Uzbekistan Amends IP Legislation
On April 18, 2017, the Uzbek Parliament approved the Law on Amendments and Additions to Certain Legislative Acts of the Republic of Uzbekistan, amending the Uzbek Civil Code, the Law on Trademarks and Appellations of Origin and the Law on Competition. The amendments entered into force on April 19, 2017.
With these amendments Uzbekistan brings its IP legislation in line with that of Russia and other neighboring countries. The main IP-related changes are outlined below.
Principle of Exhaustion of Trademark Rights
While the principle of exhaustion of trademark rights has been applied in practice, the Uzbek legislation did not specifically provide for it. The amendments introduce the principle but it is not clear whether exhaustion is international or strictly national, because the provisions leave room for interpretation whether right holder’s consent relates to the sale in the country of origin or the commercialization of the product in Uzbekistan. Certain Uzbek courts have already accepted parallel importers’ arguments in favor of international exhaustion, causing discrepancies in court practice. However, the Uzbek competition regulator stands behind the national exhaustion interpretation.
Non-Use Cancellation Action
According to the amendments, a trademark is subject to a non-use action if it has not been used in the last five years. Previously, a trademark could be cancelled due to non-use for any uninterrupted period of five years after registration.
When proving trademark use in court, rights holders now have more options as the definition of trademark use was expanded to include the following types of use (apart from trademark use on products):
- in advertisements;
- in printed materials;
- on signboards;
- in business documentation;
- on product labels;
- on product packaging;
- exhibiting the product in local exhibitions and trade shows in Uzbekistan;
- in documentation related to the introduction of products into free circulation; and
- in domain names.
The amendments introduce a definition of “counterfeit products” as “products, labels, or packaging on which a trademark or a confusingly similar mark is used illegally”. Uzbek legislation did not have a definition of counterfeit products, so rights holders had to formulate it in court each time; now rights holders are able to refer to the law.
The major novelties brought by the amendments are:
Expanded definitions of “incorrect (faulty) comparisons”, “sale of goods with illegal use of results of intellectual activity” and “misleading the consumers”;
Prohibition of unfair competition through the acquisition of exclusive rights to the means of individualization of a legal person or goods;
Prohibition of the registration of an identical or confusingly similar trademark – previously the law prohibited registration of identical trademarks only; and
Clearly defined prior user rights.
By: Sitora Rakhmanova
For more information, please contact Sitora Rakhmanova.
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