Uzbekistan—Medicinal products: Registration certificate and trademark—features and differences.
As is known, many pharmaceutical companies currently operate in Uzbekistan, both as legal entities and as representative offices of foreign companies, with the aim of promoting and selling both their own and third-party medicinal products on the national market.
Such high concentration of numerous companies in a single commodity market also entails an increase in legal conflicts related to the use of original names of medicinal products and their imitations by various manufacturers, as a result of which the number of lawsuits considered by the Economic Courts of Uzbekistan is constantly growing.
Based on our practice, in most cases, the subject of claims by owners of medicinal product brands (right holders) are demands to terminate infringements on the trademark (trade name) used to label the medicinal product, as well as demands to prohibit the import, sale, and seizure of the medicinal product from pharmacy chains.
It is known that the appearance of a medicinal product in a pharmacy chain is preceded by the mandatory requirement to obtain a registration certificate issued by the Main Administration for Quality Control of Medicinal Products and Medical Equipment under the Ministry of Health of the Republic of Uzbekistan (hereinafter referred to as the Pharmaceutical Committee).
This certificate confirms the authorization of the authorized state body for the use of the medicinal product in the Republic of Uzbekistan; however, it cannot serve as a document prohibiting third parties from using an identical designation or a trade name confusingly similar to it in civil circulation (trade activities).
In other words, the registration of a medicinal product with the Pharmaceutical Committee does not grant the manufacturer or distributor exclusive rights to use the name (trade designation) of the medicinal product.
By exclusive rights, the legislation defines the powers of the right holder to own, use, and dispose of a registered designation in any way not prohibited by law, including the ability to prohibit analogous use by all third parties.
An infringement of the exclusive right to a trademark is recognized as the unauthorized manufacture, application, import, offer for sale, sale, other introduction into civil circulation, or storage for this purpose of a trademark or goods marked with this sign, or a designation confusingly similar to it, in relation to homogeneous goods.
Exclusive rights to use a trade designation can be obtained by an interested party only upon registration of the name of the medicinal product, or its external appearance (container, bottle, packaging, etc.) as a trademark, or an industrial design, by submitting a corresponding application to the Intellectual Property Agency of the Republic of Uzbekistan (hereinafter referred to as the IPA of the RUz).
In the comparative table below, we provide the scope of legal protection granted by the registration of a medicinal product name with the Pharmaceutical Committee of the RUz and by the registration of a trademark and industrial design with the IPA of the RUz:
| No. | State registration of a preparation as a medicinal product with the Pharmaceutical Committee | State registration of a trade name (brand), external appearance of the container or packaging of the preparation as a trademark | State registration of the container and packaging of the preparation as an industrial design |
| 1. Legal acts regulating the process of registration and object protection |
1. Law of the RUz "On Medicinal Products and Pharmaceutical Activities" dated 25.04.1997; 2. Regulations on the procedure for the registration of medicinal products and medical devices and issuance of a registration certificate, approved by Resolution of the Cabinet of Ministers of the RUz No. 352 dated 22.12.2014. |
1. Law of the RUz "On Trademarks, Service Marks, and Appellations of Origin of Goods" dated 30.08.2001; 2. Rules for drafting, filing, and examining an application for the registration of a trademark and service mark, reg. by Ministry of Justice of the RUz No. 1988 dated 29.07.2009. |
1. Law of the RUz "On Inventions, Utility Models, and Industrial Designs" dated 29.08.2002; 2. Rules for drafting, filing, and examining an application for the issuance of a patent of the RUz for an industrial design, reg. by Ministry of Justice of the RUz No. 1361 dated 20.05.2004. |
| 2. Advantages of registration |
1. This procedure is mandatory; 2. Authorization for the use of the medicinal product in the RUz. |
1. Grants an exclusive right (right to import, use, sell, store, prohibit use by third parties, etc.) 2. Allows prohibiting third parties, including competitors, from any use of medicinal product names confusingly similar to the trademark in relation to homogeneous goods and services; 3. Serves as one of the means of protecting products against copying and imitation of the external appearance by unscrupulous competitors; 4. Validity period of the certificate is 10 years, with the possibility of subsequent extension. |
1. Protects the artistic and design solution of the external appearance (container, packaging) 2. Allows prohibiting third parties from using similar containers or packaging in any fields and industries. |
| 3. Features of registration |
Compared to trademark registration: - does not grant the right to prohibit the use of the preparation name and names similar to it by third parties in relation to homogeneous goods; - allows the registration of other medicinal products with identical and similar names in the names of third parties. The registration certificate is issued for a period of 5 years. |
Compared to medicinal product registration: - does not grant authorization for the use of the medicinal product in medical practice. Compared to industrial design registration: - protection applies only to those groups of goods and services in relation to which registration was carried out. |
Compared to trademark registration: - protection applies only to an identical object and does not extend to objects confusingly similar to it; - the duration of protection is limited to a certain term of maximum up to 15 years. |
Additional free information on methods of intellectual property protection and combating unfair competition in the field of pharmaceuticals can be obtained by sending a request to the company's unified contact email info@legalmaxlaw.com
Lola Islamova
Patent Attorney of the Republic of Uzbekistan
Kamila Karimova
Lawyer