This article will discuss the features of using trademark and consequence of non-use of a trademark in Uzbekistan. It should be emphasized that failure to use a trademark in Uzbekistan can have serious consequences both for the owner of the trademark itself and for the business. A trademark is an important element of a company's branding and marketing, and therefore, failure to use a trademark can lead to several negative consequences.
Types of trademark use
In Uzbekistan, like in numerous countries globally, exclusive rights to use a trademark arise from the moment of its state registration. A trademark can be used in various areas of business for distinguishing goods and services across different commercial sectors. Types of trademark use are separately regulated by the Uzbek law on trademarks, according to which the use of a trademark is considered applying it on the goods and (or) on their packaging, for which the trademark registered.
One of the important rules is that the trademark must be used by the trademark owner himself, or by another person who has the right to use the trademark based on a license agreement. This provision of the law sometimes complicates the work for foreign manufacturers as their trademarks are often used by different divisions of large corporations who are not licensees.
Another important point is the possibility of trademark use in advertising, official documents, domain names and other sources without applying it on the product. However, the question of whether such use of a trademark is considered as proper use remains unsolved. Acceptance of such use depends on actual circumstance that are related with intention of right-holder to use the trademark.
Grace period
Trademark registration does not oblige the owner to use the trademark, however, failure to use the trademark could be used as a ground for its early cancellation if any third party brings the case to the court. Non-use cancellation often arises in cases where certain applicants come across the provisional refusals from Patent Offices regarding the similarity of their trademarks with registered trademarks.
According to the current legislation of Uzbekistan, trademark holders are given a 3-year grace period, during which the trademark is not vulnerable for non-use cancellation. This period is calculated from the moment of trademark registration and continues to be valid as of the last three years.
It should be noted that the main goal of implementing the principle of mandatory use of a trademark for 3 years is the desire of the legislator to ensure the intensive functioning of trademarks in civil circulation and to reduce the cases of their registration by persons who do not use them themselves but may hinder the appearance of goods or services on the market, marked with such trademarks.
Non-use cancellation action: Judicial practice in Uzbekistan
Disputes related to non-use cancellation of trademarks are considered exclusively in court, while the authorized body in the field of intellectual property (currently the Ministry of Justice of the Republic of Uzbekistan) usually participates in such proceedings as a neutral third party. Uzbek courts have established quite good practice in considering such disputes.
Applying to the court must be accompanied with submission of a minimum evidence base by concerned party on alleged non-use of the trademark; this can be information from open sources or additionally received/collected materials. In any case, after the initiation of a court case, the owner of the contested trademark will have an obligation to prove the fact of trademark use, to ensure an objective consideration of the case.
If the owner of the trademark fails to prove the use of the trademark over the past 3 years, the court decides to cancel the trademark, thereby removing the trademark from the state register, which provides good opportunity for other interested applicants to own this trademark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
