Aug 03, 2023 (Newsletter Issue 7/23)
Competition Law Amended Excluding IP-Related Provisions
Amendments to Uzbek competition law will enter into force on October 4, 2023. They aim at reducing anti-competitive and unfair practices. However, provisions for the protection of IP rights have been entirely excluded.
The previous version of the law included the provisions which prohibited:
- Sale of goods with illegally used IP rights including the illegal use of a designation identical or confusingly similar to a trademark or trade name by placing it on goods, labels or packaging, or otherwise using it in relation to goods that are sold or put into circulation, as well as by using it in a domain name;
- Misleading consumers with products that resemble the original products of other companies by imitating their design, shape, names, labels, packaging, colors, trademarks, promotional materials or other elements;
- Registration of IP rights in bad faith.
The new competent body, the Competition and Consumer Protection Committee (CPCC) will have no authority to review and decide on IP-related cases. It appears that now there are no effective statutory mechanisms or governmental institutions to rely on when dealing with infringements based on unfair competition grounds.
The amendments are not in line with the Paris Convention, according to which every member of the Union is bound to ensure effective protection against unfair competition, and acts that create confusion as to the goods or the industrial or commercial activities of a competitor are to be prohibited.
Facts of infringement may still be based on the grounds of misleading the public as to the nature, the manufacturing process, the characteristics, the purpose or the quantity of goods (Article 10bis (3) (iii) of the Paris Convention). Conducting public surveys could be helpful in confirming confusing similarity between counterfeit and original products. In this case, IP owners would not be able to base their claims against infringers on the IP rights they own in Uzbekistan, but rather on the actual evidence that infringers are misleading local consumers.
However, Uzbekistan intends to accede to the World Trade Organization (WTO) and will hence have to align its legislation with all of the WTO’s agreements, including the Paris Convention. In accordance with the recent President’s Decree No.108 dated July 6, 2023, a new resolution aimed specifically at determining unfair competition acts will be adopted and used as a guide when dealing with such cases. Once this bylaw is adopted, it might be used to protect the interests of IPR owners in Uzbekistan.
Source: www.petosevic.com
May 01, 2023
Official Fees Raised
From May 1, 2023, the size of the basic calculation value used to calculate the number of state fees will increase in Uzbekistan, including for actions with objects of intellectual property.
The size of the basic estimated value increases by 10% (from 300,000 to 330,000 Uzbekistani sum). Accordingly, all fees for filing applications, registration, and other actions with trademarks, patents, and industrial designs in Uzbekistan increase by the same amount.
Source: www.craneip.com
May 19, 2022 (Newsletter Issue 6/22)Law on Geographical Indications AdoptedOn March 3, 2022, the first Law on Geographical Indications came into force in Uzbekistan, introducing the rules and grounds for registration and use of geographical indications (GIs).
The new law defines GIs as a designation identifying goods originating from a certain geographical area, if their quality, reputation, and other characteristics can be essentially attributed to their geographical origin.
The law provides for the registration of new GIs and the registration of the right to use existing GIs. It also allows for the registration of foreign GIs – the procedure is the same as for national GIs.
For more information, please see here Source: www.petosevic.com Dec 02, 2021 (Newsletter Issue 17/21 )Trademark Law AmendedOn August 20, 2021, Uzbekistan adopted amendments to the Law on Trademarks, Service Marks and Appellations of Origin.
Important novelties are the following:
- Expedited examination of trademark applications:
Expedited examination of applications should be completed within one month from the formal examination decision date. Expedited examination is an alternative to regular substantive examination. A request for expedited examination must be filed and additional fees apply. In addition, the applicant must order a trademark availability search.
- Third-party observations:
The Intellectual Property Agency (IPO) is required to publish information on new trademark filings on its official website within one working day from the application filing date. Interested parties may then submit written observations against filed applications.
- Exclusive trademark rights starting from the registration date:
The information about a trademark registration is recorded in the IPO’s register and published on the IPO’s website on the date of trademark registration. Previously, it was unclear whether trademark rights started on the date of publication or on the date of registration.
The amendments entered into force on August 21, 2021.
For more detailed information, please click hereSource: www.petosevic.com Oct 20, 2021 (Newsletter Issue 15/21)Procedure for Registration of Medical Devices SimplifiedAs of June 1, 2021, in accordance with the Presidential Decree of the Republic of Uzbekistan No. UP-6221, dated May 5, 2021, the simplified procedure of State registration for medical devices becomes possible.
Medical devices that have been registered with the following foreign organizations shall be subject to the simplified procedure:
- Food and Drug Administration (FDA), USA
- Bodies authorized to issue the European Certificate of Conformity (CE), European Union
- European Medicines Agency (EMA), European Union
- Pharmaceuticals and Medical Devices Agency (PMDA), Japan
- Ministry of Food and Drug Safety (MFDS), Republic of Korea
- Medicine and Healthcare Products Regulatory Agency (MHRA), United Kingdom
Medical devices and their components certified under the requirements of the above organizations during the State registration in the Republic of Uzbekistan, shall not be tested in vitro and shall be duly registered within 15 working days after filing an application for registration.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine and www. pharmprom.ru Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Apr 08, 2021 (Newsletter Issue 7/21)Changes to IP SystemOn January 28, 2021, the President of Uzbekistan issued the Resolution “On Measures to Improve the Intellectual Property Protection System”, introducing numerous changes in the field of intellectual property.
From April 1, 2021, the restriction on the registration of trademarks and service marks exclusively in the name of legal entities and natural persons carrying out entrepreneurial activities is abolished. All legal entities and natural persons are entitled to register their trademarks and service marks now.
In addition, an accelerated examination was introduced, which shortens the registration periods for intellectual property rights objects.
Further, exporters whose share of exports exceeds 60% of total turnover, as well as entrepreneurs active in the field of agriculture and handicrafts, are exempt from paying official fees.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine and PETOŠEVIĆ, Uzbekistan Oct 22, 2020 (Newsletter Issue 17/20)Intellectual Property Law AmendedAt the seventh plenary meeting of the upper House of Parliament, members of the Senate introduced the Law of the Republic of Uzbekistan "On Implementation of Changes and Additions to Some Legislative Acts of the Republic of Uzbekistan". The Law came into force on October 5, 2020.
The Law concerns 17 laws, including 8 codes and 9 laws. Amendments have also been made to the laws regulating the registration and protection of intellectual property rights.
Main changes are the following:
- The Agency on Intellectual Property of the Republic of Uzbekistan has been renamed the Agency on Intellectual Property under the Ministry of Justice of the Republic of Uzbekistan
- Applications for patents and registration of a trademark, appellation of origin and the right to use an appellation of origin are submitted to the Agency through state information systems
- The trademark registration may be cancelled if the trademark has not been used continuously for the last three years (previously - five).
Source: Mikhailyuk, Sorokolat and Partners Dec 05, 2019 (Newsletter Issue 17/19)Pharmaceutical Licensing Regulations AmendedOn April 10, 2019, the Uzbek President signed a decree which intends to accelerate the development of the pharmaceutical industry in Uzbekistan in 2019–2021. The decree entered into force on August 17, 2019.
According to amendments introduced by the decree, licenses for the production of pharmaceuticals are no longer granted by the Ministry of Health, but by the Agency for the Development of the Pharmaceutical Industry established under the same ministry.
The decree has also introduced a temporary measure intended to give priority to local manufacturers in the public procurement of pharmaceuticals. Namely, from July 1, 2019 until December 31, 2020, when a state body issues a pharmaceutical tender, if there are two or more local manufacturers of pharmaceutical products of the same international nonproprietary name (INN), all tender applications filed by foreign manufacturers of products of the same INN will be refused. Further developments after December 31, 2020 will depend on the results of this temporary measure.
For further information, please check hereSource: www.petosevic.com Aug 22, 2019 (Newsletter Issue 11/19)
Criteria for Determining Well-Known Trademarks Issued
A resolution introducing the criteria for determining whether a trademark is well known entered into force in Uzbekistan on July 2, 2019.
According to the resolution, a well-known trademark must be recognized in relation to the goods/services for which it is registered by the relevant public sectors including:
- Actual and/or potential consumers in Uzbekistan; or
- Persons involved in the distribution of the goods/services bearing the trademark; or
- Business circles dealing with the type of goods/services to which the trademark applies.
Furthermore, in order to be recognized as well known:
- The relevant sectors of the public must be able to recognize a certain quality of goods or services in connection with the trademark;
- The trademark must have high inherent distinctiveness, or acquired distinctiveness resulting from its extensive use in Uzbekistan, including the use in domain names in the Uzbek country code top-level domain (ccTLD); and
- The trademark must have commercial value resulting from its continuous and extensive use.
Source: www.petosevic.com
Feb 28, 2019 (Newsletter Issue 3/19)
Important Changes to IP Legislation
The resolution "On measures to improve state administration in the field of intellectual property" came into force on February 8, 2019.
Some important changes are below:
- The Intellectual Property Agency will be transferred to the Justice Ministry.
- The Ministry of Justice and the Prosecutor General’s Office has to conduct a complete inventory of trademarks registered in Uzbekistan until July 1, 2019.
- As of March 1, 2019, all trademarks applications are subject to mandatory publication in the UzPTO’s online database.
- Written comments on bad faith of applications for registration can now be submitted to the Agency.
- Exclusive rights to trademarks and service marks arise from the date of their registration in the State Register of Trademarks with the obligatory placement of information on registration sign on the official website of the Agency.
- The period during which a trademark certificate can be terminated on grounds of non-use is reduced from five to the last three years, as well as in violation of the collective mark use agreement.
Source: www.uzdaily.com, www.legalmaxlaw.com
Feb 28, 2019 (Newsletter Issue 3/19)
New Labelling Requirements for 54 Types
A decree introduces new labelling requirements for 54 types of imported and locally manufactured goods, including alcoholic and non-alcoholic beverages, cigarettes, gasoline, medicines, fertilizers, perfumes and cosmetics on November 30, 2018.
The new regulation introduces labelling with special markers or tangents used for authentication of products to improve IP rights protection.
The decree will enter into force on August 1, 2019 and will be determined by separate regulations.
Source: www.petosevic.com
May 08, 2018 (Newsletter Issue 9/18)Medicine Registration Regulation AmendedIn accordance with the Decree of the Cabinet of Ministers of the Republic of Uzbekistan of March 23, 2018, No. 213 new Regulations on the procedure of the State registration of medicinal products, active pharmaceutical substances (APIs) and medical devices have been published and have come into force.
According to said Regulations the time frame of conducting the procedure of registration of medicinal products and medical devices is reduced from 180 workdays to 120-155 days depending on type of the product and the time frame of conducting the procedure of registration of APIs is reduced from 180 workdays till 50 days. Also the structures of the registration dossiers on medicinal product, APIs and medical device are heavily modified.
The validity period of the Certificate about the state registration has not been changed and constitutes 5 years, after that it is necessary to renew it each time for the next 5 years.
For further information on the requirements and time frames, please check Registration of medicinal products in Uzbekistan or Registration of pharmaceutical ingredients in Uzbekistan.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine May 31, 2017 (Newsletter Issue 10/17)Legislative Acts AmendedThe Law of the Republic of Uzbekistan "On Amendments and Additions to Certain Legislative Acts of the Republic of Uzbekistan" ZRU-429 dated April 18, 2017 has amended the Civil Code of the Republic of Uzbekistan, the Law "On Trademarks, Service Marks and Appellations of Origin" as well as the Law “On Competition”.
The main change in the Civil Code of the Republic of Uzbekistan is the introduction of an Article relating to exhaustion of rights. According to the mentioned Article it is stipulated that a violation of an exclusive trademark right shall not be considered as use of the trademark in relation to goods or services which were legally introduced into civil circulation by the trademark owner directly or upon his consent. This means that the principle of national exhaustion of rights shall be applicable in Uzbekistan. Another Article specifies that a trademark may be invalidated in case of non-use during the last five years, while the previous version of the Civil Code stated the period of any five years.
The main changes introduced into the Law "On Trademarks, Service Marks and Appellations of Origin" are the following:
- The trademark registration will be also published on the website of the Patent Office next to the publication in the Official Gazette.
- The use of a trademark shall be considered now also as use in for example in advertisements, printed publications, displaying during exhibitions, using on signboards, letterheads, labels, packages of goods manufactured, offered for sale, sold or otherwise introduced into civil circulation or stored and/or transported with this purpose, or imported into the territory of Uzbekistan; on the documentation related to introduction of goods into civil circulation; in a domain name.
The amended law also reflects provisions as for exhaustion of rights and non-use of a trademark as amended in the Civil Code and mentioned above.
The main change introduced into the Law “On Competition” relates to adding a more comprehensive explanations as to what shall be regarded as unfair competition and introduction of a confusingly similar trademark.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Sep 01, 2011 (Newsletter Issue 10/11)
New Agency for Intellectual Property Established
Uzbekistan's president has signed a decree establishing the Agency for Intellectual Property.
“The State Patent Office of the Republic of Uzbekistan” and “Uzbek Republican Agency for Copyright” has ceased to exist as of August 16th, 2011. Address and contacts of the Agency for Intellectual Property remains the same.
Source: Petosevic and the Agency Tria Robit
The legal basis is the Trademark, Service Marks and Appellations of Origin Law, in force since September 20, 2001. The latest amendments to the law were introduced on March 3, 2022.
Uzbekistan is a member of the Madrid Protocol.
Trademark protection is obtained by registration.
Nice classification, 12th edition
A trademark may consist of verbal signs, figurative signs, three-dimensional signs or other signs in any colour or colour combination. Colours are theoretically registrable as trademarks.
The following trademark types are registrable: trademarks, service marks and collective marks.
The application is filed with the Intellectual Property Center under the Ministry of Justice of the Republic of Uzbekistan.
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.
The processing time from first filing to registration is approx. 8-10 months.
After registration, the trademark is published in the Ministry of Justice’s Official Bulletin which is also published on the official website of the Ministry.
National:Information about newly filed trademark application should be published on the official website of the Ministry of Justice within one working day after it is filed. Any interested person may file written observations in respect of the pending application. The term for filing observations is not stipulated by the Law, therefore they might be filed within the whole period of the examination (usually, within 7 months from the application filing date).
After the mark is granted legal protection and the registration certificate is issued, the mark details are published on the official website of the Ministry, and it may be opposed by any person before the Board of Appeals or a court. The court considers non-use cases and also cases on invalidation of trademark certificates. The Board of Appeals considers cases against decisions of examiners and on invalidation of trademark certificates. Decision of the Board of Appeals could be appealed to the court.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the date of application.
The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing an application is 24 Basic Calculation Values (BCV; 1 BCV = UZS 330,000 as of September 25, 2023), which equals UZS 7,920,000 for one class and 8 BCVs (UZS 2,640,000) for each additional class. The registration, publication and certificate issuance fee (including maintaining fee for the first 10 years of validity) is 47,5 BCVs (UZS 15,675,000 and 2 BCVs (UZS 660,000) for each additional class.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Sep 28, 2023
PETOŠEVIĆ, Tashkent, Uzbekistan