REPUBLIC OF UZBEKISTAN
LAW ON TRADEMARKS AND SERVICE MARKS
(May 7, 1993) TABLE OF CONTENTSChapter 1 General Provisions
Art. 1 Relations Governed by this Law
Art. 2 Patent Office of the Republic of Uzbekistan
Art. 3 Legal Protection of the Trademark of Service Mark and The Collective Mark Chapter II Conditions Governing the Protection of the Trademark or Service Mark and the Collective Mark
Art. 4 Trademark, Service Mark and Collective Mark
Art. 5 Absolute Grounds for Refusal of Registration of a Mark
Art. 6 Other Grounds for Refusal of Registration of a Mark Chapter III Registration of the Mark and the Collective Mark
Art. 7 Filing of the Application for Registration of the Mark
Art. 8 Conditions to be Met by the Application for Registration of a Mark
Art. 9 Conditions to be Met by the Application for Registration of a Collective Mark
Art. 10 Priority of the Mark
Art. 11 Examination of the Application for Registration of a Mark
Art. 12 Examination as to Form
Art. 13 Substantive Examination of the Application
Art. 14 Appeal Against the Decision on the Application and Restoration of Rights Determined by Time Limits
Art. 15 Registration of the Mark
Art. 16 Publication of the Registration Particulars
Art. 17 Title of Protection Chapter IV Exclusive Rights in the Mark
Art. 18 Exclusive Rights in the Mark
Art. 19 Obligation to Exploit the Mark
Art. 20 Notice of Reserved Rights
Art. 21 Transfer of the Rights in the Mark
Art. 22 Transfer of the Mark in the Event of Restructuring of the Legal Entity that Owns It Chapter V Validity of Titles of Protection
Art. 23 Term of the Registration Certificate
Art. 24 Extension of the Term of the Registration Certificate
Art. 25 Recording of Amendments on the Registration Certificate
Art. 26 Conditions Governing Re-Registration of the Mark Chapter VII Sanctions Protecting Trademark Rights
Art. 29 Consideration of Disputes Arising from the Application of this law
Art. 30 Sanctions for Unlawful Use of the Mark Chapter VIII Final Provisions
Art. 31 Fees
Art. 32 Registration of the Mark Abroad
Art. 33 Rights of Foreign Natural Persons and Legal Entities
Art. 34 International Treaties
CHAPTER 1 RELATIONS GOVERNED BY THIS LAW
Art. 1
The relations arising out of the registration, legal protection and use of trademarks and service marks in the Republic of Uzbekistan shall be governed by this Law and by other legislative enactments of the Republic of Uzbekistan.
Relations arising out of the legal protection of trademarks and service marks in the Republic of Karakalpakstan shall likewise be governed by the legislation of the Republic of Karakalpakstan. PATENT OFFICE OF THE REPUBLIC OF UZBEKISTAN Art. 2
1. In accordance with the Law, the Patent Office of the Republic of Uzbekistan (hereinafter referred to as "the Patent Office") shall carry out an integrated policy of trademark and service mark protection.
The Patent Office shall receive applications for the registration of trademarks and service marks, effect the examination and official registration thereof, issue certificates, keep the official registers, publish official information, enact the rules for the interpretation of the provisions of this Law and perform other functions pursuant to the Ordinance promulgated by the Cabinet of Ministers of the Republic of Uzbekistan.
2. The activities of the Patent Office shall be financed from fees collected by the said Office for the performance of legal acts in relation to trademarks and service marks, from funds allocated for the purpose in the budget of the Republic of Uzbekistan and from charges made by the Patent Office for services and documents provided by it. LEGAL PROTECTION OF THE TRADEMARK OR SERVICE MARK AND THE COLLECTIVE MARK Art. 3
1. In the Republic of Uzbekistan, the legal protection of trademarks or service marks and collective marks (hereinafter referred to as "marks") is provided on the basis of the official registration thereof and the issue of a registration certificate, which shall be carried out according to the provisions of this Law.
2. The rights in the mark shall be protected by law.
3. Any person, whether natural person or legal entity, who engages in economic or business activity and is concerned with the distribution of merchandise shall be entitled to the benefit of legal protection for his mark. CHAPTER II CONDITIONS GOVERNING THE PROTECTION OF THE TRADEMARK OR SERVICE MARK AND THE COLLECTIVE MARK TRADEMARK, SERVICE MARK AND COLLECTIVE MARK Art. 4
1. The trademark and service mark are signs serving to distinguish the products manufactured and the services offered by a natural person or legal entity from the products or services (hereinafter referred to as "products") of the same type manufactured or offered by another natural person or legal entity.
2. The trademark of a union or an association of traders or any other free association of enterprise (hereinafter referred to as "associations"), being intended to designate products manufactured and sold by the association that have common qualitative or other characteristics, shall be considered a collective mark.
3. Word forms, figurative or three-dimensional signs and other signs or combinations thereof may be registered as marks.
4. A mark may be registered in any color or any combination of colors. ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION OF A MARK Art. 5
1. Those marks may not be registered that consist solely of signs or designations:
that have no distinctive character;
that constitute armorial bearings, flags or emblems of States, the official names of states, the abbreviated or full names of international or intergovernmental organizations, official signs of hallmarks denoting control or warranty or assay marks, or decorations or other honorary insignia, or those that are confusingly similar to such signs or designations, or those that consist entirely or partly of a geographical indication liable to be taken for the name of the place where the manufacturer of the goods is established; such signs or designations may be included in the mark as unprotected elements, subject to the consent of the owner thereof or of the competent body;
--that have become a generic designation for products of a particular type;
--that constitute everyday symbols or expressions;
--that denote the type, quantity, properties, intended purpose or value of the products, or the place and time of their production or distribution.
The signs or designations referred to in the fourth and fifth subparagraphs of this paragraph may be incorporated in the trademark as unprotected elements insofar as they do not predominate.
2. Those signs or designations may not be registered as marks:
--that are inaccurate or liable to mislead the consumer as to the product or the producer thereof;
--where the content of the said signs or designations is contrary to the public interest, humanitarian principles or morality. OTHER GROUNDS FOR REFUSAL OF REGISTRATION OF A MARK Art. 6
1. Those signs and designations may not be registered as marks that are identical or misleadingly similar:
--to marks that are registered or for which an application for registration in the Republic of Uzbekistan has already been filed on behalf of a third party for products of the same type;
--to marks of third parties protected-without registration-under international treaties to which the Republic of Uzbekistan is party;
--to certification marks registered according to the established procedure.
2. Those signs and designations shall not be registered as marks that constitute reproductions
--of trade names (or parts thereof) belonging to third parties and known on the territory of the Republic of Uzbekistan if the third party's rights in the name arose prior to the filing of the application for protection of the mark for products of the same type;
--of industrial designs where the rights in the said designs belong to third parties in the Republic of Uzbekistan;
--of the names of scientific, literary or artistic works known in the Republic of Uzbekistan, of characters of quotations from such works, except with the consent of the owner of the copyright or his successors in title (heirs);
--of surnames, forenames, pseudonyms and derived names and also portraits and facsimiles of known persons except with the consent of those persons or their heirs, or that of the competent body where the signs or designations form part of the historical and cultural heritage of the Republic of Uzbekistan. CHAPTER III REGISTRATION OF THE MARK AND THE COLLECTIVE MARK FILING OF THE APPLICATION FOR REGISTRATION OF THE MARK Art. 7
The application for registration of the mark (hereinafter referred to as "the application") may be filed by a natural person or legal entity (hereinafter referred to as "the applicant") either in person or through a patent agent registered with the Patent Office. Natural persons resident outside the Republic of Uzbekistan and foreign legal entities, and their patent agents, shall, in order to effect the registration of a mark or perform legal acts in relation thereto, act through parent agents registered with the Patent Office. The powers of the patent agent shall be attested by a power of attorney given him by the applicant. CONDITIONS TO BE MET BY THE APPLICATION FOR REGISTRATION OF A MARK Art. 8
1. The application shall relate to one mark only.
2. The application shall contain:
--a request for registration of a sign as a mark, in which the applicant's name and also his headquarters or residence shall be stated;
--the sign in respect of which the application is filed and a description thereof;
--the list of the products for which registration of the mark is sought, grouped according to the classes of the International Classification of Goods and Services for the Purposes of the Registration of Marks.
3. The application shall be accompanied by proof of payment of the prescribed fee and a document attesting the powers of the patent agent, if the application is filed through such an agent.
4. The requirements to be met by the documents constituting the application shall be laid down by the Patent Office. CONDITIONS TO BE MET BY THE APPLICATION FOR REGISTRATION OF A COLLECTIVE MARK Art. 9
1. In addition to the documents mentioned in Article 8 of this Law, the application for registration of a collective mark shall contain the rules of the mark.
2. The rules of the collective mark shall specify
--the business style of the association authorized to have the collective mark registered in its name;
--the purpose of the registration of the mark;
--the list of persons or entities authorized to use it'
--the list of products that will be designated by the collective mark, including their common qualitative or other characteristics;
--the conditions governing its use;
--the means of supervising such use;
--the sanctions applicable in the event of infringement of the rules of the collective mark.
3. The requirements to be met by the documents constituting the application for registration of the collective mark shall be laid down by the Patent Office. PRIORITY OF THE MARK Art. 10
1. The priority of a mark shall be determined by the date on which the Patent Office receives an application drawn up in accordance with the provisions of Articles 8 and 9 of this Law.
2. The priority of a mark may be determined by the filing date of the first application made in respect of the said mark in a member State of the International Union for the Protection of Industrial Property, provided that the Patent Office receives the application within six months following that date (Convention priority).
3. The priority of a mark affixed to a product displayed at an official or officially recognized international exhibition organized on the territory of one of the member States of the International Union for the Protection of Industrial Property may be determined by the date as from which the product in question was on public display at the said exhibition, provided that the Patent Office receives the application within six months following that date (exhibition priority).
4. The applicant who wishes to avail himself of the right of Convention priority or the right of exhibition priority shall so state on filing the application or within the two months following the date of receipt of the application by the Patent Office, and shall submit the documents substantiating the validity of his claim either at the same time or not more than three months after the date of receipt of the application by the Patent Office.
5. The priority of a mark may be determined by the date of international registration of the mark under the international registration of the mark under the international treaties to which the Republic of Uzbekistan is party. EXAMINATION OF THE APPLICATION FOR REGISTRATION OF A MARK Art. 11
1. The examination of the application, which shall comprise an examination as to form and a substantive examination, shall be conducted by the Patent Office.
2. During the examination of the application and before a decision is taken thereon, the applicant shall have the right to add to, specify or correct the elements of the said application on his own initiative.
Where additional elements alter the substance of the application, they shall not be taken into consideration, and the applicant shall have the right to submit them as a separate application.
3. During the examination of the application, the Patent Office shall have the right to invite the applicant to furnish additional elements without which the examination is impossible.
Where the applicant is invited by the examiner to furnish such additional elements, he shall do so within two months following the date of receipt of the invitation. That period may be extended at the request of the applicant, provided that the request is received before the said period expires. Where the applicant has not observed the time limits set, or has not responded to the examiner's invitation, the application shall be deemed withdrawn.
4. The applicant may withdraw his application at any time in the course of the examination procedure, but not after the date of registration of the mark.
5. Applications taken into consideration by the Patent Office shall not be returned to the applicant. EXAMINATION AS TO FORM Art. 12
1. The application shall undergo examination as to form within one month following the date on which it was received by the Patent Office.
2.The examination as to form shall serve to verify the contents of the application and the presence of the necessary documents, and also their conformity to the established rules. The applicant shall be informed, according to the result of the examination as to form, that his application has or has not been taken into consideration.
3.If the application is taken into consideration, the applicant shall be informed of the priority date of the mark, except where he is claiming Convention priority or exhibition priority but has not, by the date on which the Patent Office decides to take the application into consideration, submitted the necessary elements to substantiate the validity of his claim. SUBSTANTIVE EXAMINATION OF THE APPLICATION Art. 13
1. Substantive examination of the application shall take place after the examination as to form has been completed and within 12 months following the date of receipt of the application by the Patent Office.
It shall serve to determine whether the sign in respect of which the application is filed meets the conditions specified in Articles 5, 6, 8, and 9 of this Law, and also to determine the priority date of the mark if it has not been determined in the course of the examination as to form.
2.The decision to register the mark or to refuse such registration shall be based on the findings of the substantive examination.
3.The decision to register the mark may be reconsidered if an application is received that has an earlier priority date under Article 10 of this Law. APPEAL AGAINST THE DECISION ON THE APPLICATION AND RESTORATION OF RIGHTS DETERMINED BY TIME LIMITS Art. 14
1. The applicant shall have the right to inspect the elements specified in the examiner's decision and may request copies of the said elements within one month following the date of receipt of the decision.
2. In the event of disagreement with the decision taken at the end of the examination as to form or the substantive examination, the applicant shall have the right to appeal against the said decision to the Board of Appeal of the Patent Office (hereinafter referred to as "the Board of Appeal") within three months following the date on which he received notice thereof. The appeal shall be considered by the Board of Appeal within four months.
3.In the event of disagreement with the finding of the Board of Appeal, the applicant may, within six months, lodge a further appeal with the Supreme Court.
4.The applicant who fails to observe the time limits provided for in Article 11(3) of this Law or in paragraph (1) of this Article may have his rights restored by the Patent Office if he files a request to that effect not later than two months after the expiration of the time limit concerned, provided that he submits a legitimate excuse and pays the prescribed fee. REGISTRATION OF THE MARK Art. 15
1. On the basis of the decision to register the mark, the Patent Office shall effect registration in the Official Register of Marks of the Republic of Uzbekistan (hereinafter referred to as "the Register"). The following elements shall be entered in the Register and on the registration certificate: a reproduction of the mark, the particulars concerning the owner of the mark, the priority date of the mark and the date of registration, the list of goods for which the mark is registered and other particulars concerning the registration of the mark, and any amendment subsequently made to those particulars.
2. In the case of a collective mark, a list of the enterprises authorized to make use of the mark shall be recorded in the Register and entered on the collective mark certificate in addition to the particulars provided for in paragraph (1) of this Article.
The owner of the collective mark shall notify the Patent Office of any amendment of the rules of the said mark. PUBLICATION OF THE REGISTRATION PARTICULARS Art. 16
1. The particulars of the registration of the mark that have been entered in the Register under Article 15 of this Law shall be published in the Official Journal of the Patent Office.
Any subsequent amendment to the registration particulars shall likewise be published.
The full list of particulars to be published shall be specified by the Patent Office. TITLE OF PROTECTION Art. 17
1. Any mark registered under the Law shall give rise to the issue of an official registration certificate.
2.The registration certificate shall be issued by the Patent Office within the three months following the registration of the mark in the Register and the receipt of proof of payment of the prescribed fee.
3.The registration certificate shall attest the registration as a mark of the sign in respect of which the application is made, the priority date of the said mark and the owner's exclusive rights in the mark for the goods and services specified in the certificate.
4.The layout of the certificate and the list of particulars contained therein shall be specified by the Patent Office. CHAPTER IV EXCLUSIVE RIGHTS IN THE MARK EXCLUSIVE RIGHTS IN THE MARK Art. 18
1. The owner of the mark shall have the exclusive right of use and disposal thereof, including the right to authorize or prohibit its use by third parties.
No one may use a protected mark in the Republic of Uzbekistan without prior authorization from the owner thereof.
2.The marketing of a mark or of a sign misleadingly similar to a mark shall constitute an infringement of the rights of the owner of the mark if it is done without authorization. OBLIGATION TO EXPLOIT THE MARK Art. 19
1. The owner of the mark shall be bound to exploit the mark.
2. The affixing of the mark on products for which it is registered or on the packaging thereof by agreement under the owner of the mark of any person to whom the right to use the mark has been granted pursuant to a license Article 21 of this Law shall be deemed use of the mark.
The use of the mark in advertising, in printed publications, on signs or in connection with the display of products at fairs or exhibitions may also be deemed use of the mark.
3.Persons, whether natural persons or legal entities, who exercise an intermediary activity shall have the right to use their own trademarks in conjunction with the trademark of the manufacturer of the goods if they have so agreed with him by contract.
4.The validity of the registration certificate may be prematurely terminated, either entirely or in part, on a decision of the Supreme Court, handed down at the request of any third party, where the mark has remained unexploited for five years following the date of registration thereof, or for five years on the filing date of the request.
The decision on whether or not to terminate the validity of the registration certificate prematurely for lack of exploitation may be made subject to the consideration of evidence submitted by the owner of the mark to show that the lack of exploitation was due to factors beyond his control. NOTICE OF RESERVED RIGHTS Art. 20
1. The owner of the mark may add a notice alongside the mark to the effect that the sign or designation affixed to the product or to the packaging thereof is a mark registered in the Republic of Uzbekistan.
2. Any person who adds a reserve rights notice alongside a mark not registered in the Republic of Uzbekistan shall be liable to sanctions under the legislation of the Republic of Uzbekistan. TRANSFER OF THE RIGHTS IN THE MARK Art. 21
1. The exclusive rights in the mark may be contractually assigned by the owner thereof to any other interested natural person or legal entity in respect of all or some of the products specified in the certificate.
2.No transfer of rights shall be authorize where it might mislead the consumer as to the product or the manufacturer thereof.
3.The owner of the mark (the licensor) may grant the right to exploit the mark to a third party (the licensee) under the terms of a license agreement.
The license agreement shall specify that the quality of the licensee's products shall not be inferior to that of the licensor's products and that the observance of the said condition shall be verified by the licensor.
4.The contract of assignment of the mark and the license agreement shall be registered by the Patent Office, which on that occasion shall charge a fee. Without registration they shall be deemed null and void.
5.The collective mark and the right to use it may not be transferred to other natural persons or legal entities without the consent of the joint owners. TRANSFER OF THE MARK IN THE EVEN OF RESTRUCTURING OF THE LEGAL ENTITY THAT OWNS IT Art. 22
1. In the event of the merging of legal entities, the mark shall be transferred to the newly registered legal entity.
2.In the event of the partition of the legal entity that owns the mark, the latter shall be transferred to the newly registered legal entity to which the manufacture of the products or the corresponding service activity has been transferred. Where the owner of the mark retains part of the activities relating to the manufacture of the products, or the rendering of the services, for which the mark is registered, both legal entities may, provided that they agree between themselves (which fact shall be evidence by contract), be recognized as joint owners of the mark.
The contract shall be registered by the Patent Office, which on that occasion shall charge a fee. Without registration it shall be deemed null and void.
3.Where the legal entity that owns the mark is absorbed within another legal entity, the rights in the mark shall be transferred to the latter. CHAPTER V VALIDITY OF TITLES OF PROTECTION TERM OF THE REGISTRATION CERTIFICATE Art. 23
1. The term of the registration certificate shall be 10 years from the priority date.
2.The validity of the certificate may, on a request filed by the owner in the course of the last year of the current term, be extended for successive 10-year terms against payment of a fee.
For the purposes of the extension of the validity of the registration certificate, the owner thereof may, at his request and against payment of an additional fee, be allowed a period of grace of six months after the current term has expired. EXTENSION OF THE TERM OF THE REGISTRATION CERTIFICATE Art. 24
1. The request for extension of the term of the registration certificate shall be filed with the Patent Office. The following shall be filed with the said request:
The original of the registration certificate;
Proof of payment of the prescribed fee;
A document attesting the powers of the paten agent, if the request for extension is filed through such an agent.
2.Any extension of the term of the registration certificate shall be recorded in the Register of Marks and on the registration certificate. RECORDING OF AMENDMENTS ON THE REGISTRATION CERTIFICATE Art. 25
1. The owner of the mark (or of the collective mark) shall inform the Patent Office of any amendment to his business style, family name, forename or patronymic, any reduction in the list of goods for which the mark is registered, any amendment to elements of the mark that have no effect on its nature and any other amendment concerning the registration of the mark.
2.The Patent Office shall record amendments in the Register and on the registration certificate against payment of a fee. CONDITIONS GOVERNING RE-REGISTRATION OF THE MARK Art. 26
1. When the term of the registration certificate has expired, the mark may not be re-registered in the name of a person other than the previous owner until three years have elapsed following the date on which the term of registration ended.
2. The rule state in paragraph (1) of this Article shall apply also where the owner of the mark renounces the mark before the term of the registration expires. CHAPTER VI END OF THE LEGAL PROTECTION OF THE MARK Art. 27
1. The registration certificate may be invalidated either entirely or in part at any time during the period of validity thereof of, when it was granted, the conditions laid down in this Law or in an international treaty to which the Republic of Uzbekistan is part were not fulfilled.
2. In the event of disagreement with a measure provided for in paragraph (1) of this Article, the person concerned may refer the matter to the Board of Appeal. The opposition filed against the registration of the mark shall be considered within the four months following the receipt thereof. The opponent and the applicant or the owner of the mark may take part in the deliberations of the Board of Appeal.
3. The decision of the Board of Appeal may be the subject of a further appeal to the Supreme Court within six months following the date on which it was taken. END OF THE EFFECTS OF THE REGISTRATION CERTIFICATE Art. 28
1. The registration certificate shall cease to produce its effects in accordance with the provisions of Article 23 of this Law.
2.The effects of the registration certificate shall be terminated prematurely:
--on a decision of the Supreme Court where, in the case of a collective mark, the mark is used on goods that do not have common qualitative or other characteristics as provided in Article 9(2) of this Law;
--on a decision of the Supreme Court for lack of exploitation of the mark, as provided in Article 19(4) of this Law;
--in the case of invalidation of the certificate under Article 27 of this Law;
--in the case of the winding up of the legal entity that owns the mark;
--on a decision of the Supreme Court where the mark has become a common designation for goods of a particular type;
--on renunciation by the owner of the mark. CHAPTER VII SANCTIONS PROTECTING TRADEMARK RIGHTS CONSIDERATION OF DISPUTES ARISING FROM THE APPLICATION OF THIS LAW Art. 29
Disputes arising from the application of this Law shall be considered by the competent courts according to the procedures laid down in the legislation of the republic of Uzbekistan. SANCTIONS FOR UNLAWFUL USE OF THE MARK Art. 30
1. Where the use of the mark or of a sign similar to it for products of the same type is contrary to the provisions of Article 18 of this Law, the natural persons or legal entities found guilty of the act shall be liable to sanctions under the legislation of the Republic of Uzbekistan.
2. Natural persons and legal entities whose acts have infringed the rights of the owner of the mark shall be bound, at the request of the latter:
--to have the court decision published, at their own expense, for the purposes of the restoration of the business reputation of the injured party;
--to discontinue the use of the mark or the sign confusingly similar to it and to compensate the injured party for the total amount of the prejudice caused or pay him the full amount of the profits realized by them through their unlawful use of the said mark or sign;
--to remove from the products or from the packaging thereof the unlawfully used mark or the sign confusingly similar to it and to destroy existing reproductions of the mark or sign in question. CHAPTER VIII FINAL PROVISIONS FEES Art 31
The performance of legal acts associated with the registration of a mark shall give rise to the payment of fees. Such fees shall be paid to the Patent Office. The list of the acts for the performance of which fees are payable and also the amounts of such fees, the time limits for payment and the conditions governing reimbursement, shall be specified by the Patent Office. REGISTRATION OF THE MARK ABROAD Art. 32
1. Any natural person or legal entity of the Republic of Uzbekistan shall be entitled to have a mark registered abroad or to have it registered internationally.
2.The registration of a mark abroad by a natural person or legal entity of the Republic of Uzbekistan shall follow the filing of an application with the Patent Office of the Republic of Uzbekistan.
3.Costs arising in connection with the registration of the mark abroad or the international registration thereof shall be borne by the applicant or, with his agreement, by any other interested natural person or legal entity. RIGHTS OF FOREIGN NATURAL PERSONS AND LEGAL ENTITIES Art. 33
Foreign natural persons and legal entities shall, by virtue of international treaties to which the Republic of Uzbekistan is party or on the basis of reciprocity, enjoy the rights provided for in this Law on the same footing as natural persons and legal entities of the Republic of Uzbekistan. INTERNATIONAL TREATIES Art. 34
If an international treaty to which the Republic of Uzbekistan is party contains provisions different from those of this Law, the provisions of the said international treaty shall be applicable | 
