispose of, and protect their designation. In the context of the developing market economy of the Republic of Uzbekistan, the institution of trademarks plays an important role in shaping a competitive environment and stimulating innovation.

According to Article 26 of the Law of the Republic of Uzbekistan “On Trademarks…,” the trademark owner has the exclusive right to use and dispose of this mark. The exclusive right applies only to those goods (or services) specified in the certificate of registration.

Elements of the Exclusive Right

• Right of use – applying the mark to the product, packaging, labels, advertising materials, documentation, using it in domain names and in civil transactions.
• Right of disposal – the ability to transfer rights through an assignment agreement or grant a license to use the mark (with the agreement registered with the Ministry of Justice).
• Right of prohibition – the ability to demand the cessation of use of the mark or a similar designation by other persons without the right holder’s consent.

The registration of a trademark constitutes the basis for the emergence of the exclusive right and is recorded in the State Register of Trademarks. Information about the registration is published on the official website of the Ministry of Justice, ensuring publicity and legal certainty.

Concept and Forms of Infringement of the Exclusive Right

The law defines infringement of an exclusive right as the unauthorized manufacturing, application, importation, offering for sale, sale, storage, or other introduction into civil circulation of goods marked with another person’s trademark or a confusingly similar designation, with respect to homogeneous goods.

Key forms of infringement:

• Counterfeit production of goods with unlawful use of the mark
• Import of goods with unlawfully applied marks
• Use of the mark in advertising and documentation without the owner’s consent
• Registration of a domain name containing another’s mark for profit-making purposes

Mechanisms for Protecting the Exclusive Right

1. Civil-law protection

The owner of the mark is entitled to demand:

• Termination of the infringement (injunctive relief)
• Compensation for damages
• Compensation from 20 to 1000 base calculation units regardless of the fact of damages – a novelty introduced in 2024 that strengthens the preventive function of protection.

2. Administrative and criminal liability

Article 37-1 of the Law establishes administrative fines for legal entities for violating trademark legislation, as well as the procedure for their imposition and payment. In cases of repeated violation or major damage, criminal liability may arise (e.g., under Article 177 of the Criminal Code of Uzbekistan – unlawful use of another’s trademark).

3. Customs control

Counterfeit goods may be detained at the border upon application by the trademark owner in accordance with the Customs Code, which serves as a tool for preventing parallel imports and counterfeits.

Limitations of the Exclusive Right

An important guarantee of the balance of interests is the principle of exhaustion of rights: use of the mark in relation to goods lawfully introduced into civil circulation by the owner or with their consent is not considered an infringement. This prevents monopolization of the secondary circulation of goods.

Judicial Practice and Doctrinal Approaches

The courts of Uzbekistan, when resolving disputes, are guided both by the Law on Trademarks and by the norms of the Civil Code (Articles 1031–1040, 1102–1104). The doctrine of “confusing similarity” plays an important role and is applied during examination of designations and in disputes concerning protection of rights.

The exclusive right to a trademark is a key element of intellectual property protection, ensuring a balance of interests between business and consumers. Strengthening liability for infringements, including compensatory mechanisms, contributes to the development of fair competition and improvement of product quality on the market. Promising directions for legislative development include the digitalization of registration procedures and the expansion of customs protection measures against counterfeiting.

 

Transfer of Trademark Rights

The transfer of trademark rights is a key element of the marketability of industrial property objects. The owner of a registered trademark has the right to dispose of it at their discretion: to sell, assign, or grant the right to use it. Such transactions increase the commercial value of trademarks, promote the development of franchising, and encourage investment in branding.

According to Article 30 of the Law of the Republic of Uzbekistan “On Trademarks…,” the following forms of rights transfer are possible:

Form of Transfer	Essence	Features
Assignment Agreement	Full transfer of the exclusive right to a new owner	After registration of the assignment with the Ministry of Justice, the new owner becomes the right holder and acquires all exclusive rights
License Agreement	Temporary granting of the right to use the mark	The license may be exclusive, non-exclusive, or mixed; quality control of goods by the licensor is a key condition
Transfer of Right upon Reorganization	Automatic transfer of rights to the legal successor (merger, accession, division)	In case of division, both legal entities may be recognized as co-owners of the mark, provided it is agreed and registered
Inheritance	Transfer of rights to heirs	Formalized under general inheritance law and entered in the register

 

Legal Requirements for Transfer of Rights

1. Registration of the Transaction. Any assignment agreement or license agreement is subject to mandatory registration with the Ministry of Justice. Without registration, the agreement is deemed unenforceable against third parties and does not entail legal consequences.
2. Restrictions on Transfer.  Transfer of rights is not permitted if it could mislead consumers about the product or its manufacturer (e.g., transfer to another person without preserving product quality). A collective mark cannot be transferred to other persons (Article 30, Articles 1105–1106 of the Civil Code).

Features of a License Agreement

The law explicitly requires inclusion in the license agreement of:

• A clause that the quality of the licensee’s goods is not lower than that of the licensor’s goods
• The licensor’s right and obligation to control compliance with this quality

Violation of these conditions may result in the agreement being declared invalid and the license registration being terminated early.

Judicial and Administrative Protection

In disputes regarding the validity of the transfer of rights:

• Interested parties may challenge the agreement in court
• The Ministry of Justice may refuse to register the agreement if its conditions violate legal requirements
• In case of conflict between multiple assignments, the earlier registered transaction prevails

Practical Significance

The transfer of trademark rights is used in:

• M&A transactions (transfer of brands when buying a business)
• Franchising projects (through license agreements)
• Business restructuring (in case of division or merger)
• Business and brand inheritance

These mechanisms allow brands to maintain their economic value and legal protection during ownership changes or when passing a business to the next generation.

 

Roadmap for the Transfer of Trademark Rights

Step	Action	Participants	Documents	Deadlines	Legal Basis / Comment
1	Drafting the agreement	Trademark owner (assignor/licensor), acquirer (assignee/licensee)	– Assignment or license agreement (in writing) – Annex listing trademarks and Nice classes – Quality control clause (for licenses)	Before signing	Article 30 of the Law on Trademarks; Article 1036 of the Civil Code
2	Signing the agreement	Parties to the transaction	Signed agreement (notarization if required)	As agreed by the parties	Without registration, the agreement is not effective against third parties
3	Preparing the set of documents for registration	Parties to the transaction	– Application for registration – Original agreement (or certified copy) – Copy of trademark certificate – Document confirming payment of patent fee – Power of attorney (if submitted via representative/patent attorney)	Within a reasonable time after signing	Requirements for documents – Administrative Regulations of the Ministry of Justice
4	Filing the application with the Ministry of Justice	Applicant (or representative)	Electronic filing through state information systems or in person	On the day of filing	Part 1 Article 8, Article 30 of the Law on Trademarks
5	Formal examination of documents	Ministry of Justice (IP Center)	–	30 calendar days	Article 14 of the Law on Trademarks
6	Registration of the agreement	Ministry of Justice	Entry in the State Register of Trademarks on transfer/license	On the day of registration	From this moment, the new owner/licensee acquires rights
7	Publication of information	Ministry of Justice	Information on the transfer of rights is published in the official bulletin and on the website	After registration	Article 19 of the Law
8	Issuance of notification / certificate	Ministry of Justice	Notification of registration (electronically with QR code)	On the day of registration	Ensures legal certainty
9	Fulfillment of contract conditions	Parties	–	During the entire term of the agreement	For licenses – the licensor performs quality control of the licensee’s products

Important Practical Considerations

• Fees: The amount of the patent fee is determined by Resolution No. 65 of the Cabinet of Ministers of the Republic of Uzbekistan dated 20.04.2006 (rates are periodically updated).
• Quality Control: If the licensor fails to exercise control, the agreement may be declared invalid and the registration annulled.
• Multiple Owners: In case of joint ownership of a mark, the consent of all co-owners is required.
• Judicial Protection: Disputes regarding the invalidity of the agreement or refusal of registration are considered by commercial courts.