Transferring trademark rights in Uzbekistan

In order to obtain legal protection in Uzbekistan, a trademark (service mark) requires mandatory registration with the Ministry of Justice of Uzbekistan (hereinafter - the Ministry) and obtaining a certificate for a trademark. A trademark registered outside of Uzbekistan may also be protected by virtue of international treaties to which Uzbekistan is a party.

The owner of a registered trademark holds an exclusive right to use and dispose his trademark. The term "use" means the use of a trademark:

a) on goods for which the trademark is registered, or on packaging of these goods;

b) in advertising, printed publications, on official forms, signs, when demonstrating exhibits at exhibitions and fairs held in Uzbekistan.

If a person, without permission of the trademark owner, manufactures, uses, imports, offers for sale, sells, introduces into civil circulation or stores for these purposes someone's trademark or goods marked with this trademark, or another designation lookalike to someone's trademark (in relation to homogeneous goods), then this trademark owner is entitled to demand ceasing illegal use of his trademark by the violator.

A person intending to use a trademark that does not belong to him shall conclude a license agreement with the trademark owner. This agreement is subject to mandatory registration with the Ministry and shall come into force only after such registration. This agreement entitles one person to use a trademark owned by another person. However, it is not allowed to conclude license agreements with respect to collective trademarks, i.e. marks owned by associations of legal entities or individuals.

License agreements may be concluded on a paid or gratuitous basis and shall contain the following conditions:

a) names and other details of the parties to the agreement (i.e. addresses, contact and bank details);

b) subject of the agreement, including certificate or international registration number of the trademark;

c) type of transfer of rights;

d) scope of rights transferred under the agreement;

d) territory of the agreement, i.e. the entire Uzbekistan, or only the region(s) or city(s);

e) term of the agreement, which shall not exceed the term of trademark certificate;

g) amount and other terms of remuneration for the trademark use, if the use implies a paid nature;

h) quality of the licensee's (the person using trademark) goods shall not be lower than the quality of licensor's (the owner of the trademark) goods and the licensor shall monitor fulfillment of this condition; 

i) a list of goods and/or services grouped in accordance with the International Classification of Goods and Services (ICGS).

During the term of license agreement, the trademark owner will be able to use his trademark. However, the license agreement may limit the owner's rights to issue a license to other persons. In absence of such restrictions in the agreement, the owner may exercise his right to issue licenses to other persons.

The license agreement shall stipulate whether the licensee is allowed to make sublicense agreements with third parties to grant them the right to use the trademark, or not. Sublicense agreements are also subject to registration with the Ministry, and in order to register them, it is also necessary to register with the Ministry the license agreement within the framework of which this sublicense agreement was signed.

A person who intends not only to use, but also dispose a trademark may acquire it from the trademark owner under a trademark transfer agreement (i.e. sale and purchase agreement or a gift agreement). In this case, the buyer shall become a new owner of all rights to the trademark. This agreement may also be paid or gratuitous, and is subject to mandatory registration with the Ministry. However, the transfer of trademark rights is not allowed if such transfer may mislead the consumer regarding the product or its manufacturer.

Terms and conditions of a contract for the trademark transfer are similar to the ones for license agreements, with the exception of some provisions. At the same time, both agreements shall be drafted in simple written form, in Uzbek or Russian language, or translated into one of these languages. Moreover, it is necessary to stitch and number all pages of these agreements, and not to make additions or corrections, or cross out words in the agreements.

Upon signing of these agreements, the trademark owner shall provide the following documents to the Ministry for their registration:

1) a standard application form, in Uzbek or Russian language. Foreign names and names of enterprises should be written in Uzbek or Russian transliteration;

2) an agreement or an extract from an agreement, certified by the parties, in 3 (three) copies;

3) a power of attorney for the  representative;

4) a payment confirmation statement for the state (patent) fee for agreement registration, or a document confirming the grounds for exemption from payment of this fee;

5) a document confirming succession or the right to inheritance (if necessary);

6) a copy of a previously registered license agreement, in case of registration of a sublicense agreement.

The documents attached to the application may be submitted to the Ministry in Uzbek, Russian or another language. If the documents are submitted in another language, they shall be accompanied by a translation into Uzbek or Russian language.

The following state (patent) fees are paid to the Ministry by applicants for registration of the above-mentioned agreements.

Agreement type	State (patent) fee
	For citizens and legal entities of Uzbekistan	For foreigners and foreign companies (non-residents)
Registration of license agreement:
a) with one trademark	2 BCV (approx. 60 US Dollars)	34 BCV  (approx. 1020 US Dollars)
b) with several trademarks; additional fee for each trademark mentioned in the license agreement	1 BCV (approx. 30 US Dollars)	17 BCV (approx. 510 US Dollars)
Registration of trademark transfer agreement:
a) with one trademark	3 BCV (approx. 90 US Dollars)	51 BCV (approx. 1530 US Dollars)
b) with several trademarks; additional fee for each trademark mentioned in the trademark transfer agreement	1,5 BCV (approx. 45 US Dollars)	25,5 BCV (approx. 765 US Dollars)

* at the end of 2024, 1 BCV equals to 375,000 Uzbek Soums (approx. 30 US Dollars)

The Ministry shall review submitted documents and within 15 days registers the above-mentioned agreements, or refuses to register them, if there are legal grounds for refusal.