Trade and Service Marks

– Law on Trademarks, Service Marks and Appellations of Origin, in force since September 20, 2001; last amendments in force since March 4, 2022.
– Competition Law, No. ZRU-319, in force since January 6, 2012, as amended.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since December 25, 1991.
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 25, 1991.
– Trademark Law Treaty, since September 4, 1998.
– Nice Agreement Concerning the International Classification of Goods and Services (Geneva Act), since January 12, 2002.
– Madrid Agreement Concerning the International Registration of Marks (was renounced by Presidential Decree on September 27, 2006, with effect from January 1, 2008).
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since December 27, 2006.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since April 15, 2012.

Filing

Applicant: individuals or legal entities. 

Foreigners: enjoy the same rights as nationals; must appoint an Uzbek agent. 

Kinds of protection: trademarks and service marks (word marks, device marks and combinations thereof); three-dimensional marks, sound marks, marks perceived by smell, holographic marks, luminous marks, collective marks.

Well-known marks: legal protection has to be granted in accordance with the Law on the Appeal Board’s decision.

Not registrable: emblems and flags, abbreviated and full names of international and intergovernmental organizations, official names of States, official control, guarantee marks and test marks, stamps, seals, rewards and other decorations and similar marks which may lead to confusion, marks which are not distinctive, which are generally used as denominations of the defined goods, generally accepted as symbols and terms, indicating the type, quality, quantity, property, purpose, usefulness of goods, place as well as time of their production and sale; marks corresponding to or consisting of geographical denominations identifying mineral water, vines or strong alcohol drinks used for indication of goods, which do not come from this place and which use in translation or in combination with such words as "kind", "type", "in style" and other similar words; whose content is contrary to humanitarian principles and to morality; companies' names (or parts thereof) belonging to other persons, industrial designs belonging to other persons. The protection cannot be granted for trademarks identical or similar to earlier registered trademarks (or applications) in the Republic of Uzbekistan or protected in accordance with International Treaties by another person, as well as for geographical indications and appellations of origin. The protection cannot be granted without the appropriate consent for: titles of well-known works of literature, science and art, surnames, pseudonyms and derivatives thereof, portraits, facsimiles.

Priorities: Conventional, exhibition (within six months after the exhibition), priority of a trademark earlier protected according to an international agreement of the Republic of Uzbekistan.

Classification: international. 

Territory covered: the Republic of Uzbekistan.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization): date, place, applicant’s name and address, signatory’s position are required;
2. 10 prints of the sign to be protected (min. size 8 x 8 cm, max. size 8 x 16 cm);
3. List of goods and services, according to the International Classification (to be translated into Uzbek or Russian); one application may include goods belonging to several classes;
4. Priority documents, if any (to be filed within three months from the filing date);
5. For collective marks: statute of the association;
6. Payment of the official filing fee (must be paid before filing, prepayment without time limitation, and receipt submitted); an application without payment receipt will not be accepted and will be returned.

For a change of name or address:
1. Certified copy of the document attesting to the change of name or address (no legalization), with the certified translation into Russian, scanned copy is accepted;
2. Power of attorney (no legalization);
3. Payment of the official recordal fee.

Electronic filing: available.

Examination Procedure

Examination: a formal examination and a substantive examination. Information on filed applications is posted on the official website within one working day after filing.

The formal examination is carried out within thirty days after the filing date and comprises checking the formal requirements.

The substantive examination is carried out after the completion of the formal examination, within seven months from the filing date, and comprises examination of similarity or identity in respect of previously filed applications/registrations in the Republic of Uzbekistan. Also, the application is checked against the requirements outlined in the Trademark Law (whether the designation is distinctive, not descriptive, not deceptive or misleading in terms of the quality of goods, whether it is registrable from the standpoint of the public interests, etc.). 

Accelerated examination: available since October 2021, is carried out within one month from the date of the decision to accept the application for consideration, provided that an additional fee is paid.

Disclaimers: available.

Letters of consent: can be accepted in order to overcome an objection based on earlier registration only for similar trademarks. The letter of consent can be simply signed if the signatory is a chief person. If it is the authorized person representing the owner, the signature is to be notarized. The LoC must be on the letterhead of the owner of the cited registration and must be submitted in original, contain full title and address of the owner of the cited (senior) registration and the owner of the junior trademark, signature of the authorized person representing the owner of the senior registration with indication of name and position, date, images of senior and junior trademark, list of goods/services in which relation the LoC is issued (for similar marks all goods/services of the junior trademark must be included).

Amendments and corrections: voluntary amendments or formal corrections may be filed during the entire formal and substantive examination periods before issuance of a granting decision with payment of the corresponding fee. Modification of the claimed sign is not accepted. Modifying the list of goods is accepted for reduction only. 

Appeal: possible against a negative decision of the Patent Office Examining Department, before the Appeal Board, within a three-month term of the date of the decision. If still negative, an appeal to the court may be lodged, within six months from the date of Appeal Board decision. 

Divisional application: may be filed during the formal or substantive examination before issuance of a granting decision; a divisional application retains the priority of the basic application.

Granting and Protection

Registration: within three days after the Patent Office has received the payment of the registration fees. 

Publication: trademark particulars are entered into the State Trade Mark Register after the granting decision, and are published in the Patent Office Gazette. 

Certificate of registration: to be issued within ten days after registration. From November 26, 2021, the certificate of registration is posted on the Patent Office's website. The paper format can be obtained free of charge upon written request.

Duration – extension: ten years from filing date; renewable for further ten-year periods. Grace period: six months.

Exclusive right: the exclusive right to use the registered trademark belongs to its owner. 

Obligation to use: compulsory. A trademark not used continuously during the last three-year period of its validity is vulnerable to a cancellation action introduced by a third party.

Nominal use: advertisement, publication of trademarks in newspapers, or presentation of the marked goods at exhibitions in Uzbekistan, may be considered as acts of use in absence of actual use.

Licenses: license must be in the form of a written contract registered in the Patent Office.

Assignment: must be registered; assignment for a part of goods or services is not accepted; not recognized if it leads to confusion in respect to the goods or the place or origin of its manufacturer; a collective trademark cannot be assigned.

Modification of Protection after Registration

Rights of prior user: not regulated. 

Compulsory license: not regulated.

Nullification: any person concerned during the entire period of validity may object to and appeal a trademark registration if the conditions established by part 2, Article 4 (obligatory business activity) and points 1-12, Article 10 (absolute grounds for refusal) of the Law are not fulfilled, or during five years after the publication date if the conditions established by points 13 and 14, Article 10 (relative grounds for refusal) are not fulfilled.

Infringement: penal provisions provided. The Law establishes the minimum and maximum amount that can be collected as a fine.

Unfair competition: the trademark may be invalidated within three years from the date of publication if the actions of the trademark holder are recognized as unfair competition.

Validation of invalidated mark: the expired trademark can be registered during three years from the date of the expiration of its validity only in the name of the former owner. The same applies to a trademark abandoned prior to its renewal date. 

Divisional certificate: in case of a cancellation risk for a part of goods a certificate may be divided by the owner’s request for goods which are unchallenged; a divisional certificate retains the priority of the basic certificate. 

Amendment of trademark representation: insignificant modification of the trademark representation is accepted.

Entry of intellectual property objects into Customs Register of Intellectual Property Objects: the procedure for sending and receiving applications for entry into the Register of Intellectual Property Objects in electronic form through the Customs Information System "Single Window" is being introduced.