Law of the Republic of Uzbekistan No. 267-II of August 30, 2001, on Trade Marks, Service Marks and Appellations of Origin, Uzbekistan, WIPO Lex

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English Law of the Republic of Uzbekistan No. 267-II of August 30, 2001, on Trade Marks, Service Marks and Appellations of Origin

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LAW OF THE REPUBLIC OF UZBEKISTAN ON TRADE MARKS AND SERVICE MARKS AND APPELLATIONS OF ORIGIN (published on September 22, 2001)

LAW
OF THE REPUBLIC OF UZBEKISTAN
ON TRADE MARKS AND SERVICE MARKS
AND APPELLATIONS OF ORIGIN
(published on September 22, 2001)

Article 1. Aim of this Law

This Law shall govern the relations arising in connection with the use of trademarks_,service marks and appellations of origin.

Article 2. Legislation relating to trade marks, service marks and appellations of origin

Legislation relating to trade marks, service marks and appellations of origin shall
consist of this Law and other legislative acts.

If an international agreement to which the Republic of Uzbekistan is party establishes rules other than those provided for by the laws of the Republic of Uzbekistan on trade marks, service marks and appellations of origin, the rules of the international agreement shall apply.

Article 3. Trade mark and service mark

A trademark and service mark (hereinafter -trade mark) is a designation, registered in accordance with the established procedure, which serves to distinguish goods and services (hereinafter -goods) of particular natural and legal persons from identical goods of other natural and legal persons.

Trademarks may be individual and collective.

An individual mark shall be a trademark belonging to an individual natural or legal person.

A collective mark shall be a trademark of an association of natural and/or legal persons, intended to designate the goods produced and/or sold by them, which have unified qualitative or other general characteristics. Pictorial, verbal, three-dimensional and other designations or combinations thereof, in any color or color combination, may be registered as trademarks.

Article 4. Legal protection of a trade mark

Legal protection for a trademark shall be granted on the basis of its registration in accordance with the procedure established by this Law, and also on the strength of the international agreements to which the Republic of Uzbekistan is a party.

A trademark may be registered in the name of a natural or legal person undertaking entrepreneurial activity.

Article 5. Appellation of origin

A name of a country, population center, locality or other geographical subject (hereinafter geographical subject), used to designate a good, the special features of which are

exclusively or mainly defined by the natural conditions or other factors characteristic of the

geographical subject in question, or by a combination of natural conditions and these factors,

shall be recognized as an appellation of origin.

Article 6. Legal protection of an appellation or origin

Legal protection for an appellation of origin shall be granted on the basis or its registration in accordance with the procedure established by this Law, and also on the strength of the international agreements to which the Republic of Uzbekistan is a party.

An appellation or origin may be registered by one or more natural or legal persons,
located in the geographical subject in question, the name of which is used to designate the
good produced by those persons.

A person who has registered an appellation of origin shall obtain the right to use the appellation, if he or she produces a good, the special features of which are exclusively or mainly defined by the natural conditions or other factors characteristic of the geographical subject in question, or a combination of natural conditions and these factors.

The right to use an appellation of origin registered in accordance with the procedure established by this Law, may also be granted to another natural or legal person, located in the same geographical subject and producing a good with the same special features.

Article 7. Authorized State body

The authorized State body in the field ofprotection for trademarks and appellations of origin shall be the State Patent Office of the Republic ofUzbekistan (hereinafter the Patent Office).

The Patent Office shall:

-help to devise and implement a unified State policy in the field of protection for trademarks and appellations of origin;

-examine applications for the registration of a trademark, appellation of origin and the right to use such an appellation, and shall carry out State examination thereof;

-register trademarks, appellations of origin and the right to use such an appellation, and implement agreements on the assignment of rights to trademarks;

-maintain the State Register of Trademarks and the State Register of Appellations of Origin (hereinafter the Register); issue trademark certificates and certificates for the right to use an appellation of origin;

_ publish official information on the registration of trademarks and the provision ofthe right to use an appellation of origin;

-grant other powers in accordance with legislation.

right to use such an appellation

An application for the registration of a trademark, appellation of origin and the right to use such an appellation shall be filed by a natural or legal person (hereinafter an applicant) with the Patent Office.

An application for registration of a collective mark shall be filed on behalf of an
association of natural and/or legal persons, in accordance with the agreement of its
participants to use the collective mark.

The filing date of an application for registration of a trademark, appellation of origin and the right to use such an appellation shall be determined according to the date on which the Patent Office receives the application.

An application for registration of a trademark, which lists several goods, may be divided at the request of the applicant into two or more parts, and the filing date of the original application shall be retained.

Article 9. Requirements for an application for the registration of a trademark or appellation of origin, and the right to use such an appellation

An application for registration of a trademark or appellation of origin, and the right to
use such an appellation shall relate to a single trademark or appellation of origin.

An application shall contain:

-a statement of registration of a designation as a trademark, appellation of origin, or the right to use such an appellation;

-an illustration of the claimed designation;

-a list of goods, for which registration of a trademark is requested, grouped together in accordance with the International Classification of Goods and Services for the Purposes of the Registration of Marks;

-the name of the type of good for which registration of an appellation of origin or the right to use such an appellation is requested, together with an indication of its place of production within the limits of a geographical subject and a description of its special features.

Attached to the application shall be:

_ a document confirming payment of the patent fee for filing the application; _ a certificate issued by the applicant, where the application is filed through a patent attorney;

_ documents confirming that the applicant is located in the geographical subject in question and produces a good, the special features of which are linked to the natural conditions or other factors, or a combination of the natural conditions and these factors, characteristic of the relevant geographical subject;

The requirements for the documents needed to formulate an application for registration

of a trademark, appellation of origin and the right to use such an appellation shall be

determined by the Patent Office.

Article 10. Designations not registered as trademarks

The following shall not be registered as trademarks:

( 1) designations serving as illustrations of State coats of arms, flags and State awards;

(8): designations used to characterize goods including types, qualities, quantities,
features, purposes, values and also the times and places of their production or sale.
(9): designations which are false or likely to mislead the user as regards a good or its manufacturer;
(10): designations formally indicating the true place of production of a good but giving a mistaken perception that the good comes from another territory;
(11): designations representing or containing geographical names identifying mineral waters, wines or strong spirits, for the designation of goods not originating in the place in question, and also where they are used in translation or in combination with the words "form," "type," "in the style" and so on;
(12): designations contrary to the interests of society, principles of humanity and morality;

(13) designations identical or similar to the point of confusion with:

-trademarks previously registered or filed for registration in the Republic of Uzbekistan on behalf of another person, and also protected without registration under the

international agreements to which the Republic of Uzbekistan is a party or enjoying earlier

priority in relation to goods of the same type;

-trademarks of other persons recognized as generally known in accordance with the
established procedure, in relation to any goods;

-appellations of origin protected in accordance with this Law, apart from the cases of their inclusion as an unprotected element in a trademark registered on behalf of a person who has the right to use such an appellation in relation to any goods;

-certificated signs, registered in accordance with the established procedure;

(14) designations reproducing company names (or part thereof) known on the territory of the Republic of Uzbekistan and belonging to other persons who have obtained the right to these names prior to the date on which a trademark application in relation to goods of the same kind is received;

-industrial designs, the rights to which in the Republic of Uzbekistan belong to other
persons;

-names of works of science, literature and art known in the Republic of Uzbekistan, characters therefrom or quotations, works of art or fragments thereof without the agreement of the copyright holder or his legal successors (heirs);

-family names, first names, pseudonyms and derivatives thereof, portraits and
facsimiles of famous persons without the consent of such persons, their heirs or the State
body, if these designations are part of the history and culture of the Republic of Uzbekistan.

The designations indicated in paragraphs one to four of the first part of this article may be included as unprotected elements in a trademark, if agreement thereto has been given by the corresponding State body or their owner, and the designations indicated in paragraphs five to eight of the first part of this article may be included as unprotected elements in a trademark, if they do not occupy a dominant position therein.

Registration of the designations indicated in paragraphs five to eight of the first part of this article may be permitted, provided that these designations have become distinguishable in practical terms as a result of their use.

Registration of a designation, similar to the point of confusion with a trademark indicated in sections two and three of paragraph 13 ofthe first part of this article, may be permitted, provided that the trademark owner has given his consent to the registration of this designation.

Article 11. Designations not subject to registration as an appellation of origin

Designations shall not be subject to registration as an appellation of origin if they:

-represent geographical names which mislead the user as to the place of production of a good;

-contain geographical names not connected with the place in which a good is produced and which, in the Republic of Uzbekistan, have entered general use for the designation or a particular type or good.

Article 12. Trademark priority

The priority of a trademark shall be established according to the filing date of the
application for registration of the trademark with the Patent Office.

The priority of a trademark may be established according to the filing elate of the first application for registration of the trademark in a State which has acceded to the Paris Convention for the Protection of Industrial Property (convention priority), if the Patent Office has received the application 1'01' registration of the trademark within six months of the date in question.

The priority of a trademark displayed as an official exhibit or at officially recognized international exhibitions, organized on the territory of one of the States which have acceded to the Paris Convention for the Protection of Industrial Property, may be established according to the starting date of the open display ofthe exhibit at the exhibition (exhibition priority), if the application for registration of the trademark has been received by the Patent Office within six months of the date in question.

An applicant requesting the right of convention or exhibition priority shall be obliged to indicate this, when filing an application for the registration of a trademark or within two months of the Patent Office receiving the application, together with the necessary documents confirming the legality of such a requirement, or to submit these documents not later than three months after the Patent Office receives the application for registration of the trademark.

Where an application for registration of a trademark is divided, the priority for each of the applications shall be established according to the priority date of the original application.

Article 13. State examination of an application for registration of a trademark, appellation of origin and the right to use such an appellation

A State examination of an application for registration of a trademark, appellation of origin and the right to use such an appellation shall be carried out by the Patent Office and shall include a formal examination and an examination of the claimed designation.

During the period in which the State examination of an application for registration of a trademark, appellation of origin and the right to use such an appellation is conducted, prior to a decision being taken thereon the applicant shall be entitled, at his own initiative, to correct, clarify or supplement the application documents with information that does not modify the substance of the application.

During the State examination process, the Patent Office shall be entitled to request additional documents from the applicant, without which the examination cannot be carried out.

The deadlines missed by an applicant may be renewed by the Patent Office at the
applicant's request, filed not later than two months after the deadlines have expired.

Article 14. Formal examination of an application for registration of a trademark, appellation of origin and the right to use such an appellation

A formal examination of an application for the registration of a trademark, appellation of origin and the right to use such an appellation shall be carried out within thirty days of the date on which the application is filed with the Patent Office.

As part of a formal examination, the content of the application for registration of a
trademark, appellation of origin and the right to use such an appellation, as well as the
presence of the necessary documents and also their compliance with the established
requirements, shall be verified. On the basis of the results of the formal examination, the
applicant shall be informed of the decision of the Patent Office to accept the application for
examination or its refusal to do so.

Article 15. Examination of a claimed designation

An examination of a claimed designation shall be conducted by the Patent Office in accordance with a decision to accept an application for registration of a trademark, appellation of origin and/or the right to use such an appellation for examination, within nine months of the date on which the application is filed.

As part of an examination, it shall be verified whether a claimed designation complies with the provisions of Articles 3 and 10 of this Law -for the examination of a trademarkand, for the examination of an appellation of origin and/or the right to use such an appellation -Articles 6 and 11 of this Law.

On the basis ofthe results of an examination, the Patent Office shall decide to register a trademark, appellation of origin and/or the right to use such an appellation, or to refuse such registration, whereupon the applicant shall be informed accordingly.

A decision of the Patent Office to register a trademark may be reviewed in connection with the receipt of the application enjoying earlier priority, in accordance with Article 12 of this Law.

Article 16. Appeal against the outcome of a State examination

An applicant shall be entitled to appeal the outcome of a State examination to the Patent Office Appeal Board (hereinafter -Appeal Board) within three months of the date on which a decision is taken.

The procedure for appealing the outcome of a State examination to the Appeal Board shall be established by the Patent Office.

Article 17. Assignment or withdrawal of an application 1'01' registration or a trademark, appellation of origin and/or the right to use such an appellation

An application lor registration of a trademark, appellation of origin and/or the right to use such an appellation may, at any stage of its examination, be assigned or withdrawn by the applicant, but not later than the date on which the corresponding trademark, appellation or origin and/or right to use such an appellation is registered.

Article 18. Registration of a trademark, appellation of origin and/or the right to use such an appellation

On the basis of the outcome of a State examination, the Patent Office shall, within one
month of the date on which it receives the patent-fee payment document, enter a trademark,
appellation of origin, and/or the right to use such an appellation, in the appropriate register.

The content of the information entered in the register shall be determined by the Patent Office.

Article 19. Publication of registration information

Information on the registration of a trademark, appellation of origin, and/or the right to use such an appellation shall be published in the official gazette of the Patent Office. The content of the published information shall be determined by the Patent Office.

Article 20. Trademark certificate and certificate for the right to use an appellation of origin

A trademark certificate shall attest to the registration of a designation claimed as a trademark, the priority of the trademark and the exclusive right of the owner to the trademark in relation to the goods indicated in the certificate.

A certificate for the right to use an appellation of origin shall attest to the registration of a claimed designation as an appellation of origin and to the right of the certificate holder to use the designation in relation to the type of good indicated in the certificate.

A trademark certificate and a certificate for the right to use an appellation of origin shall be issued by the Patent Office within one month of the trademark, appellation of origin, and/or the right to use such an appellation being entered in the appropriate register.

The form of the certificates and the content of the information indicated therein shall be determined by the Patent Office.

Article 21. Period of validity of a trademark certificate and certificate for the right to use an appellation of origin

A trademark certificate or certificate for the right to use an appellation of origin shall be valid for ten years from the application filing date.

the right to use an appellation of origin

The period of validity of a trademark certificate or a certificate for the right to use an appellation of origin may be extended at the owner's request, filed during the last year of its validity, on each occasion for ten years.

The following documents shall be attached to the request indicated in the first part of
this article:

-a document confirming payment of the patent fee; a power of attorney issued by the applicant, where the request is submitted through a patent attorney;

-a document confirming that a person entitled to use an appellation of origin is located in the relevant geographical subject and produces the good with the features indicated in the certificate.

Details of the extension of the period of validity of a trademark certificate or certificate for the right to use an appellation of origin shall be entered in the appropriate register.

The application filing period indicated in the first part of this article may be extended at the request of the certificate holder, filed within six months of the expiry ofthe certificate's period of validity.

Article 23. Amendments to a trademark certificate and a certificate for the use of an appellation of origin

The owner of a trademark or the holder of a certificate for the right to use an appellation of origin shall inform the Patent Office of any change to his title, family name, first name or patronymic, as well as any other changes relating to the registration of the trademark or appellation of origin and, for the trademark, of a reduction in the list of goods in relation to which the trademark is registered, and any change in the individual elements of the trademark, which do not modify its substance.

Details of the changes shall be entered by the Patent Office in the appropriate register.

Article 24. Recognition of a trademark certificate or certificate for the right to use an appellation of origin as invalid

A trademark certificate may be recognized as completely or partially invalid during the entire period of its validity, where it was issued in violation of the requirements established in the second part of Article 4 and sections I to 12 of the first part of Article 10 of this Law, or within five years of the date of publication of information relating to the registration of the trademark in the official gazette, where it was issued in violation of the requirements of sections 13 and 14 of the first part of Article 10 of this Law.

A certificate for the right to use an appellation of origin may be recognized as invalid throughout its period of validity, where it was issued in violation of the requirements established by this Law.

Registration of an appellation of origin shall be cancelled as a result or the:

-disappearance of conditions characteristic of the relevant geographical subject and the inahility to produce 11 good with the features indicated in the register;

-loss by foreign natural or legal persons of the right to the relevant appellation or
origin in the country from which the good originates.

The validity of a trademark certificate or certificate 1'01' the right to usc an appellation or origin shall be terminated as a result of the expiry of its period of validity.

The validity of a trademark certificate may be terminated early either fully or in part, on the basis of a court decision taken at the request of the person concerned, where the trademark is not used for an interrupted period of any five years from its date of registration, and also where agreements on the use of a collective mark are infringed. Where the issue of the early termination of the validity of a trademark certificate, as a result of its non-use, has to be resolved, proof presented by the trademark owner of the non-use of the trademark owing to circumstances beyond his control may be taken into account.

The validity of a trademark certificate or a certificate for the right to use an appellation of origin shall be terminated early on the basis of:

-a decision of the Appeal Board;

-a request submitted by the owner to the Patent Office;

-a court decision.

Article 26. Exclusive right to a trademark

A trademark owner shall have the exclusive right to use and to dispose of the trademark.

The exclusive right to a trademark shall be valid in relation to the goods indicated in a certificate and shall be enforced for the period of validity of registration, beginning from the date of publication in the official gazette of the Patent Office.

A violation of the exclusive right to a trademark shall be recognized in the case of unauthorized manufacture, application, import, offer for sale, sale, other introduction into public circulation or storage for this purpose of a trademark or good designated by the mark, or of a designation similar to the point of confusion, in relation to goods of the same type.

Article 27. Use of a trademark

The use of a trademark shall include its application on goods, for which the trademark is registered and/or their packaging by the trademark owner or a person to whom such a right is granted on the basis of a licensing agreement, in accordance with Article 30 of this Law,

Natural and legal persons carrying out mediation activity may, on the basis of an
agreement, use their trademark in addition to the trademark of the manufacturer of goods.

Article 28. Use of an appellation of origin

The use of an appellation of origin shall include its application on a good, packaging, signs, official forms, in advertising, printed editions and other documentation, connected with the introduction of the good into public circulation.

Alienation, acts for the assignment of the right to use an appellation of origin and provision of the right to use such an appellation on the basis of a licensing agreement shall not be permitted.

The use of a registered appellation of origin by persons not in possession of a certificate for the right to use such an appellation shall not be permitted, even if in such a case the genuine place of origin of the good or its name is used in translation or in combination with the words "form," "type," "in the style" and so on, as well as the use of a similar designation for any goods, which may mislead the consumer as to the place of origin and special features of the good.

Article 29. Preventive marking

The owner of a trademark or of a certificate for the right to use an appellation of origin may place, next to the trademark or appellation of origin, preventive marking in the form of the Latin letter "R" or "R" in a circle, indicating the fact that the designation applied on the good or packaging is registered in the Republic of Uzbekistan as a trademark or appellation of ongm.

Article 30. Assignment of the right to a trademark

The exclusive right to a trademark may be assigned by its owner to another person by agreement.

Assignment of the right to a trademark shall not be permitted, where this may mislead a consumer as to the good or its manufacturer.

The right to use a trademark may be granted by the trademark owner (licensor) to another person (licensee), based on a licensing agreement.

The licensing agreement shall contain a condition that the quality of the licensee's goods shall be not lower than the quality of the licensor's goods, and that the licensor will verify compliance with this condition.

An agreement to assign the right to a trademark or a licensing agreement shall be subject to registration with the Patent Office.

;\ collective mark and the right to usc it may not he assigned to other persons.

;\1'1 iclc11. Transfer ofatrademarkduringreorganization 0 f a legal person·· trademark owner

In the case of' a merger of legal persons -trademark owners, trademarks shall he transferred to the newly registered legal person.

In case of the division of a legal person -trademark owner, the trademark shall be transferred to the newly registered legal person, to whom production of the goods shall pass. In cases where parts of the production of goods, for which the trademark is registered, are retained by the trademark owner, both legal persons may, with their agreement (consent) he recognized as the joint owners of the trademark. Any appropriate agreement (contract) shall he subject to registration with the Patent Office.

In cases where a legal person -trademark owner is affiliated to another legal person, the right to the trademark shall be transferred to the latter party.

Article 32. Conditions for the re-registration of a trademark

A trademark, for which the period of validity of the certificate has expired, may not be re-registered on behalf of another person within three years of the date of termination of the validity of the trademark certificate. The provision in question shall also be extended to cases of refusal thereof by the trademark owner, prior to the expiry of the period of validity of the trademark certificate.

Article 33. Patent fees

Patent fees shall be levied for the performance of legally significant acts connected with the registration of trademarks, appellations of origin or the right to use such an appellation. Patent fees shall be paid to the Patent Office to cover its expenses when performing the functions provided for by this Law.

The levels of and procedure for payment of patent fees shall be determined by the Cabinet of Ministers of the Republic of Uzbekistan.

Article 34. Patent attorneys

A patent attorney shall enforce the right to represent natural and legal persons before the Patent Office.

A citizen ofthe Republic of Uzbekistan, residing permanently on its territory, may be a patent attorney. The qualification requirements for patent attorneys, and the procedure for their certification and registration shall be established by legislation.

Natural persons residing permanently outside the borders of the Republic of Uzbekistan or foreign legal persons shall conduct matters relating to the registration of trademarks and appellations of origin, and shall carry out legally significant acts connected therewith, through patent attorneys registered with the Patent Office.

Natural persons residing permanently in the Republic of Uzbekistan, but ternporurily located outside its borders, may conduct matters relating to the registration of trademarks and appellations or origin, and shall perform legally significant acts connected therewith, through a patent attorney and with an indication of the address for correspondence within the borders or the Republic of Uzbekistan.

The powers of a patent attorney shall be attested by a power of attorney.

Article 35. Registration of a trademark and appellation of origin in other States

Natural and legal persons of the Republic of Uzbekistan shall be entitled to register a trademark or appellation of origin in other States in accordance with the established procedure.

Article 36. The rights of foreign natural and legal persons

foreign natural and legal persons shall enjoy the rights provided for by this Law, on an equal basis with natural and legal persons of the Republic of Uzbekistan and based on the principle of reciprocity.

Article 37. Settlement of disputes

Disputes connected with legal protection and the use of trademarks and appellations of origin shall be settled in accordance with the procedure established by legislation.

Article 38. Liability for infringement of legislation relating to trademarks and appellations of origin

Persons found to have infringed legislation relating to trademarks and appellations of origin shall be liable in accordance with the established procedure.

Law of the Republic of Uzbekistan No. 267-II of August 30, 2001, on Trade Marks, Service Marks and Appellations of Origin, Uzbekistan

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