Basic Guidelines for Registering a Trademark in Uzbekistan

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Trademarks

Distinctive and unique designations in the form of word or combinations of figurative and verbal elements in any colours must be registered with the Agency for Intellectual Property of Uzbekistan to be recognised as trademarks and granted protection under Uzbek law.

Trademark Search

Unlike customary service in other jurisdictions, the trademark database in Uzbekistan is not available for public access. To conduct the search one must procure the services of a trademark attorney or apply directly with the trademark registering authority. Please note, this is a chargeable service with a fee ranging between US$100 to US$250. With this in mind, we would advise that trademark search be conducted prior to filing to ascertain whether there are any similar marks registered or pending registration in the database. Trademark search provides information on all registered and filed designations that are analogous or similar to the point of confusion to the mark intended for filing. Law firms or patent attorneys may choose to provide any additional relevant evidence or analysis in support of filing an application if they believe their application may be challenged from rival marks or by registering authority on similarity grounds.Typically, the trademark search takes around 2 weeks, no documents shall be required apart from a specimen of the trademark and proof of state fee.

Representation by a patent attorney:

The laws of Uzbekistan are specific that any legal actions with respect to trademarks shall be performed through certified patent attorneys of Uzbekistan.

Filing trademark application:

Multiple class trademark application is possible. As Uzbekistan is a party to Madrid Agreement, no separate domestic registration is required in case international registration is made.

The following documents shall be required for filing for domestic registration in Uzbekistan:

· Information on the trademark and the applicant

· The list of goods and/services according to Nice Classification

· Power of Attorney, by law, notarization and legalization/apostille is required

· Proof of payment of state fee

· Certified copy of priority document if priority is to be claimed

The state fee for the registration of a trademark ranges between US$1.800 and over depending on the type of trademark and number of classes to be filed.

Timescale:

The process will typically take around 8-10 months to complete, commencing with a formal examination, which includes the review and verification procedure to confirm the documents filed are accurate and complete (around 1 month), followed by a substantive examination of the designation (6-7 months).Should both the above procedures culminate in positive opinion of the registering authority, the results are published in the Official Gazette and Certificate of Registration thereupon.

The date of the filing is considered as the date of priority. Validity term of a registration certificate is 10 years from the date of filing and can be renewed.

Renewal:

An application for the renewal shall be made within 6 months before the expiry of the trademark registration certificate. There is 6 months grace period granted after the expiration, but 50% of the pending state fee shall be paid in addition as a penalty cost. The following documents shall be provided for the renewal:

·  Power of Attorney, by law, notarization and legalization/apostille is required

·  Proof of payment of state fee

The state fee for the renewal of a trademark certificate ranges between US$600 and over depending on the number of classes to be filed.

The renewal is recorded by the Patent Office within 2 weeks, provided all the required documents are provided in full.

Amendments to trademark certificate: 

The trademark owner must formally notify the Patent Office of changing name, surname, address or other details relating to the registered trademark. Any such changes are reflected on the trademark certificate issued by the Patent Office and in the relevant registry. 

The following documents shall be filed to record the amendments:

· Power of Attorney, by law, notarization and legalization/apostille is required

· Proof of payment of state fee

· Document confirming amendments made (Commercial extract, notarized)

· Copies of trademark certificates

The state fee for the records of amendments to trademark certificate is US $420 per single application.

Legal consequences of failure to use or passive use of the trademark:

Trademarks not in use continuously within any 5 year period from the registration date may become subject to partial or full de-registration by court if use of such trademark is challenged by any interested party. Subject to the laws of Uzbekistan use of a trademark is recognized as the application of the trademark on the goods for which it was registered, and (or) on the packing, by the owner of the trademark or a person to whom such right has been granted on the basis of a license agreement. The use of a trademark in advertising, printed publications, official forms, signboards, during a demonstration of exhibits at exhibitions and fairs held in the Republic of Uzbekistan are also acceptable.

Termination of trademark registration

The certificate for the trademark may be invalidated entirely or partially if issued in violation of the requirements prescribed by law. The certificate for the trademark may further be invalidated within three years from the date of publication of information about its registration in the Official Gazette in the case the actions of the owner of the trademark are recognized in the established order as unfair competition.

For further information about trademark search, registration or cancellation in Uzbekistan or quotation for filings, please contact us at: Tashkent@gratanet.com

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