THE SHORT ANALYSIS ON THE DYNAMICS OF CHANGES IN IP SPHERE –
To go back a year ago, we could recall that the Head of state by his Decree of February 8, 2019 reformed the management system and introduced new orders in the field of intellectual property. For sure 2019 was promising to be a breakthrough given the plans and proposed amendments in the legislation. And the next short review is to dwell on some legal analysis on the expectations in the sphere of IP we had and their reflection in practice.
Uzbekistan has joined 2 international agreements in the sphere of intellectual property in 2019. On July 17, 2019, the WIPO Performances and Phonograms Treaty and WIPO Copyright Treaty entered into force with respect to the Republic of Uzbekistan.
In 2019, the Presidential Decree “On Measures to Improve Public Administration in the Field of Intellectual Property” dated February 8, 2019, has introduced the following changes (see in brackets their practical application):
- The Intellectual Property Agency of the Republic of Uzbekistan was transferred to the system of the Ministry of Justice.
- Information on registration applications is to be placed within 1 working day from receipt of the application on the official website of the Agency, information on successful registration of a trademark is to place on the day of registration. (In practice, it takes a longer time.)
- Producers, suppliers, sellers or their representatives, after the applications are published on the website, may submit written objections to the Agency regarding the unfairness of the submitted registration applications; (Still this rule has not been reflected in the law.)
- The validity of a trademark certificate may be terminated if a trademark is not used on the territory of the Republic of Uzbekistan during the last three years of its validity (before: during the last 5 years) (However, after the adoption of this Decree of the President, the corresponding amendments were not made to the respective legislative acts, in connection with which, the termination of the validity of a certificate for a trademark is carried out within the time period stipulated by law - 5 years, and not 3 years, as provided for by the Presidential Decree.)
- In addition, it was planned that from September 1, 2019, an application for registration of a trademark is filled only in electronic form through the public service centers or the Unified portal of interactive public services of the Republic of Uzbekistan. (In practice, the foreign applicant still has to go through paper-based registration procedures.)
- Until July 1, 2019, it was planned to develop and implement a unified, constantly updated, integrated database of intellectual property objects. (However, to date, an integrated database for the exchange of information between the Agency for Intellectual Property and other bodies (customs committee, Ministry of Internal Affairs, Farm Committee) has not been created.)
- By July 1, 2019, the Ministry of Justice, together with the Department for Combating Economic Crimes under the Prosecutor General’s Office, should have carried out a complete inventory of all registered trademarks in Uzbekistan to identify facts of unfair registration of well-known trademarks and take steps to cancel the registration certificates for the trademarks issued in violation of the requirements of the law. (At the moment there is no information on the results of the inventory, and no measures have been taken by these bodies to cancel trademark certificates issued in violation of the law.)
The roadmap for 2019 prescribed a review of current patent fee rates, including a phased reduction, starting from January 1, 2020, of the rates of patent fees, as well as of individual fees levied by non-residents for providing legal protection to a trademark, service mark, appellation of origin and industrial design. (This also has not been translated into practice yet.)
On August 17, 2019, on the website https://regulation.gov.uz, the State Customs Committee posted a draft version of the Customs Code of the Republic of Uzbekistan. Interesting, that this draft law establishes the possibility of parallel imports, which contradicts other legislative acts of the Republic of Uzbekistan. (There is already judicial practice set (precedents) when a foreign right holder could not protect own IP rights, due to the fact that the customs authorities did not prevent unauthorized import, and the court supported these violations by its decision. (See judicial practice below))
In 2019 the Code of Administrative Liability introduced a number of amendments and additions aimed at protecting intellectual property rights.
Moreover, the fines imposed on citizens have increased from 5 to 10 times of Minimum allowable wage (earlier - from 1 to 3), from officials - from 10 to 20 times of minimum wage (earlier - from 3 to 5). Fines were also imposed for repeated violations committed during the year after the application of the administrative fines (in the amount of 10 to 20 times of minimum wage, and from officials from 20 to 30)
Thirdly, administrative liability has been introduced for violation of copyright and related rights, as well as the rights to an invention, utility model and industrial design.
(However, the above indicated amounts of fines are insignificant and disproportionate to the scale of losses or other adverse consequences for copyright holders.)
It is very positive to witness a new wave of reforms in the sphere of intellectual property. Still it is obvious that there is a lack of implementation mechanisms.
Moreover, it is of high importance to take into account the acute problems preventing the development in IP sphere: contradictions in regulatory legal acts, a high level of corruption and lobbying of interests, lack of court independence and competency, lack of a mechanism for recovering fines and losses in favor of a person whose rights have been violated, absence of the fixed penalties to be paid when the loss cannot be estimated, widespread judicial protection and support for national companies, even in contradiction with the requirements of the legislation.
THE NEXT ARTICLE: THE REVISED CUSTOMS CODE IS SOON TO BE ADOPTED.
The new Code on the regulation of customs relations will definitely bring the significant changes both for national and foreign stakeholders. Parallel import, customs procedures, elimination of barriers and creating the favorable conditions, etc.
Read in our next legal alert what kind of difficulties may arise in changing the Customs Law and what to expect in the future.
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