[Guest post] Harmonization of Uzbekistan’s legislation with international treaties. What does it offer for holders of well-known (famous) trademarks?

The IPKat has received and is pleased to host the following guest contribution by Katfriends by Javohir Kurbonov and Khalil Jurayev (both Prolegals Law Firm) on some recent developments in the trademark law of Uzbekistan. Here's what they write:

Harmonization of Uzbekistan’s legislation with international treaties. What does it offer for holders of well-known (famous) trademarks?

by Javohir Kurbonov and Khalil Jurayev

In the realm of intellectual property, the undue registration of well-known trademarks poses significant challenges to the owners. This practice involves the registration of marks similar or identical to well-known trademarks, often conducted in bad faith, with the intent to exploit the goodwill and reputation associated with these well-known trademarks. Consequently, when the owners of well-known trademarks want to establish their activity in this territory, they will be refused to obtain registrations as there is already registered an identical or similar mark.

Turkestan sand cat

Almost in all jurisdictions, there are provisions that permit the invalidation of registrations made in bad faith within the whole period of the registration if the act of the trademark owner constitutes the act of unfair competition.

Uzbekistan’s legislation on invalidating bad faith registrations

Uzbekistan’s current legislation provides an opportunity to invalidate such registrations within a three-year timeframe upon the announcement of the information about their registration if it is proved that they were registered in bad faith.

The law on trademarks states that the registration of a trademark may be declared invalid, either wholly or partly, within a three-year timeframe upon the date of the publication of information about its registration in the official bulletin of the authorized body in case the act of the trademark owner constitutes the act of unfair competition.

What is challenging within this rule is that the owners of the well-known trademark may lose the chance to contest the invalidity of the registration as there is a risk that they may find out about such registrations late, in some cases after the lapse of the established timeframe.

In addition, this norm of the law is contrary to Article 6bis of the Paris Convention which states that no time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

If we look at the national trademark database, it becomes evident that certain registrations have surpassed the timeframe established by legislation to contest the validity on the basis of bad faith registration and owners of those trademarks that are similar or identical to well-known ones are getting benefits from the goodwill of the marks.

In 2019, pursuant to a presidential decree, the Ministry of Justice was authorized to conduct an inventory of all registered trademarks. The primary objective of this initiative was to identify instances of undue registration of well-known trademarks and subsequently implement measures to annul these registrations through collaboration with other authorized bodies.

However, the practical implementation of this provision was not possible due to the legislation as the legal framework dictates that the invalidation of trademarks registered in bad faith can only be claimed within a three-year timeframe after the publication of information about their registration in the official bulletin.

Pending changes in the legislation: What is new in bad faith registrations?

Recently, the government has introduced a proposal to the current legislation to harmonize the national norms and rules with WTO and other international treaties (the language of the proposal is Uzbek).

The law proposes the cancelation of the stipulated timeframe within which claims can be made to contest the invalidity of the trademark registrations that certain individuals and business entities obtained in bad faith.

The wording of the new rule states that the registration of marks can be invalidated within the entire duration of the registration if the acts of the owner of that mark constitute acts of unfair competition. Though the wording of the provision does not mention well-known trademarks, typically this type of trademark – as stated – is registered in bad faith to benefit from the goodwill associated with the mark.

It should be taken into consideration that high number of bad-faith registrations and reluctance to create an effective mechanism to terminate such cases by the government not only may be an obstacle for attracting “big brand” owners to establish their activities in the territory of the country but also, such registration may mislead consumers concerning the goods or their origin, as the main objective of registering such marks is to exploit the goodwill of the mark.

To unify the national legislation with international treaties and enhance the protection of well-known trademarks from unfair competition the government is now proposing an amendment to the norm related to the invalidation of bad faith registrations.

Comment

Uzbekistan's efforts to harmonize its legislation with international treaties, particularly in the context of its accession to WTO, signal a commitment to aligning with global standards in the realm of the protection of IPRs. The proposed amendments to trademark laws, specifically addressing the issue of bad-faith registration, reflect a recognition of the challenges faced by holders of well-known trademarks.

The existing legal framework, which allows a three-year timeframe for initiating the invalidation process of trademarks registered in bad faith, poses practical difficulties for trademark owners, especially when discovering such registrations after the prescribed period has lapsed. In addition, it deprives the owners of the well-known trademark of the right established under Article 6bis of the Paris Convention which provides that no time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

The proposed amendment, allowing the invalidation of similar or identical marks to well-known trademarks for their entire period of registration, represents a significant step forward. This change not only enhances the protection of IPRs but also aligns with the broader goal of repressing unfair competition.

The anticipated legislative amendments serve as an indication of Uzbekistan's commitment to fostering a robust intellectual property regime that is in line with international standards, promoting fair competition, and ultimately contributing to the country's integration into the global community.