Well-known trademarks in Uzbekistan

The right to a trademark constitutes a key element of intellectual property, ensuring the individualization of goods and services. An essential component of legal protection is the institution of well-known trademarks (WKT), which are granted additional safeguards against the use of confusingly similar signs, including for dissimilar goods and services.

Derivative sources such as the Paris Convention and the TRIPS Agreement require protection of well-known trademarks without formal registration and without strict linkage to classes of goods/services. WIPO recommendations expand the concept of notoriety taking into account the degree of recognition and commercial reputation of the rights holder.

The Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin of Goods” No. 267-II of 30 August 2001 governs relations in the field of legal protection and use of trademarks within the territory of the Republic of Uzbekistan. The Law covers all aspects of the legal regime of trademarks, including well-known trademarks.

The Law contains a dedicated article (Article 32¹) on well-known trademarks. This demonstrates recognition of this institution as an independent object of legal protection rather than merely an administrative category.

The subsequent article (Article 32²) regulates the legal protection of such marks, including procedures for enforcement and the scope of exclusive rights, expanding the standard legal protection afforded to registered trademarks.

The Ministry of Justice of the Republic of Uzbekistan, as the competent authority:

• maintains the State Register of Trademarks,
• maintains the List of Well-Known Trademarks of the Republic of Uzbekistan,
• publishes information on the recognition of trademarks as well-known,
• organizes the procedures for registration and examination of trademark applications,
• conducts substantive examination of applications.

This directly indicates the existence of an official list of well-known trademarks and publication of recognition decisions.

The right to request recognition of a trademark as well-known belongs to rights holders. In Uzbek practice, this institution is implemented through the Appellate Council under the Ministry of Justice of the Republic of Uzbekistan, which examines applications and decides on inclusion of marks into the List of Well-Known Trademarks.

Applications for recognition of a trademark as well-known and the accompanying evidence must contain reliable data confirming notoriety within the territory of the Republic of Uzbekistan.

In particular, evidence may include data on wide and long-term use of the trademark, a list of localities where goods (services) have been marketed, sales volumes, methods of use (including advertising, exhibitions, and fairs), average annual number of consumers, countries where the mark is recognized, as well as results of consumer surveys conducted by an independent specialized organization in accordance with recommendations of the competent authority.

Evidence may also include conclusions of regulatory authorities, trade organizations, consumer protection associations, declarations, certificates of quality, and other documents confirming long-term, continuous, and large-scale use of the trademark.

The application must specify the date from which the trademark has been used and the date from which the applicant considers it to have become well-known in the Republic of Uzbekistan.

Recognition of a trademark as well-known entails the following legal effects:

• protection is granted without limitation to specific classes of the Nice Classification;
• the rights holder may prevent the use of confusingly similar signs even for dissimilar goods;
• the rights holder gains enhanced legal standing against unfair competition;
• legal protection is increased regardless of formal registration.

Article 32² expressly establishes that the legal protection of well-known trademarks is carried out in accordance with the norms of the Law and international treaties forming part of the legal system of Uzbekistan.

National norms of Uzbekistan are harmonized with international obligations requiring protection of well-known trademarks, based on obligations deriving from the Paris Convention and TRIPS. The Law provides a legal basis for recognition and protection of well-known trademarks within the national legal order, taking into account international standards.