03-06-2012 (Newsletter Issue 4/12)
Accession to the Geneva Act
On December 21, 2011 the Republic of Tajikistan deposited its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The Geneva Act will take effect in Tajikistan on March 21, 2012.
The accession to this Agreement provides the owner of an industrial design with the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.
The Hague System simplifies the management of an industrial design registration, since it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO.
Source: www.wipo.int, Mikhailyuk, Sorokolat and partners, Ukraine
05-06-2011 (Newsletter Issue 7/11)
Accession to the Madrid Protocol
Tajikistan joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol concerning the International Registration of Marks. The Madrid Protocol enters into force on June 30th, 2011. (Tajikistan has been a member of the Madrid Agreement already since December 25th, 1991).
Following declarations was further made:
- Tajikistan opted for the extension of time limit for refusal of protection of an international registration from 12 to 18 months;
- In connection with each international registration designating Tajikistan and the renewal of any such registration, Tajikistan opted for the individual fee system, instead of a share in the revenue produced by the supplementary and complementary fees.
Source: www.wipo.com and Petosevic, Balkan Regional Office
Legal basis is the Trademark Act of December 12th, 1991.
Tajikistan is a member of the Madrid Agreement. From June 30th, 2011, Tajikistan is a member of the Madrid Protocol as well.
Trademark protection is obtained by registration.
Trademarks which were protected in the former Soviet Union are protected in Tajikistan only, if they were transcribed within the period stipulated.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, three-dimensional forms, sound marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks and collective marks.
The application is filed at the Patent Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
After registration, the trademark is published in the Patent Office Gazette.
There is no opposition period for pending application, i.e. an application is not published for opposition purposes. After the mark is granted and the registration certificate is issued, the mark details are published in the Official Bulletin, and it may be opposed by any person before the Board of Appeal within 5 years from the publication date of registration. The Court (as a first instance) considers only the non-use cases.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
no opposition period
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark.
If the trademark has not been used within 3 years from registration or has later not been used for 3 consecutive years, it may be subject to cancellation.
The official fee is approx. EUR 132.00 for one class, approx. EUR 66.00 for each additional class and approx. EUR 205.00 for the registration.
Trademark Licence Agreement
In Tajikistan a licence to use a trademark has to be in writing. It is not permitted to license the use of unregistered trademarks. A licence can be restricted to only some goods or services covered by the trademark. When a registered trademark is sold, the change of proprietor should be reflected in the agreement. The licence agreement should specify that the licensed rights are transferred to another proprietor and should define the amendments to be made to the agreement for each specific country. The licence agreement shall contain a quality clause that will oblige the licensee to produce goods not inferior to those produced by the licensor, and that the licensor shall closely monitor the observation of such quality provisions.
There are provisions in law for the mandatory recordal of a licensee with the Tajikistan PTO (State Service of the Republic of Tajikistan for Protection of Inventions and Registration of Trade and Service Marks). Unregistered licence agreements are not valid. There is no time frame for a recordal.
The following documents are required for a recordal:
1. A written licence agreement
2. A power of attorney, in the event that the licence agreement is signed by representative(s)
The licence is effective and enforceable against third parties after its recordal with the Tajikistan PTO. The licence is required to be published in the Official Industrial Property Bulletin after its registration.
There is an evidentiary presumption that use by a recorded licensee is permitted use. A licensee may join the owner in infringement proceedings. He can call upon the trademark owner to institute infringement proceedings only if this is provided for in the agreement. It should be stipulated in the agreement whether the licensee is required to cite the owner as co-defendant.
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We would like to thank the following law firms for their assistance in updating the information provided:
, Minsk, Belarus Licensing
IPR Group, Kiev, Ukraine