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Written by Kamronbek Turabekov

January 22, 2021

Introduction

Uzbekistan has recently been actively negotiating to access various economic blocs, including the WTO. To join the WTO, it is necessary to bring the national legislation in line with the WTO laws.  As for the protection of intellectual property rights, the agreement adopted by WTO members is the TRIPS agreement. Bringing the Trademark Law of Uzbekistan in line with the TRIPS Agreement is an essential step towards Uzbekistan’s accession to the WTO and signing an Enhanced Partnership & Cooperation Agreement between Uzbekistan and the EU, negotiations on which have already begun. As a result of the first round of these negotiations, it was noted that “the Intellectual Property Rights chapter… was probably the one where most progress was achieved”. This is important because, according to Article X.48 of the draft Agreement, “the Parties reaffirm their commitments under the TRIPS Agreement…”.

This blogpost surveys the compliance of the Trademark Law of Uzbekistan with the provisions of Section 2 of Part II of the TRIPS Agreement through comparative analysis.

The Trademark Law of Uzbekistan

The legislation of Uzbekistan on trademarks and service marks consists of the “Law On Trademarks, Service Marks and Appellations of Origin of Goods” (hereinafter referred as “the Trademark Law”) and other legislative acts.

The definition of a trademark in the legislation of Uzbekistan and the TRIPS Agreement is practically identical. Pursuant to Article 3 of the Trademark Law, a trademark (or a service mark) is pictorial, verbal, three-dimensional and other designations or their combinations in any color or color combination registered in the prescribed manner that serve to distinguish goods and services of certain legal entities and individuals from similar goods of other legal entities and individuals, whereas Article 15 of the TRIPS Agreement states that “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark”.

Thus, the factor that determines the registrability of a trademark is its ability to distinguish the goods of some persons from similar goods of others. The Trademark Law in Article 10.1 (9) specifically contemplates that the designations that can mislead the consumer regarding the product or its origin are not subject to registration. Importantly, according to Article 4 of the Trademark Law, in Uzbekistan a trademark can be registered only in the name of a legal entity or individual if it is engaged in entrepreneurial activities.

The TRIPS Agreement provides that “service marks” and trademarks should be given equivalent regulatory treatment, which is not required by the Paris Convention. The Trademark Law, as implicitly contemplated in Article 3, provides for the equal treatment of service marks.

The right of use

Basic criterion for protectability of the rights of a trademark owner under the TRIPS Agreement and the Trademark Law is the registration of a trademark. For the purposes of TRIPS Agreement, the exclusive right of a trademark owner grants him to preserve the distinctiveness of its trademark by preventing all unauthorized third parties ‘from using identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.’(art.16.1) That is, the TRIPS Agreement does not provide for the right of use of a trademark.

In addition, as Appellate Body in Australia – Tobacco Plain Packaging recalled, none of referenced provisions of the Paris Convention (as revised at Stockholm in 1967) in the TRIPS Agreement grant a trademark owner a positive right to use its trademark. On the contrary, Article 23 of the Trademark Law and Article 1103 of the Civil Code, together with the right to prevent all unauthorized third parties from using identical marks in relation to similar goods, also guarantee the exclusive right to use and dispose of the registered trademark in relation with the goods or services in respect of which the trademark is registered. Furthermore, pursuant to article 4 of the Trademark Law, unregistered trademarks are subject to protection if international agreements to which Uzbekistan is a party, so requires.  

Acquisition of distinctiveness

Under Article 10.1 (5-8) of the Trademark Law, the designations that do not have distinctiveness, that have come into general use as designations for goods of a certain type, that are generally accepted symbols and terms, and which are used for the characteristics of goods, including the type, quality, quantity, property, purpose, value, as well as the place and time of their production or sale cannot be registered as trademarks unless they have, in fact,  become distinctive as a result of their use by the date specified in the application. This means that, under certain circumstances, the registrability of trademarks may depend on distinctiveness acquired through use as is granted under the terms of the TRIPS Agreement as well.

Renewal

Article 18 of TRIPS Agreement states that “initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years. The registration of a trademark shall be renewable indefinitely”. According to Articles 21-22 of the Trademark Law, the validity period of a registered trademark is 10 years from the date of registration. During the year before expiring they are allowed to be renewed for ten years each time. There is a six-month-long grace period following the end of tenth year, in which the registration for the trademark may be maintained for a fee. The difference regarding renewal terms should not be considered as inconsistency of the Trademark Law with the terms of the TRIPS Agreement since the latter itself in Article 1.1 states that “Members may implement in their law more extensive protection than is required by this Agreement…”.

In addition, according to Article 25 of the Trademark Law and Article 1104 of Civil Code, use is required to maintain a registration. The TRIPS Agreement provides that registration may be cancelled only after an uninterrupted period of three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. The Trademark Law is to the same effect.

Encumbrances

Article 20 of the TRIPS Agreement provides that the use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements. The requirement of use with another trademark or use in a special form are given as examples of such encumbrances. Criterion for ‘unjustifiability’, as established by the Panel in Australia — Tobacco Plain Packaging, is the lack of justification or reason that is sufficient to support the resulting encumbrance. Trademark Law is compliant with TRIPS in this respect.

Licensing and assignment

According to Article 30 of the Trademark and Article 1105 of the Civil Code, the right to use a trademark may be granted by the owner of the trademark (licensor) to another person (licensee) under a license agreement. A license agreement should contain provisions governing the list of rights granted, the limits and terms of use. This implies that the parties can agree that the license will cover all of the goods or services protected by the licensed mark or just part of them.

Importantly, the Trademark Law in Article 30 requires the presence of a “quality control clause” in trademark licensing agreements. According to it, the quality of the goods to be produced by the licensee under the licensed trademark should not be lower than that of the licensor.

Article 30 also provides that the exclusive right to a trademark can be assigned by its owner to another person under an agreement if this does not mislead consumers regarding the product or its origin. Both the assignment agreement and the license agreement are subject to registration. The compulsory licensing of trademarks is not permitted.

Conclusion

In conclusion, it should be noted that the legislation of Uzbekistan on trademarks complies with the requirements set out in the provisions of Section 2 of Part II of the TRIPS Agreement. This is largely because Uzbekistan is a party to international agreements as the Paris Convention, and Trademark Law Treaty. Against the background of the resumption of accession talks to the WTO, negotiations on the conclusion of a new agreement with the EU, and the expiration of terms for fulfilling the commitment of Uzbekistan to liberalize trade regime in accordance with Article III of the GATT within the framework of the CIS free trade zone agreement, Uzbekistan is expected to adopt a new version of the Civil Code in 2021. Most likely, the Code will be harmonized with the TRIPS Agreement.

Cite as: Kamronbek Turabekov, “Towards the WTO: Is the Trademark Law of Uzbekistan in conformity with the TRIPS Agreement?”, Uzbekistan Law Blog, 22.01.2021