International Trademarks: Refusals and Appeals in Uzbekistan

The globalization of commodity markets and the expansion of cross-border trade create a need to obtain legal protection for trademarks simultaneously in several countries. One of the most widely used mechanisms for achieving this objective is the Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO).

The Republic of Uzbekistan acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks on September 27, 2006. The Protocol entered into force for Uzbekistan on December 27, 2006. Upon accession, the Republic of Uzbekistan exercised the option provided for under Article 5(2)(b) of the Protocol to establish an eighteen-month period for issuing a notification of refusal of protection in respect of an international registration.

It is essential to properly understand the legal nature of the Madrid System. The international registration of a trademark does not in itself mean that the designation is automatically recognized as eligible for protection in all countries designated by the holder. Following international registration, the International Bureau of WIPO notifies the offices of the designated Contracting Parties, each of which is entitled to examine the designation under its own national legislation. If the national requirements are not met, the relevant office may refuse protection within its territory.

Accordingly, with respect to the Republic of Uzbekistan, it is legally more accurate to use the term “refusal to grant legal protection to an international trademark registration” rather than merely “refusal of international registration.” The international registration already exists in the WIPO International Register, whereas the competent authority of Uzbekistan determines whether the protection conferred by such registration will have effect within the territory of the Republic of Uzbekistan.

International Registration and the Principle of Territoriality of Exclusive Rights

The principle of territoriality remains fundamental to the international protection of trademarks. The exclusive right to a trademark operates within the territory of the state or group of states in which legal protection has been granted to the relevant designation.

The Madrid System significantly simplifies the process of obtaining protection in multiple jurisdictions because it allows the holder to file a single international application, pay the prescribed international fees, and designate the countries in which protection is sought. However, it does not harmonize the substantive criteria for trademark eligibility. Each designated country examines the international registration on its merits in approximately the same manner as a national application, subject to the specific features of the Madrid Protocol.

This approach is expressly implemented in the legislation of the Republic of Uzbekistan. Under the applicable Administrative Regulation, legal protection for a trademark within the territory of the Republic of Uzbekistan may be granted pursuant to international treaties of the Republic of Uzbekistan. The basis for conducting state examination of an internationally registered trademark is the receipt from the WIPO International Bureau of the relevant notification of international registration and extension of its protection to Uzbekistan.

Thus, the international procedure and the national examination constitute interconnected but legally independent stages.

WIPO carries out the international registration and maintains the International Register, while the issue of granting or refusing protection within the territory of Uzbekistan is determined by the competent national authority on the basis of the legislation of the Republic of Uzbekistan.

National Examination of International Registrations in Uzbekistan

The applicable Administrative Regulation on Trademark Registration (hereinafter referred to as the “Regulation”) provides for a special procedure for granting legal protection to an internationally registered trademark.

International registrations specified in notifications of the WIPO International Bureau are examined for compliance with the requirements of the trademark legislation of the Republic of Uzbekistan. Under paragraph 112 of the Regulation, the designation is examined for compliance with the requirements of Articles 3 and 10 of the Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin,” subject to the exception established by law.

If the internationally registered trademark complies with the applicable requirements, it is granted legal protection within the territory of the Republic of Uzbekistan. If the designation does not comply with such requirements, a notification of provisional refusal is sent to the International Bureau, specifying the grounds for the refusal. Thus, the existence of an international registration does not exclude a full examination of the trademark’s eligibility for protection in Uzbekistan.

This reflects one of the fundamental principles of the Madrid System: international registration centralizes the filing procedure and administration of rights but does not deprive designated countries of their authority to independently determine whether protection may be granted.

Absolute Grounds for Refusal

The grounds for refusal to grant legal protection may generally be divided into two principal groups:

1. absolute grounds, primarily related to the characteristics of the designation itself;
2. relative grounds, arising from a conflict between the applied-for designation and earlier third-party rights.

Absolute grounds include, in particular, cases where a designation lacks distinctive character.

Legal protection should not be granted to designations which, by their nature, are incapable of individualizing the goods or services of one person and distinguishing them from the goods and services of other business entities.

This category may include commonly used designations, generally accepted symbols and terms, as well as designations that directly describe the type, properties, quality, quantity, intended purpose, value, place or time of production or sale of the relevant goods.

A particular issue arises with word marks that may originally have had an original character but, in relation to a particular market, are perceived by consumers solely as a description of the goods, their characteristics, or their intended purpose.

At the same time, the absence of inherent distinctiveness is not always an insurmountable obstacle. The Regulation provides for the possibility of registering certain categories of designations where it is proven that, as a result of actual use in relation to specific goods, they have acquired distinctive character. Evidence may include information on production and sales volumes, the territory in which the goods are sold, the duration of use of the designation, advertising expenditures, the degree of consumer awareness, media publications, and participation of the products in exhibitions.

Accordingly, in the case of international registrations, a foreign right holder may, where appropriate, rely on evidence of acquired distinctiveness to substantiate the possibility of obtaining protection for the trademark in Uzbekistan.

Other absolute obstacles may include the false or misleading nature of the designation with respect to the goods, their manufacturer, or their place of origin, as well as a conflict between the designation and public interests, principles of humanity, or morality.

For international right holders, this category of grounds is particularly important because the meaning of a foreign word, geographical name, or cultural symbol may be perceived differently in Uzbekistan than in the right holder’s original market.

Relative Grounds for Refusal and Earlier Trademarks

In practice, one of the most significant grounds for provisional refusal is the existence of an earlier trademark that is identical or confusingly similar to the designation for which protection is sought in Uzbekistan.

The Regulation prohibits the granting of legal protection to designations that are identical or confusingly similar to trademarks previously registered in Uzbekistan in the name of another person, previously filed applications, and certain other protected designations.

At the same time, the mere existence of a registration for a similar designation is not always sufficient for refusal. In respect of the principal category of conflicting trademarks, it is also necessary to determine whether the compared designations relate to identical or similar goods and services. Accordingly, the examination must establish at least two circumstances:

• first, the existence of identity or similarity between the designations;
• second, the similarity of the relevant goods or services.

It is the combination of these factors that makes it possible to assess whether there is a likelihood of confusion in the mind of the consumer.

The Concept of “Similarity to the Point of Confusion”

One of the most complex legal concepts in trademark examination is similarity to the point of confusion. The Regulation provides that a designation is regarded as identical to another designation where all of its elements coincide. Similarity to the point of confusion exists where a designation as a whole, or in its individual material elements, is similar to another designation despite certain differences. The assessment is based on the overall impression created by the designations.

This approach corresponds to the functional purpose of a trademark. What is legally relevant is not the mathematical number of matching letters or graphic elements, but the likelihood that the relevant consumer will perceive the designations as belonging to the same business entity or to economically related persons.

When examining word trademarks, the Regulation distinguishes three principal types of similarity:

• phonetic;
• graphic;
• semantic.

Similarity of Goods and Services as an Element of the Likelihood of Confusion

Even a high degree of similarity between designations should not be considered in isolation from the goods and services for which legal protection is sought. Under the Regulation, when determining the similarity of goods, it is necessary to establish whether consumers may form the impression that the relevant goods originate from the same manufacturer.

The following factors are taken into account:

• type of goods;
• functional purpose;
• material of manufacture;
• complementarity;
• interchangeability;
• conditions of sale;
• relevant group of consumers;
• other circumstances.

Accordingly, the fact that goods belong to the same class of the International Classification of Goods and Services does not in itself constitute conclusive evidence that the goods are similar.

Likewise, the fact that goods are classified in different classes should not automatically mean that they are dissimilar. The Nice Classification primarily performs a classification function, whereas the likelihood of confusion should be determined on the basis of the economic and consumer characteristics of the goods and services being compared. This distinction appears to be fundamentally important for ensuring that decisions concerning international registrations are properly substantiated.

PROVISIONAL REFUSAL as a Special Stage of the International Procedure

A refusal concerning an international registration has significant procedural specificities. If a designation does not comply with the requirements of the legislation of the Republic of Uzbekistan, the competent authority sends the WIPO International Bureau a notification of provisional refusal to grant legal protection, specifying the grounds for such refusal.

The use of the term “provisional refusal” means that, at this stage, the issue of legal protection has not yet been finally determined. The holder of the international registration has the right to submit arguments and evidence aimed at overcoming the grounds identified during the examination.

The applicable Regulation of the Republic of Uzbekistan provides the holder of an international registration with a six-month period within which to submit arguments concerning the grounds stated in the provisional refusal. If such arguments are submitted within the prescribed period, the results of their consideration are communicated to the WIPO International Bureau. If the holder of the international registration fails to submit arguments within the prescribed period, a notification confirming the provisional refusal, i.e. a final refusal, is sent to the International Bureau.

Accordingly, receipt of a provisional refusal should not be regarded by the right holder as an automatic loss of the possibility of obtaining trademark protection in Uzbekistan. On the contrary, it is precisely at this stage that the proper legal characterization of the cited designations, examination of the goods and services, preparation of a comparative analysis, and submission of appropriate evidence are particularly important.

Time Limit for Issuing a Provisional Refusal

The Madrid Protocol establishes a general period within which a national office may notify the International Bureau of a refusal. Upon accession to the Madrid Protocol, the Republic of Uzbekistan made a declaration under Article 5(2)(b), replacing the standard one-year period with an eighteen-month period.

Accordingly, the competent authority of the Republic of Uzbekistan may, as a general rule, notify the International Bureau of a provisional refusal to grant protection no later than 18 months from the date of receipt of the relevant notification from the International Bureau. Compliance with this time limit has significant legal importance.

The Madrid System is structured in such a way that uncertainty concerning the territorial effect of an international registration cannot continue indefinitely. If the competent office does not notify WIPO of a refusal within the period prescribed by the Protocol, the international registration takes effect in the relevant jurisdiction in respect of the claimed goods and services, subject to the applicable rules of the Madrid System.

It should be noted that, in the current list of declarations made by members of the Madrid System, Uzbekistan is listed among the states applying the 18-month period for notification of refusal. At the same time, Uzbekistan is not listed among the states that have made a separate declaration permitting a refusal based on opposition to be notified after the expiry of the 18-month period.

Partial Refusal to Grant Legal Protection

Of considerable practical importance is the possibility of refusing protection not in respect of the entire international registration, but only in relation to certain goods or services. National legislation permits a differentiated approach: where the designation satisfies the applicable requirements only in respect of some of the goods, a decision to register may be adopted in relation to the corresponding part of the list.

For an international registration, this principle means that the territorial scope of legal protection may be limited. For example, an earlier trademark may prevent protection of an international registration in respect of certain goods in Class 3 of the Nice Classification while creating no obstacle in respect of the claimed services in Class 35. In such circumstances, a complete refusal of protection for the entire international registration, without a separate analysis of each relevant group of goods and services, may be disproportionate.

The mechanism of partial refusal makes it possible to maintain a balance between the protection of earlier exclusive rights and the interests of the holder of the international registration.

Consent of the Owner of an Earlier Trademark as a Means of Overcoming a Refusal

Of particular interest is the mechanism introduced into Uzbek regulation allowing the consent of the owner of the cited trademark to be used. The Regulation permits the registration of designations confusingly similar to certain categories of previously protected trademarks where the right holder has given consent.

At the same time, fairly strict requirements apply to a letter of consent. In particular, it must contain information concerning the owner of the cited trademark, the person to whom consent is granted, the relevant designations, and the list of goods in respect of which consent is given. The authenticity of the signature must be notarized. If the consent is executed in a foreign state, the document must be submitted after legalization or after an apostille has been affixed in accordance with the prescribed procedure.

This mechanism is particularly relevant to international registrations because conflicts between trademarks frequently arise within international corporate groups, between business entities having contractual relationships, or as a result of the coexistence of marks in different national markets.

In such circumstances, a letter of consent may constitute a more effective means of overcoming a provisional refusal than a lengthy dispute concerning the degree of similarity between the designations.

Response to a Provisional Refusal: Principal Lines of Legal Argument

Upon receiving a notification of provisional refusal, the holder of an international registration should first determine the precise legal basis for the refusal. If the refusal is based on an earlier trademark, the response strategy may be developed along several lines.

First — absence of similarity between the designations. The holder may demonstrate substantial:

• phonetic;
• graphic;
• semantic;
• compositional

differences between the designations.

In this regard, the most effective approach is not merely to list individual differing elements, but to demonstrate that the marks create a different overall impression on the average consumer.

Second — absence of similarity between the goods or services. Even where there is a certain degree of similarity between the designations, there may be no likelihood of confusion due to differences between the goods. In such a case, the intended purpose of the products, their characteristics, consumer audience, distribution channels, interchangeability, complementarity, and other market factors should be analyzed.

Third — limitation of the list of goods and services. If the obstacle affects only part of the claimed list, one rational option may be to narrow the list. The Regulation provides for the possibility of reducing the list of goods during the application proceedings. In the case of an international registration, such limitation must be made taking into account the special procedures of the Madrid System.

Fourth — obtaining the consent of the owner of the cited trademark. If the legislation allows the relevant obstacle to be overcome by consent, the holder of the international registration may enter into negotiations with the owner of the earlier mark.

Fifth — challenging the cited right. In certain cases, the obstacle may be a trademark that is not actually used, was registered in bad faith, or is subject to other grounds for termination of legal protection. In such circumstances, protecting the interests of the holder of the international registration may require separate proceedings against the cited trademark. However, the mere filing of a corresponding claim or application should not automatically be regarded as eliminating the ground for provisional refusal: the legal consequences depend on the ultimate status of the cited right and the applicable procedural rules.

The Problem of Subjectivity in Assessing Similarity to the Point of Confusion

Despite the Regulation’s fairly detailed enumeration of similarity criteria, this category inevitably involves an evaluative element. The same designations may have:

• a high degree of phonetic similarity but substantial graphic differences;
• similar word elements but different semantic meanings;
• a common element that is weak or descriptive;
• a similar composition but a different dominant element.

The Regulation expressly provides that different characteristics of similarity may be taken into account both separately and in various combinations. Accordingly, the regulatory framework effectively requires a comprehensive assessment rather than the application of a formal test. It is precisely here that a risk of inconsistent examination practice arises.

It appears that a decision on provisional refusal should contain not only a reference to the cited trademark, but also a consistent explanation of:

1. which elements of the compared marks are dominant;
2. how the phonetic, visual, or semantic similarity manifests itself;
3. what differences between the marks have been identified;
4. why those differences are insufficient;
5. which goods or services are considered similar;
6. what factors confirm their similarity;
7. how the combination of these circumstances creates a likelihood of confusion among the relevant consumers.

Such an approach would increase the transparency of the examination and provide the holder of the international registration with a genuine opportunity to prepare a substantive response.

International Registration and the Principle of Independence of Territorial Refusals

An important feature of the Madrid System is the territorial independence of decisions made by national offices. A refusal by the Republic of Uzbekistan to grant protection to an international registration applies only to the territory of Uzbekistan and does not result in the cancellation of the international registration as such.

WIPO expressly states that a refusal by one member of the Madrid System does not affect the validity of the international registration in the other designated jurisdictions. This makes it possible to view an international registration not as a single “worldwide trademark,” but rather as a centrally administered set of territorial rights. An international registration has a single registration number and is centrally administered by WIPO; however, the extent of its actual territorial effect depends on the decisions of national and regional offices.

FINAL REFUSAL to Grant Legal Protection to an International Registration and the Procedure for Appealing It

If an internationally registered trademark does not comply with the requirements of the legislation of the Republic of Uzbekistan, the authorized body sends the International Bureau of the World Intellectual Property Organization a notification of provisional refusal to grant legal protection, specifying the grounds for such refusal.

The holder of the international registration is entitled, within six months, to submit its arguments concerning the reasons for the provisional refusal. If the relevant arguments are submitted in a timely manner, they are considered, and the results of such consideration are communicated to the WIPO International Bureau.

If the holder of the international registration fails to submit arguments concerning the grounds for the provisional refusal within the prescribed six-month period, a notification confirming the provisional refusal — a final refusal — is sent to the International Bureau.

A final refusal means that the international trademark registration is not granted legal protection within the territory of the Republic of Uzbekistan to the extent to which the refusal has been confirmed. At the same time, a final refusal issued by Uzbekistan does not terminate the international registration itself in the WIPO International Register and does not affect its validity in other countries in which protection has been granted. Accordingly, such refusal is territorial in nature and determines the legal status of the international registration exclusively in relation to the Republic of Uzbekistan.

The possibility of a partial refusal should also be taken into account. If the obstacles to granting legal protection relate only to certain goods or services, protection may be granted in respect of the part of the list for which the designation satisfies the applicable requirements. The national Regulation expressly provides for the possibility of adopting a registration decision in respect of only part of the goods where the designation complies with the legislative requirements only in relation to such part of the list.

Appeal Against a Final Refusal

A final refusal to grant legal protection to an international registration does not mean that all remedies provided under national legislation for protecting the interests of the right holder have been exhausted.

Article 16 of the Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin” provides for a special mechanism for appealing the results of state examination. Pursuant to that Article, an applicant is entitled to appeal the results of state examination to the Appeal Board of the Ministry of Justice of the Republic of Uzbekistan within three months from the date of the decision.

By its substance, this provision applies to state examination decisions, including a decision refusing legal protection to a trademark, since the examination results in either a decision to register the trademark or a decision to refuse its registration. Accordingly, the first national means of challenging a final refusal is the filing of an objection with the Appeal Board of the Ministry of Justice.

When preparing such an objection, the holder of the international registration may, depending on the grounds for refusal, rely in particular on:

• the absence of confusing similarity between the designations;
• the absence of similarity between the relevant goods or services;
• an incorrect assessment of the phonetic, graphic, or semantic characteristics of the compared designations;
• the absence of a likelihood of confusion among the relevant group of consumers;
• the weak distinctive character of the common element;
• acquired distinctiveness of the applied-for designation;
• the existence of duly executed consent from the owner of the cited trademark;
• the necessity of limiting the list of goods or services instead of imposing a complete refusal;
• other circumstances demonstrating compliance of the designation with the requirements of Articles 3 and 10 of the Law.

When considering a dispute concerning similarity to the point of confusion, the applicable Administrative Regulation is of substantial importance. It provides that similarity between word designations may be phonetic, graphic, and semantic, and that the assessment must be carried out taking into account the overall impression created by the designations.

When determining the similarity of goods, it is necessary to establish whether consumers may form an impression that the compared goods originate from the same manufacturer. In making this assessment, consideration is given to the type and intended purpose of the goods, the materials from which they are made, complementarity, interchangeability, conditions of sale, the relevant group of consumers, and other circumstances.

Accordingly, an appeal against a refusal should not be limited exclusively to a formal comparison of registration records or classes of the International Classification of Goods and Services. The subject of the assessment should be the overall likelihood of confusion between the designations under actual market conditions.

Judicial Appeal Against a Decision of the Appeal Board

If the Appeal Board upholds the refusal, the Law provides the applicant with an additional judicial remedy. Under part three of Article 16 of the Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin,” the applicant is entitled to appeal the decision of the Appeal Board to a court within six months from the date of adoption of the decision.

Accordingly, the legislation provides for a sequential two-stage model for appealing the results of state examination:

• the first stage — filing an appeal with the Appeal Board of the Ministry of Justice of the Republic of Uzbekistan within three months from the date of the decision;
• the second stage — judicial appeal against the decision of the Appeal Board within six months from the date of its adoption.

This structure means that, under the procedure provided for by Article 16 of the Law, the direct subject matter of judicial challenge is the decision of the Appeal Board itself.

For the holder of an international registration, this is of significant practical importance: receipt of a final refusal requires a timely transition to national legal remedies. The WIPO International Bureau does not review the substantive legal merits of the decision of the Uzbek authority. A dispute concerning whether the trademark complies with the requirements of the legislation of the Republic of Uzbekistan is resolved through the procedures provided for under national law.

Relationship Between Provisional and Final Refusal and National Appeal Procedures

It is necessary to distinguish between the submission of arguments in response to a provisional refusal and an appeal against a final decision.

At the provisional refusal stage, the holder of the international registration remains within the framework of the initial examination proceedings. By submitting its arguments within the six-month period, the holder seeks to persuade the examining authority to reconsider its initial position and grant legal protection to the designation either in full or in part.

An application to the Appeal Board, however, has a different legal nature. It constitutes an independent procedure for reviewing the already adopted result of the state examination pursuant to Article 16 of the Trademark Law.