Trademark Assignments in Uzbekistan (Jamol Ryskiyev, Partner Ryskiyeva and Partners Law Firm)

Trademark Assignments in Uzbekistan

 

A trademark (service mark) must be registered within the Agency for Intellectual Property of the Republic of Uzbekistan (hereinafter - the Agency), and respective trademark certificate must be obtained for the trademark to be protected in Uzbekistan. A trademark registered outside of Uzbekistan may also have protection under international treaties that Uzbekistan has joined.

The owner of a registered trademark has exclusive rights to use and dispose its trademark. The term «use» implies the application of trademark:

a) on goods for which the trademark has been registered, and (or) on the packaging of such goods;

b) in advertising, printed publications, official letterheads, signboards, during demonstrations at exhibitions and fairs held in Uzbekistan.

If an entity, without consent of the trademark owner, produces, uses, imports, offers for sale, sells, introduces into circulation or stores for the same purposes another one’s trademark or goods marked with this trademark or another designation confusingly similar to someone’s trademark (in relation to similar goods), the owner of this trademark is entitled to demand from the infringer to cease illegal use of his trademark.

The entity intending to use someone’s trademark shall execute a license agreement with the trademark owner. Such agreement is subject to mandatory registration with the Agency and becomes effective only upon such registration. The license agreement entitles one entity to use the trademark that belongs to another entity. However, execution of license agreements in relation to collective trademarks, i.e. marks that belong to associations of legal entities or natural persons, are not allowed by Uzbek law.  

License agreements shall stipulate the following provisions:

a) names and other details of the parties to the agreement (i.e. addresses, contact information and bank account details);

b) subject of the agreement, including Uzbek certificate number or international registration number of the trademark;

c) type of assignment;

d) amount of transferred rights under the agreement;

e) agreement validity area, i.e. the whole or partial territory of Uzbekistan (e.g. region(s) or a town(s);

f) term of the agreement, which shall not exceed validity period of the trademark certificate;

g) amount and other terms of remuneration for trademark use, if it is subject to compensation as agreed by the parties;

h) product quality of the licensee (the person using the trademark) shall not be lower than the product quality of the licensor (trademark owner), and the licensor shall be entitled to monitor fulfillment of this requirement;

i) list of goods and/or services grouped according to the International Classification of Goods and Services (ICGS).

During the term of the license agreement, the trademark owner is entitled to use his trademark as well. The license agreement may restrict the owner’s rights to grant licenses to third parties. In case of absence of such restriction in the agreement, the owner is allowed to grant licenses to third parties.  

The license agreement shall foresee whether the licensee may execute sub-license agreements with third parties for allowing them to use the trademark or not.  

An entity intending to use someone’s trademark without any restrictions, as well as to dispose it, may wish to purchase or receive it for free from the trademark owner under assignment agreement. In this case, all rights to the trademark shall be transferred to the acquirer. Such agreement is subject to mandatory registration with the Agency and shall become effective upon such registration. However, assignment of the trademark is not allowed where it may mislead the consumer on the product or its manufacturer as a result of this assignment.  

Content requirements of the assignment agreement are similar to those of the license agreement, except for certain provisions. Both agreements shall be executed in simple written form, either in Uzbek or Russian or translated into one of these languages if executed in a foreign language (e.g. english, french, german, etc). Moreover, it is required to sew up and number all pages of these agreements. No erasures, additions, corrections or crossing out words in the agreements should be made.

Upon signing of the above-described agreements by both parties, the trademark owner shall file following documents to the Agency for registration:

1) a standard application form, in Uzbek or Russian;

2) agreement or an extract of the agreement, duly executed in three (3) copies;

3) power of attorney certifying authority of the representative of the trademark owner. Legal entities - residents of Uzbekistan (i.e. their managers), as well as citizens of Uzbekistan may file documents to the Agency in person, while foreign entities shall do the same only through hired Uzbek patent attorneys;

4) a document confirming payment of patent fee/agreement registration fee or a document certifying exemption from patent fees/payments;

5) a document confirming the succession or the right to inheritance (if necessary);

6) original license agreement or duly executed copy, in case of registration of the sub-license agreement.

 

The applicants shall pay the following patent fees/payments to the Agency to registr aforementioned agreements:

 

Type of agreement	State Fees
	Uzbekistan Soum (for residents of Uzbekistan)	U.S. Dollars (for foreign entities)
Registration of a license agreement, which includes:
а) one trademark	2 minimum monthly wages * (MMW)	840
б) several trademarks, additionally for each trademark mentioned in the license agreement	1 MMW	420
Registration of an assignment agreement for:
а) one trademark	3 MMWs	1260
б) several trademarks, additionally for each trademark mentioned in the assignment agreement	1,5 MMWs	630

 

* As of May 15, 2016, 1 MMW equals 130,240 Soum (about US$ 45)

 

The Agency shall review filed documents and register the aforementioned agreements within 15 days, or refuse to register them if there are specific legislative grounds for it.

 

Jamol Ryskiyev, Partner

Ryskiyeva and Partners Law Firm

www.ryskiyeva.com