Patent Fees for Trademarks in Uzbekistan

The patent fee for filing a trademark application includes both the filing itself and the state examination of the sign. For one Nice class, the rate is moderate, but when the list of goods and services is expanded, the cost increases for each additional class. This means that an excessively broad list of classes immediately raises costs and at the same time complicates the examination process. Patent fees are identical for residents of Uzbekistan and for foreign individuals and foreign companies. The fee rates are divided only between individuals and legal entities.

Patent fees for registration, publication, and issuance of the certificate are charged only after a positive examination decision. They must be paid within 3 months from the date of dispatch of the decision by the state authority; if payment is made after this period, but no later than 6 months, the amount increases by 50%. This is one of the most practical risk-related rules: the applicant may successfully pass the examination, but lose momentum due to delayed payment.

Patent fees for maintaining validity / renewal of the certificate are the most sensitive for right holders with multi-class registrations. The fee for maintaining the certificate in force is paid upon the initial registration of the trademark (together with the fees for registration, publication, and issuance of the certificate). For an ordinary trademark, the rate for the first class is moderate, but for legal entities each additional class sharply increases the renewal cost. For a collective mark, the rates are even higher, which reflects its special legal regime.

Patent fees for agreements are divided into license agreements and assignment agreements. Registration of a trademark assignment is substantially more expensive than registration of a license, which is logical: the state regards a complete transfer of rights to a trademark as a more significant legal act.

Patent fees for amendments and division of an application / registration for trademarks are important in practice when the applicant changes its details, corrects an erroneous application, divides a conflicting list of goods, or formalizes the assignment of rights to the application before registration. These payments are comparatively lower than the fees for filing a new application, so the proper use of such mechanisms is often more economically advantageous than a full re-filing.

A separate block concerns extension and restoration of deadlines for responding to an examination office action. The Law of the Republic of Uzbekistan “On State Duty” allows extension of the deadline on a monthly basis and restoration of a missed deadline, but these are paid procedural actions. From a practical standpoint, these fees are the “cost of correcting procedural discipline.”

Another significant block is the Appeals Board of the Ministry of Justice of the Republic of Uzbekistan. For trademarks, the following are important here:

• appeals against examination decisions on the applied-for sign;
• appeals against the validity of a certificate;
• appeals for termination of a certificate;
• appeals against the effect of an international registration in Uzbekistan;
• applications for recognition of a mark as well-known.

Among these, the most expensive are applications for recognition as well-known and disputes concerning the validity / termination of a trademark.

Patent fees for trademarks and related actions

Type of action	Individual	Legal entity	Example in UZS 1 BCU = UZS 412,000
Filing an application for registration of a trademark and conducting examination — 1 Nice class	4 BCU	6 BCU	1,648,000 / 2,472,000
— For each class above one	0.5 BCU	1 BCU	206,000 / 412,000
Collective mark — 1 class	4 BCU	6 BCU	1,648,000 / 2,472,000
— Collective mark — for each class above one	0.5 BCU	1 BCU	206,000 / 412,000
Registration of a trademark (in case of a positive decision of the state authority on trademark registration)	1.2 BCU	2.4 BCU	494,400 / 988,800
Publication of information in the official bulletin (in case of a positive decision of the state authority on trademark registration)	0.4 BCU	0.8 BCU	164,800 / 329,600
Issuance of the certificate (in case of a positive decision of the state authority on trademark registration)	1.2 BCU	2.4 BCU	494,400 / 988,800
Maintenance of validity of the certificate — 1 class (in case of a positive decision of the state authority on trademark registration)	4 BCU	6 BCU	1,648,000 / 2,472,000
— Maintenance — for each class above one	1 BCU	4 BCU	412,000 / 1,648,000
Renewal of the certificate — 1 class	4 BCU	6 BCU	1,648,000 / 2,472,000
— Renewal — for each class above one	1 BCU	4 BCU	412,000 / 1,648,000
Maintenance of a collective mark — 1 class (in case of a positive decision of the state authority on trademark registration)	6 BCU	12 BCU	2,472,000 / 4,944,000
— Maintenance of a collective mark — for each class above one	1 BCU	2 BCU	412,000 / 824,000
Renewal of a collective mark — 1 class	6 BCU	12 BCU	2,472,000 / 4,944,000
— Renewal of a collective mark — for each class above one	1 BCU	2 BCU	412,000 / 824,000
License agreement for 1 trademark (registration)	4 BCU	6 BCU	1,648,000 / 2,472,000
— License agreement — for each additional trademark	1 BCU	2 BCU	412,000 / 824,000
Assignment agreement for 1 trademark (registration)	10 BCU	20 BCU	4,120,000 / 8,240,000
— Assignment agreement — for each additional trademark	1.5 BCU	3 BCU	618,000 / 1,236,000
Corrections / clarifications / supplements to a trademark application before the examination decision	0.5 BCU	1 BCU	206,000 / 412,000
Amendments to a trademark certificate	1 BCU	2 BCU	412,000 / 824,000
Registration of amendments to a license agreement / assignment agreement	0.5 BCU	1 BCU	206,000 / 412,000
Division of an application or division of a trademark registration (for each new part)	1.5 BCU	3 BCU	618,000 / 1,236,000
Change of applicant due to assignment of rights to the application before trademark registration	1.5 BCU	3 BCU	618,000 / 1,236,000
Extension of the deadline for responding to an office action on a trademark application — for each month	0.4 BCU	0.8 BCU	164,800 / 329,600
Restoration of the missed deadline for responding to an office action on a trademark application	2 BCU	4 BCU	824,000 / 1,648,000
Additional fee for the 6-month grace period after expiry of the trademark certificate	100% of the basic fee	100% of the basic fee	doubles the corresponding payment

 

Patent fees before the Appeals Board concerning trademarks

Type of filing with the Appeals Board	Individual	Legal entity	Example in UZS 1 BCU = UZS 412,000
Appeal against the examination decision on the applied-for sign, including a mark under international registration	2.4 BCU	4.8 BCU	988,800 / 1,977,600
Appeal against the validity of a trademark certificate	6 BCU	12 BCU	2,472,000 / 4,944,000
Appeal for termination of a trademark certificate	6 BCU	12 BCU	2,472,000 / 4,944,000
Appeal against the effect in Uzbekistan of an international trademark registration	6 BCU	12 BCU	2,472,000 / 4,944,000
Application for recognition of a trademark as well-known in the Republic of Uzbekistan	8 BCU	16 BCU	3,296,000 / 6,592,000
Extension of the deadline for submission of requested materials	0.4 BCU	0.8 BCU	164,800 / 329,600

Comments

The first important feature is that if the fee for filing the application and examination of the trademark is not paid in full, the examination is conducted only for those Nice classes that are covered by the payment; the missing amount may be paid within 3 months after notification. If this is not done, registration is not carried out, and the previously paid incomplete amount is not refunded.

The second feature is that an overpayment may, in principle, serve as grounds for a refund, since the law allows the refund of a state (patent) fee when an amount greater than required by law has been paid.

The third feature is that, after a positive decision on the trademark registration application, payment for registration, publication, issuance of the certificate, and maintenance of the certificate should not be delayed. Delay of up to 6 months increases the payment by 50% (100%), while later payment creates a risk of losing the result of the administrative procedure.

For a standard application by a legal entity for registration of an ordinary trademark (in 1 class), the minimum should be calculated as follows:

• filing and examination: 6 BCU = UZS 2,472,000;
• registration: 2.4 BCU = UZS 988,800;
• publication: 0.8 BCU = UZS 329,600;
• issuance of the certificate: 2.4 BCU = UZS 988,800;
• maintenance of the certificate in force: 6 BCU = UZS 2,472,000.

The total cost of trademark registration, excluding the services of a representative (patent attorney), may amount to: 17.6 BCU = UZS 7,251,200 for an ordinary mark in 1 class.

If a legal entity has 2 classes, then at the filing stage alone an additional 1 BCU = UZS 412,000 is added; upon renewal in due course, the cost increases even more significantly, because for a legal entity each additional class upon renewal costs 4 BCU. Therefore, excessive inclusion of classes is often economically inefficient.