09-01-2011 (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
Legal basis is the Trademark and Appellation of Origin Law, in force since September 22nd, 2001.
Uzbekistan is a member of the Madrid Protocol.
Trademark protection is obtained by registration.
Trademarks which were protected in the former Soviet Union will be protected in Uzbekistan only, if they were transcribed within the period and under provisions stipulated.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging 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 Agency on Intellectual Property 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 or first office action is approx. 12 months.
After registration, the trademark is published in the Agency on Intellectual Property 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 Appeals or a court. The courtconsiders non-use cases and also cases on invalidation of trademark certificates. The Board of Appeals considers cases on invalidation of trademark certificates. Decision of the Board of Appeals could be appealed to the court.
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 5 years from registration or has not been used later for a continuous period of 5 years, it may be subject to cancellation.
The official fee for filing application is approx. EUR 425.00 for one class and approx. EUR 42.50 for each additional class. The registration fee (including renewal fee for the first 10 years of validity) is approx. EUR 838.00 and approx. EUR 42.50 for each additional class. The renewal fee is approx. EUR 425.00 for one class and approx. EUR 42.50 foreach additional class.
Trademark Licence Agreement
A trademark licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark can be licensed for either all or some goods or services for which the mark is registered. There are exclusive and non-exclusive licences. The sale of a registered trademark does not automatically terminate the licence. There are statutory provisions prescribing the terms of licensing. The agreement shall contain a provision on the amount of royalty or provisions confirming that the parties reached an agreement regarding the remuneration and quality clauses for the licensed goods/services. The licensor shall exercise quality control over the use of the mark by the licensee.
There are provisions in law for the mandatory recordal of a licensee with the Trademark Office. Unrecorded licences are not valid.
There is no prescribed form, but the agreement should contain the following information:
1. Name and address of the licensee and the licensor
2. The subject of the licence (the trademark registration number, the list of goods and services and the respective classes)
3. The scope of rights granted under the licence
4. The type of licence (exclusive or non-exclusive)
5. The term of the licence agreement
6. The territory covered by the licence
The following documents are required for a recordal:
1. A recordal request
2. The licence agreement (three originals or notarised abstracts)
3. A power of attorney
4. Documents confirming the payment of the official fees
5. Translations of the above documents, if not submitted in Russian or Uzbek
A licence becomes effective and enforceable against third parties from the date of its recordal in the Trademark Register and will be published in the Official Bulletin once after recordal.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. He may also call upon the owner to institute infringement proceedings. If the proprietor refuses or neglects to institute proceedings after being called upon to do so, the registered user can institute proceedings in his own name after a period of time that has to be provided for in the agreement. He is not required to cite the trademark owner as co-defendant in any such proceedings, unless otherwise agreed upon in the contract
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
|Trademark Owner Search
|Company Name Search
|Domain Name Search (extended)
|i-Search (word mark availability + legal opinion)
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We would like to thank the following law firms for their assistance in updating the information provided:
PETOŠEVIĆ, Kiev, Ukraine
IPR Group, Kiev, Ukraine
PETOŠEVIĆ, Kiev, Ukraine