Trademark protection in Uzbekistan

Goods, works and services (hereinafter - the Goods) in demand always find their buyers and attract people who would like to get rich instantly and easily at the expense of the owner of a well-known product. Someone will dare to call their product by a name similar to a famous brand, while the other will not be afraid of making money by using a name that belong to a third company.

I suppose that every entrepreneur strives to ensure that the product he produces becomes highly in demand, and I doubt that the entrepreneur will like it when his product is counterfeited. In order to prevent occurrence and distribution of counterfeit (i.e. fakes), it is recommended to protect the name (designation) of your product by registering it as a “trademark”.

The Ministry of Justice of Uzbekistan (hereinafter - the Ministry) is an authorized state body in intellectual property field, and registers trademarks and other means of individualization. Trademark is registered as per the Administrative Regulations on provision of public services for registration of trademarks and service marks (approved by the Resolution of the Cabinet of Ministers of Uzbekistan dated September 19, 2023 No. 480), and the registration is confirmed by issuing a trademark certificate for 10-year term.

Article 20 of the Uzbek Law  "On Trademarks, Service Marks and Appellations of Origin of Goods" dated 30.08.2001 No. 267-II (hereinafter - the Trademark Law) stipulates that "A trademark certificate certifies the fact of registration of the designation declared as a trademark, the priority of the trademark and the exclusive right of the owner to the trademark in relation to the goods specified in the certificate." This law grants the trademark owner an exclusive right to use and assign the trademark.

The owner is entitled to use his trademark by:

a) using it on goods for which this trademark is registered, and(or) on the packages of such goods;

b) using it in advertising, printed publications, on official forms, signs, at exhibitions and fairs held in Uzbekistan;

c) using it in another way not prohibited by law.

At the same time, persons who have signed a license agreement with the trademark owner are also granted a preferential right to use this registered trademark.

A trademark registered with the Ministry or having an international registration in accordance with the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of June 27, 1989, provides its owner with the opportunity to prevent counterfeiting and/or sale of the goods produced by it. In this case, the international registration must also cover Uzbekistan.

The Uzbek law entitles the owner of a registered trademark to apply to the following government bodies for protection against unauthorized use of the trademark by third parties:

1) The Ministry of Justice;

2) The Appellate Authority of the Ministry of Justice (on certain issues);

3) The Courts of Uzbekistan;

4) The Committee for Development of Competition and Protection of Consumer Rights of Uzbekistan (hereinafter - the Antimonopoly Authority);

In practice, the following types of violations in the area of illegal use of a trademark are often encountered:

1) illegal use of a designation, which is lookalike to the trademark of another entity (for example, production and/or sale of household appliances under "Samsunc" name instead of "Samsung", or production and/or sale of medicines under "Mezzen Forte" name instead of "Mezim Forte", etc.);

2) illegal use of the trademark of another entity (i.e. the legal owner) in production and sale of goods without obtaining the written consent of the trademark owner (for example, production and sale in Uzbekistan of imported and world-famous chocolate "MARS" by an entity, which does not have a consent of "MARS" trademark owner);

3) parallel import (gray import), i.e. import of goods into Uzbekistan without consent of the trademark owner.

Before taking any action against the infringer, it is recommended to find out from the Ministry whether the designation used by the infringer, similar to the point of confusion (lookalike), is a registered trademark, and also to what class of the International Classification of Goods and Services (ICGS) the opposed trademark belongs, if it is registered. This fact can be found out by searching the Ministry's database of registered trademarks.

 

In the absence of registration of a designation, which is lookalike to your registered trademark, the following measures can be taken against the violator:

First: Filing a complain to the Ministry on production (sale, import) of counterfeit goods by the violator. It should be noted that the state body can take measures only if the violator is a resident of Uzbekistan. Actions can be taken against non-residents (foreign companies) if they have a presence in Uzbekistan, for example, in the form of a representative office or subsidiary of a foreign company in Uzbekistan.

If the Ministry confirms the similarity based on the relevant analysis of the contrasting signs, the Ministry issues the violator an order to cease production (sale, import) of counterfeit goods, as well as to withdraw the relevant products from the markets, which is mandatory for the violator.

Second: Filing a lawsuit to the court with request to ban importation, production and/or sale of counterfeit goods in Uzbekistan. In this case, it is recommended to involve the Ministry in litigation proceedings to obtain its official opinion on similarity of the infringer's designation with your registered trademark.

In practice, there are also cases of illegal use of a trademark by foreign entitites through production of counterfeit products outside of Uzbekistan, with subsequent import to and sale of such fake products in Uzbekistan. The Customs Code of Uzbekistan allows to ban the import of certain goods into Uzbekistan in order to ensure the ownership title, including for intellectual property. In this case, as noted above, the trademark owner is entitled to apply to the Uzbek court and put a ban on importation of counterfeit products into Uzbekistan. The court's decision (ruling) shall be the basis for putting the ban by the customs authorities on importation of counterfeit products into Uzbekistan. A ban on import can also be established through the court to stop parallel imports.

In addition to the above options, the applicant can also file a complain to the Antimonopoly Authority on unfair competition by the violator. The Antimonopoly Authority can also take measures only if the violator is a resident of Uzbekistan. It is important to note that the applicant is entitled to approach the Antimonopoly Authority even if the applicant does not have a registered trademark in Uzbekistan. If a third party (the violator) began to counterfeit the applicant's products even if the applicant does not have a registered trademark, the violator can be held liable for unfair competition. Moreover, if the violator registered the product(s) of a third party (the applicant) in his name as a trademark, the applicant can file a complaint with the Appellate Authority of the Ministry to cancel the registration of the violator's trademark, if the fact of unfair competition is confirmed.

Article 21 of the Uzbek Law "On Competition" dated 03.07.2023 No. ZRU-850 (hereinafter - the Law on Competition) prohibits unfair competition, which are "actions of an business entity or group of entities aimed at acquiring advantages in implementation of business activities that are contrary to legislation, business customs and cause or may cause losses to other business entities (competitors) or cause or may damage their business reputation." The methodology for identifying unfair competition (approved by the Resolution of the Cabinet of Ministers of Uzbekistan dated 29.12.2023 No. 694) establishes the following signs of unfair competition to protect the rights of honest entrepreneurs:

"a) the commission by business entities or a group of persons or other persons in their interests of actions aimed at acquiring advantages in implementation of business activities that contradict the law, business customs, as well as actions that cause or may cause losses to other business entities (competitors), including:

- introduction of goods into civil circulation by a competing business entity by repeating the external design and form, name, seal, label, packaging and color combination of goods, works and services (hereinafter - the goods), previously introduced into civil circulation;

- sale of goods by a competing business entity through unauthorized copying of advertising materials or part thereof;

- committing actions aimed at restricting the sale of goods previously introduced into civil circulation by obtaining an exclusive right to the means of individualization of goods, means of individualization of a competing economic entity".

 

If a designation similar to your trademark has also been registered with the Ministry as a trademark, then the only way to protect your registered trademark is to cancel the trademark certificate of "counterfeit" products by filing a complaint with the Appellate Authority of the Ministry or in court. Cancellation of the trademark certificate of "counterfeit" products will allow you to impose a ban on its production, import and/or sale on the market of Uzbekistan.

The Uzbek law provides for various types of liability for illegal use of a trademark and unfair competition.

Type of violation	Liability	Grounds
Illegal use of a trademark	Payment of compensation by the infringer to the trademark owner in the amount of 20 to 1000 Base Calculation Value (BCV), i.e. from 600 to 30,000 US dollars Compensation amount shall be determined by the parties or the court.	Article 26 of the Trademark Law of Uzbekistan
Illegal use of a trademark, name of place of origin of goods or lookalike designations for similar goods	A fine for legal entities from 100 to 200 (BCV), i.e. from  3,000 to 6,000 US dollars. The amount of fines is determined for each type of offense separately.	Article 37-1 of the Trademark Law of Uzbekistan
Illegal use of a trademark, service mark, geographical indication, name of place of origin of goods or lookalike designations for similar goods (services) or illegal use of someone’s company name. The same violation committed repeatedly within a year after imposing an administrative penalty	A fine of 15 to 30 BCV (i.e. from 450 to 900 US dollars), with confiscation of products (goods).     A fine of 30 to 50 BCV (i.e. from 900 to 1,500 US dollars), with confiscation of products (goods).	Article 177 Administrative Liability Code of Uzbekistan
Committing unfair competition	A fine for legal entities and sole entrepreneurs - in the amount of 2% (two percent) of the revenue from sale of goods in Uzbek market during last 3 (three) years	Article 42 of Competition Law of Uzbekistan