Amendments and additions introduced into the intellectual property legislation of Uzbekistan on April 18, 2017
On April 18, 2017 a number of significant amendments and additions was introduced into the legislation of Uzbekistan on intellectual property rights .
We hereby would like to provide a quick overview of the introduced innovations with our brief comments herein below.
1.Changes to the Civil Code of the Republic of Uzbekistan
Clauses about exhaustion of exclusive rights for trademark have been introduced into the Civil Code and the Law “On trademarks and appellations of origin of goods” (Article 11071 and article 26 respectively), according to which:
- it will not be a violation of an exclusive trademark right, if this trademark is used by other persons with regard to goods, which were legally introduced into civil circulation by the trademark owner directly or upon his consent. This term legally establishes national regimen of exhaustion of rights for trademarks, however it is quite possible that Uzbek courts might apply the provisions of the present article incoherently, since parallel importers rather often argue for defense that original goods being imported by them have been already introduced into civil circulation upon consent of the right owner abroad, and such a defense has been supported in individual cases by certain courts, which has caused discrepancies in the court practice related to the parallel imports disputes.
At the same time, according to a written explanation of the Competition authority provided upon request of the “Legalmax Law Firm”, after entry of the changes in question into force, the national principle of exhaustion of rights is to be used in Uzbekistan, and any case of imports and sale of products bearing a trademark of the right owner without his consent is a violation of his exclusive rights.
2. Changes to the law “On trademarks, service marks and appellations of origin of goods”
- Previously, information about registered trademarks had been published only in the official bulletin of the AIP (Agency on Intellectual Property) of Uzbekistan. From now on information about registration of a trademark must be reported at the official web site of the AIP as well (Art. 19 and 24 of the Law);
- early invalidation of a trademark registration certificate is now possible on the basis of its non-use during only “the last five years of effect thereof”, rather than during any five years as previously (Art. 1107 of the Civil Code and Art. 25 of the Law);
- apart from evidences of use of a trademark already stipulated in Art. 27 of the Law (its use on goods, for which the trademark has been registered, and (or) on a package by the trademark owner or by a person provided with such a right on the basis of a license agreement, as well as use of the trademark in advertisement, print media, on official headed papers, banners, in demonstration of objects at exhibitions and expositions held in the Republic of Uzbekistan), the following new types of evidences have been introduced: use of the trademark on labels, packages of goods being manufactured, offered for sale, sold or otherwise introduced into civil circulation or stored and (or) transported for this purpose, or imported to the territory of the Republic of Uzbekistan; on the documentation related to introduction of goods into civil circulation; in a domain name.
In our opinion, these provisions should significantly strengthen the position of trademark owners in the non-use invalidation disputes due to expansion of means for proving use of such trademarks also by means of additional instrument such as a domain name.
It should also be noted that the new provision mentioned above does not mention the jurisdiction where a domain name should be registered in order to be acceptable as an evidence of use, and does not impose obligations on the right owner in that the domain name should be registered in a specific DNS zone in order to act as an evidence or to have an functioning web site associated with the domain name;
- evidence of use of the trademark provided by its owner should refer to a time period mentioned in the application (of the interested person seeking to invalidate the trademark registration);
- the notion of counterfeit objects - goods, labels, packages for goods - has been introduced as well. Such objects shall be acknowledged to be counterfeit ones, if a trademark or a designation being confusingly similar thereto is illegally used on them.
3. The Law of Uzbekistan “On Competition”
The Article 13 of the Law of Uzbekistan “On competition” has been amended as follows:
- explanatory additions into the meaning of such types of unfair competition as incorrect (faulty) comparisons, realization of goods with illegal use of results of intellectual activity and imitation of a good have been introduced.
- now the incorrect (faulty) comparison means comparison of a product of a business entity with another product of another business entity (competitor) using words or designations creating an impression about superiority of the product without stating characteristics or comparison criteria having objective confirmation, or cases when statements comprising the above-mentioned words or designations are false, inaccurate or distorted;
- the notion of sale of a product with illegal use of results of intellectual activity and equivalent means of individualization of a legal person or of the product, now also includes the sale of a product with illegal use of a designation identical with a trademark, commercial name of a business entity (competitor) or being confusingly similar thereto, by its placement on goods, labels, packages or otherwise in relation to goods being sold or otherwise introduced into the civil circulation, as well as by using thereof in a domain name;
- the notion of subjects involved into imitation of a product now covers not only manufacturers of the imitated products as previously, but also persons, who in fact introduce these goods into the civil circulation.
Furthermore, the list of ways of imitation of goods has also been expanded to include, among already stated methods (reproduction of a design of a product and the form thereof; reproduction of the name, labeling, trademark thereof; copying advertisement materials) also reproduction of a label, packaging, color scheme or other elements, which individualize the product of a business entity (competitor);
- second part of Art. 13 of the Law has been also supplemented with a wording intended to specify a meaning of already existing provision of the Law on the prohibition of unfair competition related to obtaining an exclusive right for means of individualization of a legal entity, means of individualization of a product.
In particular, unfair competition in the form of registration of a trademark being identical with or confusingly similar to a designation used on a product that has been earlier introduced into the civil circulation by a business entity (competitor), is prohibited.
In our opinion, this provision will have a very positive impact on the court practice in the sense of strengthening the protection of interests of good faith right owners, since previously this norm allowed to cancel only the unfair trademark registrations (firm names, names of designations of origin of goods) that were identical with the designations being present on the Uzbekistan market. The introduced addition will now allow to hold invalid also trademarks that are confusingly similar to a designation, which has been already introduced into the civil circulation and has been already present on the Uzbekistan market prior to registration of the trademark being challenged, no matter if the prior mark has been registered or not.
Of course, only actual practice can show how the above-mentioned novel provisions will be interpreted by judicial and competition authorities. In general, we believe that the lawmakers are aimed at improvement of the legal framework for the protection of intellectual property rights and at strengthening of fair and sane competition on the market.
We will keep you updated about changes in legislation and law enforcement practice in Uzbekistan, Kazakhstan and other countries of our region.